Nestlé can't have a break

In Société des Produits Nestlé SA v Mars UK Ltd ([2002] EWCH 2533 (Ch)), the High Court has upheld the Trademark Registry's decision to oppose the registration by Nestlé of the trademark HAVE A BREAK. The court found that the mark has not acquired a distinctive character through use.

Having already registered the trademarks KIT KAT and HAVE A BREAK...HAVE A KIT KAT in respect of various confectionary products, Nestlé applied to register HAVE A BREAK as a separate mark for the same goods. Mars opposed the application on all four grounds set forth in Section 3(1) of the UK Trademarks Act 1994, namely that the mark:

• is incapable of distinguishing goods;
  
  
• lacks a distinctive character;
  
  
• is descriptive of the goods to which it applies; and
  
  
• has become customary in the confectionary trade.

The Trademark Registry allowed the opposition on the grounds that the mark lacks a distinctive character. The registry found that while the incapacity to distinguish provides an absolute bar to registration, the distinctive character requirement is relative because it can be acquired through use. In the case at hand, however, the registry rejected Nestlé's claim that, at the time of the application, the mark had acquired a distinctive character through use. Nestlé appealed.

The High Court upheld the registry's decision, emphasizing that to prove distinctive character the mark must be able to perform the function of a trademark (ie, guarantee the identity of the origin of the product). The High Court reasoned that, since Nestlé has only made minimal independent use of the mark HAVE A BREAK, it has not acquired a distinctive character as a result of its use. Therefore, the court dismissed Nestlé's appeal.

Nestlé's lawyers have indicated that they may yet take the matter to the European Court of Justice in Luxembourg.

Nick Rose, Field Fisher Waterhouse, London