Nestle-Mars Trademark Spat Sent Back To UK Courts

by Robin Pilgrim, LawAndTax-News.com, Brussels

11 July 2005

Ruling on Thursday, the European Court of Justice followed the opinion delivered by Advocate General, Juliane Kokott in January of this year, sending a trademark dispute between chocolate manufacturers, Nestle and Mars back to the UK courts.

Nestle had attempted to lay sole claim to the slogan "Have a Break", a phrase used in conjunction with its Kit Kat bars, and in 1995 sought to register the slogan for all of its products.

Rival firm Mars objected, however, and the UK authorities blocked the claim, arguing that the phrase lacked an inherent or distinct character which would allow it to be trademarked. Following Nestle's appeal, the UK asked the ECJ to rule on the matter.

Ms Kokott announced earlier this year that the phrase had not acquired a sufficiently "distinctive character" to be trademarked, despite its long association with the Nestle product.

The ECJ supported this assertion, explaining that it could not, therefore, approve Nestle's trademark application.

"It is for the national court to determine whether the mark ‘Have a Break’ has come to identify the product or service concerned," the ECJ announced in a statement, continuing:

"In that context the Court points out that the relevant factors must be assessed globally and, in the context of that assessment, the following items may be taken into consideration: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations."

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