ADVOCATE GENERAL DELIVERS HAVE A BREAK OPINION

Today Advocate General Kokott delivered her Opinion in Case C-353/03, the HAVE A BREAK reference to the ECJ from the UK Court of Appeal.

Nestlé uses the slogan HAVE A BREAK…HAVE A KIT KAT (for which it owns a trade mark) in UK advertising for its KIT KAT chocolate bars. It applied to register the element HAVE A BREAK on its own as a UK trade mark. The Court of Appeal found that the HAVE A BREAK element lacked inherent distinctive character but referred to the ECJ the question of whether the HAVE A BREAK element could have acquired distinctive character merely through use as part of the HAVE A BREAK…HAVE A KIT KAT slogan or in conjunction with another mark.

The Advocate General said yes, a sign that is used as part of, or in conjunction with another mark can acquire distinctive character:

§ The use mentioned in Art.3(3) (distinctiveness acquired through use) means both independent use and use as part of another or composite mark.

§ No other inference can be drawn from Art.10, which deals with revocation for non-use. Use of a sign as part of a principal mark falls within the definition of use which does not alter the distinctive character of the mark in the form in which it was registered (Art.10(2)(a)).

§ The concept of use for acquired distinctiveness is wider than the concept of use for infringement purposes because use for the purposes of acquired distinctiveness is not intended to define the scope of trade mark protection. Instead it is only meant to describe the manner in which a sign which is not inherently distinctive may acquire distinctiveness.

§ Protecting derivative elements of marks will not give over-wide protection marks by granting protection to derivative of derivatives and so-on ad infinitum since the fact that a primary derivative mark itself only acquires distinctiveness because of its use as part of the primary mark means that the primary derivative mark will be unlikely to be able to have its (rather limited) distinctiveness rub off on the secondary derivative mark which is part of it.

§ It is not the practice of Community institutions to refuse registration to parts of marks which have acquired distinctiveness through use.

§ Signs must be used in the form it which they are applied for to be registered. If distinctiveness is said to derive only from the subsidiary mark’s similarity to the principle mark, there can be no acquired distinctiveness. However, if the distinctiveness derives from use as part of or in combination with the principal mark, there can be acquired distinctiveness.

§ In practice it may be difficult to show that an element of a mark that has only been used as part of another mark has acquired distinctiveness. The fact that a sign causes consumers to have a reflex reaction such as to complete the HAVE A BREAK phrase with HAVE A KIT KAT it not enough on its own. Instead it must be shown that a product bearing the sign HAVE A BREAK will be attributed to Nestlé. If consumers just had cause to wonder whether products bearing the HAVE A BREAK sign were made by Nestlé this would merely give rise to likelihood of confusion.

The "Have a Break" is used quite imaginatively on Kit-Kat. Would consumers see this as trade mark use?

Google shows use of the same slogan on Retreat

The IPKat’s head is still reeling from this decision. There are a number of new concepts and there is a good deal of new terminology in this Opinion which the ECJ may or may not adopt. The IPKat remains unconvinced by the argument that use for registrability purposes and use for infringement purposes are different. Surely both are aimed at proving the same thing – that consumers perceive the sign in question as indicating the origin of goods or services on which it is used. In a piece of shameless self-promotion of her masters, Merpel points out that they have a book coming out imminently on the subject, Trade Mark Use, published by OUP.