02 January 2003

KEEBLE HAWSON

www.keeblehawson.co.uk

E-MAIL UPDATE

Kit Kats and Trade Marks

Nestle, the owner of a registered trade mark "HAVE A BREAK...HAVE A KIT KAT" wished to also register the shortened version of "HAVE A BREAK". Mars opposed the registration resulting in the mark being rejected on the basis that it was devoid of distinctive character under the Trade Marks Act 1994.

A trade mark is a sign capable of being represented graphically. In simple terms, a trade mark distinguishes and identifies a business from its competitors. Trade marks can consist of words, designs, letters, numerals, shapes or packaging and can include colours, sounds and even smells may occasionally be registered as trade marks. To be registerable at the Trade Mark Registry, the mark must be of distinctive character and cannot merely be descriptive of the goods or services sold.

In the Kit Kat case (Societe Des Produits Nestle SA v Mars UK Ltd (2002), the Court upheld the decision that "HAVE A BREAK" could not be registered as a Trade Mark. It was held that the words were only distinctive when used in connection with "HAVE A KIT KAT" and not when used independently. Nestle attempted to show that the general public associated the words HAVE A BREAK with Kit Kat but this could not overcome the 'acquired' distinctiveness test needed. In this case, Nestle had not acquired a distinct use of HAVE A BREAK in its branding of Kit Kats.

Trade marks are registered in different classes, depending on the goods and services to be sold or associated with them. The class must be chosen carefully as the registration confers a monopoly right on the owner to use the mark in the classes in which it is registered. This is most likely the reason that Mars opposed Nestle's application for the trade mark registration HAVE A BREAK.

A third party will infringe the trade mark if without the permission of the owner, he uses an identical or similar trade mark in the course of a trade identical or similar to the owners i.e in this case chocolate bars. In other words the owner will get the right to use the "brand" on a whole range of goods and services and stop another company from "piggybacking" off the owner's reputation.

If you require any advice on the issue of trade marks, including registration of a trade mark or infringement of an existing mark, please contact Elizabeth Ward in Keeble Hawson's Intellectual Property Department.

0113 244 3121
elizabethward@keeblehawson.co.uk

Elizabeth Ward is an Associate member of the Chartered Institute of Patent Agents, an Associate member of the Institute of Trade Mark Attorneys, and is the Chairman of the North East section of the Licensing Executives Society (LES).

www.keeblehawson.co.uk

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