Many slogans have become synonymous with the brands they represent: the slogan "Just Do It" automatically makes you think of Nike's tag line.
This is, of course, the whole idea behind branding and attaching a slogan to a product through advertising. In order, however, for a slogan or brand name to be registerable as a trade mark, it must possess or have acquired sufficient distinctiveness to allow a consumer to recognise that a product has originated from a particular company.
The purpose of a trademark is, indeed, twofold: to identify the source of products or services and to distinguish the trademark owner's goods and services from those of others.
Some trademarks can be registered as trade marks because they have the requisite inherent distinctiveness.
However, most slogans must acquire their distinctiveness over time through continuous usage.
The slogan "HAVE A BREAK, HAVE A KIT KAT" is well known to most people. Both the full phrase and the product name KIT KAT are registered trademarks, the full phrase having acquired the requisite distinctiveness through advertising usage.
The case at hand concerns Nestl's decision to register as a distinct UK trademark the slogan HAVE A BREAK alone.
Nestl's attempt to register this slogan has been repeatedly rejected by the UK trademark authorities and courts, including by the UK Court of Appeal.
Nestl argued that the slogan HAVE A BREAK inherently possessed the requisite distinctiveness and, that it had also acquired distinctiveness, not through its independent use, but through its use as a part of the previously trade marked slogan, HAVE A BREAK HAVE A KIT KAT.
The Court of Appeal referred to the European Court of Justice ("ECJ") to answer whether, as a result of the use of a principal mark, a part of such mark could also acquire its own distinctive character independently of the distinctiveness of the principal mark.
The ECJ held that the distinctive character of a mark may be acquired as a result of the use of such mark as part of or in conjunction with a registered trademark. It is necessary, in either case, that as a result of such use, the relevant public actually perceives the product or service, designated exclusively by the mark applied for, as originating from a given undertaking.
In other words, if the phrase "Have a break" prompts the average consumer of chocolate to respond "Have a Kit-Kat", then it makes no doubt that the slogan itself has acquired sufficient distinctiveness to be registered as a trademark.
The case has now returned to the UK Trade Marks Registry who will have to determine whether Nestl in fact demonstrated the necessary distinctiveness.
Solid evidence of distinctiveness can make all the difference where registering a slogan, and there are certain things that brand owners can do to make their slogan more registrable:
A. Make it clear in advertising and other promotions that the slogan used is as important as the brand name. A link must be encouraged between the product and the slogan in the eye and in the mind of the relevant consumer, to the extent that whenever the consumer sees the product or the slogan, they think of the product when they read the slogan and think of the slogan when they purchase the product.
B. Ensure that the slogan is visible at point of sale, so that consumers make the link between the product, the slogan and your company at the point of purchase.
C. To help overcome objections of a lack of distinctiveness keep records of market share and sales figuresforthe product throughout its product life and copies of advertising and promotional materials showing the use of the slogan and the consumer familiarity with said slogan.
So how would you respond to the phrase "HAVE A BREAK"?
By Claire Lazard
© Al Tamimi & Company 2007
