Breakthrough in HAVE A BREAK Case awaited

In considering the registrability of the mark HAVE A BREAK, the UK Court of Appeal has referred to the European Court of Justice (ECJ) the question of whether the use of a mark in conjunction with, or as part of, another mark may be considered as evidence of acquired distinctiveness.

When Mars opposed the registration of the mark HAVE A BREAK on the grounds that it lacked distinctiveness (among other things), Société des Produits Nestlé submitted evidence that the public recognizes the slogan in relation to its Kit Kat product. However, the hearing officer, and the High Court on appeal, considered that the recognition was as a result of the use of the well-known registered slogan HAVE A BREAK...HAVE A KIT KAT and not as a result of the use of HAVE A BREAK on its own, of which there was only limited evidence (see Nestlé can't have a break).

The Court of Appeal also found that the mark HAVE A BREAK was devoid of distinctive character. However, before deciding whether the slogan had acquired distinctiveness, which would warrant registration, the court referred to the ECJ a question of interpretation of the Community Trademark Directive, namely whether the use of a mark in conjunction with, or as part of, another mark may be considered when trying to demonstrate acquired distinctiveness.

The ECJ's interpretation of this question of law is keenly awaited. Unconventional trademarks such as slogans, shapes and colours are rarely used without a word or device mark and often face objections relating to their lack of distinctive character. Therefore, if the ECJ rules that acquired distinctiveness may only be evidenced by the use of the mark itself - and not in conjunction with, or as part of, another trademark - the registrability of such marks would be considerably affected.

Jane Mutimear, Bird & Bird, London