Article Story: ADVERTISING SLOGANS AND DISTINCTIVENESS: SOCIETE DES PRODUITS NESTLE SA v MARS UK LIMITED

Date: 13.01.2003

Most Britons would respond to the phrase “have a break” with the words “have a Kit Kat”.  The slogan “Have a break have a Kit Kat” has been used in the advertising of Kit Kat since 1957.  The slogan has been Nestlé’s registered trade mark for many years (as have the words KIT KAT).  But Nestlé’s attempt to register the words HAVE A BREAK on their own has been successfully opposed by Mars, who can now launch a competitive chocolate bar product called Have a Break.

Although it had not been used as a brand name for any of its products Nestlé applied to register the mark HAVE A BREAK on its own in 1995 in respect of 'chocolate; chocolate products; confectionery; candy; biscuits.'  Mars filed a notice of opposition in 1998 and a hearing took place in the Trade Marks Registry in February 2002.  Mars’s opposition to Nestlé’s application was upheld and Nestlé appealed to the High Court.

Mars's opposition was based on each ground in Section 3(1)(a) to (d) of the Trade Marks Act 1994.  The Hearing Officer in the Trade Marks Registry rejected the opposition based on Section 3(1)(a), (c) and (d), but held that HAVE A BREAK was 'devoid of any distinctive character' (Secton 3(1)(b)) and therefore lacked inherent distinctiveness as a trade mark for a chocolate snack.  He also rejected Nestlé’s alternate claim that the mark had acquired a distinctive character as a result of Nestlé’s use of it (Section 3(1)).  Mr Justice Rimer, delivering his judgment in the High Court on 2 December 2002, found no reason to interfere with either of these findings and dismissed Nestlé’s appeal.

The concept of distinctiveness is fundamental in trade mark law.  The main function of a trade mark is to distinguish goods or services of the trade mark owner from goods or services having a different origin.  A trade mark will therefore not be registered if it is not distinctive.

Because, as Mars's survey evidence showed, most consumers eat snacks during their breaks, the Hearing Officer concluded that HAVE A BREAK had no inherent distinctiveness in relation to snack products.  Mr Justice Rimer found this a reasonable conclusion.

Nestlé argued that the Hearing Officer had misdirected himself as to the law by not finding that the words HAVE A BREAK must automatically be distinctive given that, as the Hearing Officer found, they were not referable to the relevant goods or representative of their essential characteristics.  Mr Justice Rimer did not agree with this.  The question of distinctiveness for the purposes of Section 3(1)(b) is one which has to be independently considered, the answer depending on the particular facts.

The proviso to Section 3(1) provides that 'a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of the application for registration, it has in fact acquired a distinctive character as a result of the use made of it …'  Nestlé had tried to prove that even if HAVE A BREAK was not inherently distinctive, they had made it their own - it had acquired a distinctive character as a result of their use of it.

Nestlé failed on this front as well.  There had only been minimal independent use by Nestlé of the mark HAVE A BREAK.  It was almost always used in the context of the whole slogan.  Nestlé argued that acquired distinctiveness could be demonstrated by reference to use made of the phrase HAVE A BREAK as part of its trade mark HAVE A BREAK – HAVE A KIT KAT.  The Hearing Officer rejected this, concluding that Nestlé's lack of any material use of the mark HAVE A BREAK as an independent trade mark was fatal to its acquired distinctiveness case.

Mr Justice Rimer agreed with this approach.  Accordingly, the Hearing Officer's conclusion that the words HAVE A BREAK had not in fact been made distinctive by Nestlé was strictly irrelevant.  However, the Hearing Officer did not believe anyway that a significant proportion of the public, if presented with a chocolate bar called HAVE A BREAK, would believe that it originated from the makers of KIT KAT.  Nestlé’s survey, in his view, only showed that respondents would be reminded of Kit Kat, nothing more.

The Trade Marks Registry issued a Practice Amendment Notice (PAN 7/02) on 18 June 2002 in which it referred to a review of the Registrar's practice on the registrability of slogan type marks in the light of the judgment of the European Court of Justice in the Baby-Dry case (C-383/99) and that of the Court of First Instance in the case of Das Prinzip Der Bequemlichkeit (T-138/00).  In the latter case the CFI stated that:

'…it is clear from the case-law of the Court of First Instance that lack of distinctiveness cannot be found because of lack of imagination or of an additional element of originality… Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign.'

However, the CFI also confirmed that it is appropriate in determining whether a slogan is devoid of any distinctive character, to consider, in particular, the use of the mark in advertising the goods or services listed in the application.

The Hearing Officer in the Have a Break case considered whether, for trade mark registration purposes, slogans were to be treated differently from other marks.  His view on this, with which Mr Justice Rimer agreed, was:

'…Consumers will be aware that slogans are commonly used in trade for purely advertising purposes and may, therefore, not accept a slogan as an indication of trade source as readily as they would a traditional indication of trade source, such as word brands, logos and figurative marks.'

The position would therefore appear to be that, although each case turns on its own facts, slogan trade marks are regarded as being inherently less distinctive and applications will often therefore be more difficult than they are in the case of ordinary trade marks.  This should not deter advertisers from applying to register slogan marks in appropriate cases, as the other forms of protection available for slogans are minimal.  Slogans do not attract copyright protection as literary works.  The Advertising Standards Authority offers a degree of protection in paragraph 21.1 of the Advertising Code: 'Advertisers should not make use of the goodwill attached to the trade mark, name, brand or the advertising of any other organization.'  Slogans can occasionally be protected by means of a passing off action, but there are very few examples of such claims succeeding.

Charles Swan

<< back to articles