SOCIÉTÉ DES PRODUITS NESTLÉ S.A. v MARS UK LIMITED

Trade mark distinctiveness requires a mark to identify goods as originating from a particular undertaking. The assessment depends on the goods and the presumed expectations of reasonably well-informed, observant and circumspect consumers. The grounds in section 3(1)(b) and (c) of the Trade Mark Act 1994 are independent: a mark may be non-descriptive yet still lack distinctive character. Any degree of relevant distinctiveness is sufficient under section 3(1)(b). Whether distinctiveness may be acquired through use of a mark as part of, or alongside, another mark is a question of Community law. The Court referred that question to the Court of Justice.

Nestlé appealed Rimer J’s dismissal of its appeal against the Hearing Officer’s refusal to register HAVE A BREAK for chocolate and confectionery goods. Mars had opposed registration under section 3(1)(a)–(d) of the Trade Mark Act 1994. The Hearing Officer rejected the objections under paragraphs (a), (c) and (d), but upheld the objection under paragraph (b). He also found that the mark had not acquired distinctive character through use because it had not been materially used independently of the composite slogan HAVE A BREAK HAVE A KIT KAT. The appeal concerned inherent distinctiveness, acquired distinctiveness, and whether use of a mark in combination with another mark could satisfy the statutory proviso.

1. Inherent distinctiveness. The Court unanimously upheld the conclusion that HAVE A BREAK was devoid of inherent distinctive character for the relevant goods. Distinctiveness concerns the capacity to identify goods as originating from a particular undertaking. It must be assessed by reference to the goods for which registration is sought and the presumed expectations of reasonably well-informed, observant and circumspect consumers. The criteria are not stricter for slogans than for other marks. The Court applied the principles stated in Linde AG v Rado Uhren AG (Cases C-53/01 and C-54/01) and considered that no further reference was required on this issue.
2. Separate refusal grounds. Sections 3(1)(b) and 3(1)(c) of the Trade Mark Act 1994 establish independent grounds for refusal. The fact that a phrase is not exclusively descriptive does not establish that it identifies the commercial origin of goods. The reasoning in Proctor & Gamble v Office of Harmonisation in the Internal Market [2002] ETMR 3, concerning descriptiveness under Article 7(1)(c) of the Regulation, did not determine the separate issue under Article 7(1)(b).
3. Acquired distinctiveness. The proviso to section 3(1) raises the question whether the mark applied for acquired distinctive character through the use made of that mark. The Court declined to resolve whether use as part of, or in conjunction with, another mark can suffice. The contrasting approaches in the present litigation and Ringling Bros – Barnum & Bailey Combined Shows Inc. (Case R 111/2000-2) demonstrated a genuine Community-law issue.
4. Reference and disposition. Applying the guidance in R v International Stock Exchange of the UK, ex parte Else [1993] 1 AER 420, a national court should ordinarily refer a critical Community-law issue unless it can resolve it with complete confidence. The Court referred whether distinctive character under Article 3(3) of the Directive and Article 7(3) of the Regulation may be acquired following or in consequence of use of the mark as part of, or in conjunction with, another mark. It refused to refer the additional evidential question concerning consumers who merely wondered about, or were reminded of, a commercial origin.
5. Concurring observation. Lord Justice Sedley expressed serious doubt that an affirmative ruling would enable Nestlé to succeed on the evidence, because the alleged distinctiveness of HAVE A BREAK depended on its combination with HAVE A KIT KAT. That observation was not necessary to the reference.

• Court of Appeal (Civil Division): On 25 July 2003, the Court referred a Community-law question to the Court of Justice under Article 234 of the EU Treaty: [2003] EWCA Civ 1072.
• Chancery Division: Rimer J dismissed Nestlé’s appeal on 2 December 2002, holding that the Hearing Officer had correctly applied the law and was entitled to find no inherent or acquired distinctiveness.
• Hearing Officer: On 31 May 2002, the opposition was rejected under section 3(1)(a), (c) and (d), but upheld under section 3(1)(b), and registration was refused.