Trade marks: ECJ broadens criteria for acquired distinctiveness

United Kingdom

The European Court of Justice (ECJ) recently gave its judgment in Société des Produits Nestlé SA v Mars UK Ltd (HAVE A BREAK). The judgment may make it easier to satisfy the distinctive character test in registering a trade mark. The ECJ held that the necessary distinctive character required for a trade mark registration can be acquired as a consequence of its use as part of another registered trade mark provided that an average, well-informed consumer would deem it to be distinctive of trade origin.

Background

Société des Produits Nestlé SA (Nestlé) are the manufacturers of the well-known Kit Kat brand of confectionary and are the proprietors of the UK registered trade mark, 'HAVE A BREAK' …HAVE A KIT KAT, registered in respect of chocolate, confectionary, candy and biscuits. In 1995 Nestlé applied to register the phrase 'HAVE A BREAK' as a separate mark, with a similar specification. Article (3)(1)(b) of the Trade Marks Directive provides that trade marks which are devoid of distinctive character shall not be registered, but is subject to an exception where "...before the date of application for registration and following the use which has been made of it, the mark has acquired a distinctive character" (Article 3(3) of the Directive)

Mars opposed the application relying on Article (3)(1)(b). Nestlé argued that the phrase 'HAVE A BREAK' had acquired the necessary distinctive character though its use in the phrase 'HAVE A BREAK… HAVE A KIT KAT' and ought therefore to be registered.

Nestlé's original application for registration was rejected by both the Trade Marks Registry and the High Court on the grounds that the mark as applied for was not inherently distinctive, and could therefore only proceed to registration if the applicant could show that the mark had acquired distinctiveness through use. Nestlé had adduced extensive evidence of the use of the composite phrase 'HAVE A BREAK… HAVE A KIT KAT', but had little evidence of the use of the mark applied for alone. The Court of Appeal agreed with the earlier findings that the mark was not inherently distinctive, but made a reference to the ECJ on whether "the distinctive character of a mark referred to in Article 3(3) of the EC Trade Marks Directive...may be acquired following or in consequence of the use of that mark as part of or in conjunction with another"

ECJ Decision

The ECJ, in what was an unusually short judgment, held that a mark could indeed acquire the necessary distinctive character when used as part of another phrase or trade mark. The ECJ stated, in line with the decision in Philips, that distinctive character must be assessed in relation to the goods and services concerned and the presumed expectations of an average, well-informed consumer. The ECJ held that Article (3)(3) contains no restriction on the way in which any mark has gained its distinctive character and therefore concluded that it was possible for this distinctive nature to be achieved through the use of the phrase 'HAVE A BREAK' as part of the larger mark 'HAVE A BREAK…HAVE A KIT KAT'.

The ECJ referred to its judgment in Windsurfing Chiemsee and stated that matters which are deemed to be capable of showing that a mark has achieved the necessary distinctive character (i.e. that it had come to identify the product or service) must be assessed on a global scale and in this assessment a number of factors must be taken into consideration. These include the market share held by the mark, how intensive, geographically widespread and long-standing the use of the mark has been and the amount invested in the promotion of the mark. Further, the ECJ held that statements from industry or professional associations may also be taken into account.

Comment

The decision will of course have to be applied to the facts by the Court of Appeal, which must decide whether the use of the phrase has in fact been sufficient to connote trade origin and therefore acquire distinctiveness. However, the ECJ has made it clear that there is no requirement for a mark to be used independently in order for it to obtain a sufficient level of distinctive character to be registered as a trade mark. Following this decision, distinctiveness may be acquired where the mark applied for is part of a larger, composite mark.

For now, what is clear is that this interpretation of Article (3)(3) clearly widens the scope and potential for marks to be registered and the ways in which they can acquire the necessary distinctive character. The ECJ has again emphasised that technical points on registerability will be of limited relevance when compared to the all-important perception of the average consumer for those goods (or services).