Tough break for Nestlé as High Court rules against trademark bid
confectionery brand? Well, no, at least according to the UK High
Court and US confectionery group Mars. But Nestle, the Swiss maker
of KitKat, is set to continue its fight to register the phrase.
A bid by Nestle to register the slogan 'Have a Break' as a trademark has been overturned by the UK High Court - a move which has delighted the Swiss group's arch rival, Mars.
Nestle claimed that the slogan was synonymous with its KitKat chocolate bar, and has been attempting to register the rights to the phrase since 1994, when a change in the law made it possible to register slogans as well as brands.
But the case was complicated by Mars, long time rival of Nestle, which succeeded in persuading the trademark authorities that 'Have a Break' could not be registered as it had no distinctive character - unlike 'Have a Break, Have a KitKat', which Nestle had already successfully registered as a trademark.
But Mars' involvement in the case is more than just a desire to annoy its rival - the US company is thought to be preparing the launch of a new chocolate bar called Have a Break, and which Nestle claims will be confused with its own KitKat product.
Nestle took the case to the High Court, but was yesterday disappointed to find that the judge, Mr Justice Rimer, agreed with the decision of the trademark authorities and upheld the complaint by Mars.
The decision was all the more disappointing for the company because it had commissioned a customer survey designed to show a distinct link between the slogan 'Have a Break' and the KitKat brand. While the judge agreed that the survey responses showed that many people associated the phrase with the KitKat brand, he said the words themselves did not have a distinctiveness in their own right which merited a trademark.
Nestle had also attempted to show that any product called Have a Break would automatically be associated with KitKat - a claim which was also dismissed by the court.
But Nestle is unlikely to let the matter drop. "We are of course hugely disappointed with the result. We will now be looking at the case in detail and considering our options," said Marie Fagan, press officer for Nestle in the UK when asked by Food and Drink Europe.com.
This could mean an appeal in the UK, or indeed at the European level, a reflection of the lengths the Swiss group is prepared to go to protect its brands, and of the power it clearly sees in the simple 'Have a Break' phrase.