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Acquired Distinctiveness of Marks Within Other Marks

Acquired Distinctiveness of Marks Within Other Marks

31/10/06

Nestlé S. A. had used their registered trade mark HAVE A BREAK ... HAVE A KIT KAT extensively in the UK for many years.  However an application to register merely HAVE A BREAK was successfully opposed by Mars UK Ltd on the basis that the HAVE A BREAK mark had not been used on its own, i.e. in the absence of "... HAVE A KIT KAT", and so couldn't benefit from the extensive use of the whole and so had not acquired distinctive character.

That decision was appealed to the High Court but the successful opposition was upheld. In a further appeal, the Court of Appeal found it appropriate to refer the following question to the European Court of Justice (ECJ):

"May the distinctive character of a mark ... be acquired following or in consequence of the use of that mark as part of or in conjunction with another mark?"

The ECJ held that distinctiveness did not require independent use of the mark. It considered that there was no such limitation in statute and that the basic requirement was that use of the mark had been made and that it was only necessary that the relevant public identify the mark as originating from a given undertaking.

This decision from the ECJ therefore confirms that protection through registration can be obtained for parts of marks which have themselves acquired a degree of distinctiveness among the relevant public through use.