The recent decision by the European Court of Justice ("ECJ"?) in Societ des Produits Nestl SA v Mars UK Ltd [2005], makes it easier for trade mark owners to satisfy the distinctive character test when applying for registration of their trade marks. The ECJ decided 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 its trade origin.

Nestl owns the UK registered trade marks, KIT KAT and HAVE A BREAK...HAVE A KIT KAT in class 30 in respect of chocolate, confectionary, candy and biscuits. In 1995, Nestl applied to the UK Trade Marks Registry to register the phrase HAVE A BREAK as a separate trade mark in class 30 in respect of chocolate, confectionary, candy and biscuits. The mark HAVE A BREAK was accepted by the Trade Marks Registry and published for opposition purposes. The mark was opposed by Mars UK Limited on the grounds that the mark was devoid of distinctive character relying in particular on art 3(1)(b) of First Council Directive (EEC) 89/104 ("the Directive"?) (to approximate the laws of the member states relating to trade marks).

Art (3)(1)(b) of the Directive, (as well as s3(1)(b) of the Trade Marks Act 1994) provides that trade marks devoid of distinctive character shall not be registered. An exception arises 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 (Art 3(3))"?.

As a result, the opposition was upheld and Nestle's application for registration of the mark HAVE A BREAK was rejected. Nestle appealed to the High Court. This appeal was dismissed and Nestle appealed to the Court of Appeal. The Court of Appeal had to consider:-

Whether the expression HAVE A BREAK was devoid of inherent distinctive character under art 3(1)(b) of the Directive rendering the expression unregistrable.

Whether registration of HAVE A BREAK might occur only on the basis of art 3(3) of the Directive, subject to proof of distinctive character acquired through use i.e. whether the mark HAVE A BREAK had acquired distinctiveness through the use of the mark HAVE A BREAK...HAVE A KIT KAT. This meant that if the mark had acquired distinctiveness as a result of its use, then it would be registrable.

The Court of Appeal highlighted that the application had been rejected on the ground that the phrase HAVE A BREAK was essentially used as part of the registered mark HAVE A BREAK...HAVE A KIT KAT and not, genuinely, as an independent trade mark.

Nestle's submission that this decision could have serious consequences for trade mark owners seeking to register marks comprising shapes since such marks were seldom used by themselves, and considered that a slogan-like phrase associated with a trade mark might, by repetition over time, create a separate and independent impression and thus acquire distinctive character through use.

As a result, the Court of Appeal decided to stay proceedings and refer to the Court of Justice of the European Communities for preliminary ruling the question whether the distinctive character of a mark referred to in art 3(3) of the Directive might be acquired following or in consequence of the use of that mark as part of or in conjunction with another mark.

The ECJ ruled:

The distinctive character of a mark referred to in art 3(3) of the Directive might be acquired in consequence of the use of that mark as part of or in conjunction with a registered trade mark.

Whether inherent or acquired through use, distinctive character had to be assessed in relation, on the one hand, to the goods or services in respect of which registration was applied for and, on the other, to the presumed expectations of an average consumer of the category of goods or services in question, who was reasonably well-informed and reasonably observant and circumspect.

In relation to acquisition of distinctive character through use, the identification, by the relevant class of persons, of the product or service as originating from a given undertaking had to be as a result of the use of the mark as a trade mark. In order for the latter condition, which was a central issue in this case, to be satisfied, the mark in respect of which registration was sought need not necessarily have been used independently.

Art 3(3) of the Directive contained no restriction in that regard, referring solely to the 'use which has been made' of the mark. The expression 'use of the mark as a trade mark' had therefore to be understood as referring solely to the use of the mark for the purposes of the identification, by the relevant class of persons, of the product or service as originating from a given undertaking. Such identification, and thus acquisition of distinctive character, might be as a result both of the use, as part of a registered trade mark, of a component and of the use of a separate mark in conjunction with a registered trade mark.

In both cases it was sufficient that, in consequence of such use, the relevant class of persons actually perceived the product or service, designated exclusively by the mark applied for, as originating from a given undertaking.

Comment:

The main points arising from the decision that trade mark owners should be aware of are:

Rosanna Cooper

Dr Rosanna Cooper BSc (Hons); CSci CChem MRSC; CChem FRSC; Dip Intellectual Property Law and Practice (Bristol), Solicitor; Attorney-at-Law (Grenada).

Dr Cooper is the managing partner of RT Coopers, Solicitors based in the City of London, England. She specialises in intellectual property (IP), biotechnology, pharmaceuticals, technology transfer and data protection. Dr Cooper was a partner in a West End firm in London and a senior lawyer with several City law firms before establishing RT Coopers. Dr Cooper studied for her Ph.D. in organic and medicinal chemistry at Kings College, University of London and pursued her postdoctoral research with SmithKline Beecham (now Glaxo SmithKline). She later worked as a senior pharmaceutical and paper chemist for Eli Lilly and Hercules respectively. Dr Cooper now advises international clients on IP in relation to a range of industries including, the biosciences, chemical sciences and pharmaceutical industries. Her role also extends to drafting, advising and negotiating commercial contracts, licences, joint ventures, collaborations, mergers and acquisitions especially the intellectual property and IT aspects of such corporate transactions. Dr Cooper advises start-ups, universities, spinout companies, small to medium sized enterprises and corporate clients.