The outcome of the case should clarify the rules on what can and cannot be registered as a trade mark.
The longer slogan and the name "Kit-Kat" have been registered trade marks for many years – the "chocolate crisp bar" dates from 1935, the snappier name being adopted two years later after the Kit Kat club, an 18th Century Whig literary club. In 1976, the then brand owners tried to register the first half of the slogan, "Have a break", as a trade mark in its own right and were refused.
In March 1995, the Swiss food giant Nestlé, tried again to register the mark. The application for registration was opposed by rival Mars UK Ltd, on the grounds that it did not comply with rules for registration laid out in the Trade Mark Act 1994. The Hearing Officer agreed, on the basis that the mark was "devoid of any distinctive character".
Nestlé eventually went to the Court of Appeal, which had to consider firstly whether the phrase on its own was devoid of distinctive character, and secondly, if it was, whether it had acquired a distinctive character before the application for a trade mark was made, through association with "Have a Kit-Kat".
Sir Andrew Morritt, giving the opinion of the Court, said:
"The distinctiveness to be considered is that which identifies a product as originating from a particular undertaking. Such distinctiveness is to be considered by reference to goods of the class for which registration is sought and consumers of those goods. In relation to the consumers of those goods the court is required to consider the presumed expectations of reasonably well informed, and circumspect consumers."
He continued:
"For my part I would particularly emphasise that the relevant distinctiveness is that which identifies a product as originating from a particular undertaking. Individual words and letters are used as inherently distinctive of other words or letters but this does not make them registrable as trade marks."
Lord Justice Sedley agreed, saying that the slogan "Have a break" was a simple colloquial phrase that had gathered distinctiveness only through its use next to "Have a Kit-Kat". He explained:
"The endeavour to appropriate the use of the first three words seems to me to involve forfeiting the very element of combination and of double-entendre on which the claim to acquired distinctiveness is built. To use another colloquial English phrase, Nestlé want the penny and the bun."
Accordingly, the court's view was that there was no distinctive character in the phrase "Have a break".
However, for technical reasons to do with interpreting the Trade Mark Act in accordance with Community Law, the Court decided that the second question – whether distinctiveness had been acquired - had to be referred to the European Court for clarification.
It is expected that the ruling will not be available until at least this time next year.
The text of the decision is at:
www.courtservice.gov.uk/judgmentsfiles/
j1903/nestle.htm