Nestlé Wins Latest Round of Slogan Slugout With Mars

11 July 2005

The European Court of Justice gave Nestlé, a break last week, deciding that the world's largest food company could [might, may, possibly and perhaps] be entitled to register the slogan "Have a Break" as a trademark.

In an action referred to the ECJ by a UK High Court, rival food and confectionery giant Mars Inc opposed Nestlé's attempt to register the phrase, claiming it has "no distinctive character".

But the European court boldly seized the nettle, holding that it is not within its power to approve a trademark application, only to deny it or make a recommendation to the appropriate national court.

Having successfully trademarked a similar brand-linked phrase ("Have a Break, Have a Kit Kat") back in the 80's, Nestlé attempted the same trick by attempting to register the contested slogan with the UK Patent Office in 1995. Its refusal led to the present legal battle.

In reaching its non-decision, the ECJ took into account Nestlé's ownership of the existing similar trademark and lobbed the ball right back into the British court.

Nestlé, which last year updated its trademarked Kit Kat phrase to "Make the Most of Your Break", sees the ECJ's verdict as a victory.

"We are delighted at the ruling by the European Court of Justice who said in principle it is possible for part of a word mark to be registered, provided it has acquired distinctive character on its own," said Nestlé' spokesman Robin Tickle.

Having taken a mere decade to get this far, Britain's fast-track legal system is expected to stage round three of the contest some time within the next thirty years.

Data sourced from Wall Street Journal Online; additional content by WARC staff