Word sequences forming part of slogan marks are registrable

European Union

Advocate General Kokott has issued an opinion in the case of Société des Produits Nestlé SA v Mars UK Ltd - a dispute over the registration of the slogan HAVE A BREAK as a trademark.

The case stemmed from Société des Produits Nestlé SA's application to register the slogan HAVE A BREAK as a trademark with the UK Trademarks Registry. The application was opposed by competitor Mars UK Ltd and the case eventually came before the Court of Appeal of England and Wales. It was then referred to the European Court of Justice (ECJ). The Court of Appeal was seeking guidance on the specific issue of whether the use of a word sequence as part of a composite word mark can, as a matter of principle, lead to that word sequence acquiring the requisite distinctive character to allow registration as a trademark.

Kokott has now issued a preliminary ruling in the case. He first examined Article 3(3) of the Community Trademark Directive, which permits the registration of a non-distinctive sign if it has acquired a distinctive character following the use that has been made of it. Kokott noted that this raised the question of whether Article 3(3) only covers the sign actually used or, in the case of a slogan, whether it can also cover a sequence of words contained within that slogan. Kokott concluded that use of a mark does not only mean independent use, but also use as part of a composite mark.

However, Kokott stressed that it was important to balance this finding with the provisions of Article 10 of the directive, which requires a trademark owner to put the mark to genuine use within a period of five years following the date of the completion of the registration procedure. He determined that use of a sign as part of a composite mark can meet the use requirements of Article 10.

Kokott first analyzed Article 10(2)(a) of the directive, which provides that sufficient use includes "use of the trademark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered". Although this provision is usually interpreted as meaning non-distinctive additions or changes, Kokott stated that it is tenable to argue that the use of a sign with other distinctive elements will not alter the distinctive character of the sign.

He next considered the possibility that a sign does not necessarily have to be the principal mark, it can also be a subordinate but nonetheless distinctive element. This conforms to actual practice on the market, whereby trademark owners use principal and subordinate trademarks only in combination. It would seem unfair not to consider such combined use of the two signs as sufficient use under Article 10 but instead require the mark owner to use each sign separately.

It will be interesting to see whether the ECJ follows Kokott's opinion.

For background discussion of this case, see Nestlé can't have a break and Breakthrough in HAVE A BREAK Case awaited.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna

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