Bird & Bird wins landmark case for Nestlé in European Court



Court rules that “Have a Break” slogan is distinctive and can be registered

International law firm Bird & Bird has been representing Nestlé in its fight to register the “Have a Break” slogan in the face of opposition by Mars. An important decision, eagerly awaited across Europe, was issued yesterday by the European Court of Justice in favour of Nestlé, which will pave the way to the company being able to register its famous "Have a Break" slogan. The case has also set an important precedent in the UK, as the ECJ held that the English Court’s approach to the law was wrong.

The case itself started 10 years ago when Nestlé applied to register “Have a Break”. The Trade Marks Registry accepted Nestlé’s evidence that the mark had become distinctive, but Mars opposed application. The Registry, and the High Court on appeal, held that a mark which is not used on its own could not acquire a distinctive character in order to be registered. Therefore, because "Have a Break" had been used predominantly as part of the longer slogan "Have a Break...Have a Kit Kat", it could not be registered. The Court of Appeal referred the question of law to the ECJ, which handed down its decision yesterday.

The ECJ decision, which was very clearly in favour of Nestlé, holds that the mark in respect of which a registration is sought need not have been used independently. It is just necessary to show that whatever use has been made of it gives rise to a perception by the relevant public that the product or service it is used in relation to comes from a given undertaking. This has completely changed the English Court’s approach which was particularly problematic for colour and shape marks which are rarely, if ever, used on their own.

Jane Mutimear, the Bird & Bird partner who has been representing Nestlé said:

“This is a very good decision, not just for Nestlé, but for all trade mark owners. If it can be shown that a non-conventional mark, such as part of a slogan, shape of a product or colour has become distinctive, so that it is capable of performing the function of a trade mark, it is irrelevant how it came to be distinctive. This is a sensible decision, which reflects the views of most trade mark practitioners, and has set an important legal precedent across Europe”.

For more information on this please contact Jane Mutimear on 020 7415 6000. For more information on Bird & Bird, please contact Larry Cattle on + 44 (0) 20 7415 6156.