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

The slogan “Have a break....Have a Kit Kat” is well known to the general public whether chocolate eaters or not. Both the complete slogan and the name KIT KAT are, and for many years have been, registered trade marks in respect of class 30, namely chocolate, chocolate products; confectionary; candy; biscuits. In September 1976 the then proprietors of the marks sought, in addition, to register as a mark in respect of class 30 the part of the complete slogan which consists of the words HAVE A BREAK. The application was refused and an appeal was dismissed by Whitford J in March 1983, see Have a Break Trade Mark [1993] RPC 217.

The Trade Mark Act 1994 was enacted, as its preamble shows, to make new provision for registered trade marks by implementing Council Directive No. 89/104/EEC for the approximation of the laws of Member States relating to trade marks and Council Regulation (EC) No.40/94 for the introduction of a Community trade mark. The following (which correspond literally with the equivalent provisions of both the Council Directive and the Council Regulation) are the relevant provisions:

“1.

Trade marks

(1)

In this Act a ‘trade mark’ means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.

[(2)....]

2.

Registered trade marks

(1)

A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act.

(2)

No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act affects the law relating to passing off.

3.

Absolute grounds for refusal of registration

(1)

The following shall not be registered-

(a)

signs which do not satisfy the requirements of section 1(1),

(b)

trade marks which are devoid of any distinctive character,

(c)

trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,

(d)

trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:

Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

11.

Limits on effect of registered trademark

[(1)....]

(2)

A registered trade mark is not infringed by –

(a)

the use by a person of his own name or address,

(b)

the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or

(c)

the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts),

provided the use is in accordance with honest practices in industrial or commercial matters.”

On 28th March 1995 the appellant, Societé des Produits Nestlé S.A. (“Nestlé”), again applied to register the mark HAVE A BREAK in respect of class 30. The application was duly published and opposed by the respondent, Mars UK Ltd (“Mars”). Mars relied on the provisions of s.3(1)(a)–(d). On 31st May 2002 the Hearing Officer, Mr Allan James, dismissed the opposition in so far as Mars relied on s.3(1)(a),(c) and (d) but upheld it on the ground specified in s.3(1)(b). In the result he refused the application. Nestlé appealed but its appeal was dismissed by Rimer J on 2nd December 2002. This is the appeal of Nestlé, brought with the permission of Aldous LJ, on the ground that it is appropriate that this court should consider the registrability of phrases such as “Have a break”.

There are two questions: (1) Is the mark HAVE A BREAK “devoid of any distinctive character” for the purposes of s.3(1)(b) (“Inherent Distinctiveness”)? and if so, (2) Has the mark HAVE A BREAK before 28th March 1995 “in fact acquired a distinctive character as a result of the use made of it” for the purpose of the proviso to s.3(1) (“Acquired Distinctiveness”)?

The Hearing Officer described in detail the evidence before him adduced by Nestlé (paras 7-23) and Mars (paras 24-38). It is unnecessary for me to do more than summarise the salient features and the Hearing Officer’s conclusions on them.

First, Nestlé gave evidence (paras 8-15) as to the use of the mark HAVE A BREAK between 1957 and 1965 and 1975 to date by itself and its predecessors in title through the statutory declaration of its company secretary. The Hearing Officer’s conclusions in respect of this evidence were that whilst the phrase “Have a break...have a Kit Kat” is very well known (para 78) Nestlé had not established that the phrase “Have a Break” had been used prior to March 1995 as an independent trade mark (para 76) or as a conventional brand (para 77).

Second, Nestlé relied on trade evidence from Mr Partington, the managing director of Safeway Stores plc (para 16). The Hearing Officer (para 79) did not consider that his evidence shed much light on the nature of either his or other consumers’ association of the phrase “Have a break” with Kit Kat.

Third, Nestlé relied on the contemporary public survey evidence which the Hearing Officer described in paragraphs 18 to 23. In the broadest outline members of the public were shown a mock-up of a flattish rectangular bar of chocolate with no get-up but prominently featuring the words “Have a break”. The response of 517 persons was reduced, some months later, to 30 statutory declarations. In paragraph 84 the Hearing Officer rejected the submission of counsel for Nestlé that a fair interpretation of the results of the survey indicated that a significant proportion of the relevant class of person would identify the goods used as originating from a particular undertaking, namely the maker of Kit Kat. He explained in paragraph 86 that it was not a sufficient identification that a consumer might be “caused to wonder” whether that might be the case or simply “reminded” of the undertaking concerned.

Having considered the details of the survey and the criticisms made of it he concluded in paragraph 93 that 15 of those who had made statutory declarations believed by that time that the “Have a Break” product came from the maker of Kit Kat, 8 indicated that whilst they associated “Have a Break” with Kit Kat they would not necessarily expect a product called “Have a Break” to originate from the makers of Kit Kat and 7 made ambiguous statements indicating that they might be included in either of the former categories but it was not clear which. He summarised his conclusions on this evidence in paragraphs 94 to 96 in the following terms:

“94.

In assessing the extent to which I should regard these witnesses as representatives of the relevant public I must bear in mind [counsel for Mars] justifiable criticism of the way the evidence was collected.

95.

Further, I suspect that there would, to some extent, have been a process of self-selection which resulted in more of those with stronger views going on to make statutory declarations compared to the other people...approached who, for one reason or another, did not do so.

96.

Nevertheless, I believe that the evidence indicates that a proportion of the public would be likely to suppose that a chocolate bar called HAVE A BREAK originated from the makers of Kit Kat. On the evidence before me, I am unable to say that it is a significant proportion.”

The evidence for Mars included the results of research and of a survey of confectioners indicating that the phrase “have a break” is a common expression and that the word “break” is associated with snack foods. In paragraph 97 the Hearing Officer indicated that he did not find this evidence of much assistance. In paragraph 98 he added:

“The key point is, in my judgment, that any expectation that has been shown to exist about the trade source of a product called “Have a Break”, arises not because of the use of the trade mark “Have a Break”, but because of the use of the trade mark “Have a break, have a Kit Kat”.

The Hearing Officer answered this question in the negative. His reasoning is set out in paragraphs 55 to 74. In the light of the submissions made to us it is necessary to set out various stages in his reasoning. First, he noted in paragraph 55, by reference to the judgment of Mr Christopher Floyd QC sitting as a deputy judge of the Chancery Division in West v Fuller, Smith & Turner plc, that the words in s.3(1)(b) “devoid of any” are to be given effect. Second, he recognised (paras 56 to 61) that paragraphs (b) and (c) in s.3(1) are distinct objections so that the absence of an objection under (c) does not carry with it the corollary that there can be no objection under (b) and vice versa. Third, he considered that the criteria for the registrability of slogans is no stricter than for other types of mark. Fourth, he looked to see if the mark had the capacity to function as a trade mark, namely to identify the commercial origin of the goods, to consumers of them. Fifth, the normal and fair use of the mark he had to assume is normal and fair use in both advertising and packaging the goods in question.

Having so directed himself the Hearing Officer set out his conclusion in paragraph 74 in the following terms:

“...I find that the mark HAVE A BREAK will be readily understood by consumers as an origin neutral invitation to consume a snack when it is used in the course of promoting a snack food product, whether the use is in an advertisement or on the packaging of the product. Consequently, I find that, prima facie, the words “Have a break” have no trade mark character when considered in relation to the snack products listed in the application, and the mark is therefore excluded from registration by s.3(1)(b) of the Act.”

Before Rimer J counsel for Nestlé contended that the Hearing Officer had failed to apply the law because he had not properly considered whether the phrase “Have a Break” had a distinctive character as a trade mark. As he pointed out relevant cases, particularly that referred to in pararaph 18 below had been decided since the decision of the Hearing Officer. Rimer J, like the Hearing Officer, considered that distinctiveness for the purposes of s.3(1)(b) had to be considered independently of the questions posed by s.3(1)(c). He agreed with the Hearing Officer that the criteria for registrability of a slogan such as “Have a break” are the same as for any other mark and concluded in paragraph 24:

“In my judgment, in reaching his decision the Hearing Officer applied the law correctly and gave manifestly careful consideration to the essentially factual question of whether or not the mark enjoyed the requisite distinctive character. He concluded that it did not. I consider that that was a conclusion to which he was entitled to come. It is possible that others might have come to a different conclusion, but that does not mean that the Hearing Officer was wrong to come to the conclusion he did. I consider that I ought only to review his decision if I am satisfied that it was plainly wrong or perverse, or that he materially misdirected himself as to either the facts or the law in the course of arriving at it. I am not satisfied that it was or he did. I dismiss the appeal so far as based on inherent distinctiveness.”

Before us counsel for Nestlé submitted that both Rimer J and the Hearing Officer failed to focus on or give effect to the requirement of s.3(1)(b) that the mark for which registration is sought should be “devoid of any distinctive character”. He emphasised the strictness of the test envisaged by the words “devoid of any”. He submitted that the phrase in question could not be said to be devoid of any distinctive character. Accordingly it was registrable as a mark irrespective of its use by Nestlé or its predecessors in title. He contended that if we entertained any doubt as to the correctness of his submission we should refer certain questions to the ECJ for further elucidation.

One of the problems facing courts at all levels when considering such issues is the frequency with which further relevant decisions of this court or ECJ are made. Rimer J referred to two relevant decisions which occurred between the decision of the Hearing Officer and the argument before him. We have been referred to three more occurring since Rimer J gave judgment. In these circumstances it is necessary to consider the present state of the authorities.

I start with Proctor & Gamble v Office of Harmonisation in the Internal Market to which I shall refer as the Baby-Dry litigation. Proctor & Gamble applied to register BABY-DRY as a community trade mark in relation to disposable diapers made out of paper or cellulose. Registration was refused in the basis that it was precluded by Article 7(1)(c) of Regulation 40/94 which is in the same terms as s.3(1)(c). Proctor & Gamble’s appeals to the Board of Appeal and the Court of First Instance were dismissed. On its further appeal to the European Court of Justice the Advocate-General disagreed. In his opinion given on 5th April 2001, [2001] ETMR 75, the Advocate-General emphasised (para A48) the requirement that a trade mark must be capable of being perceived by the public as indicating that the goods are those of a given undertaking. In addition he pointed out that Article 7(1)(b), which is in the same terms as s.3(1)(b), was not in issue.

The decision of the European Court of Justice was given on 20th September 2001, [2002] ETMR 3. They allowed Proctor & Gamble’s appeal. The reasons are set out in paragraphs 37 to 44 in terms which may embrace s.3(1)(b) notwithstanding that, as the Advocate-General had observed, that provision was not in issue. It is necessary to quote most of those paragraphs, with the altered references inserted by Rimer J. The European Court of Justice considered:

“37.

It is clear from those two provisions [sections 3(1) and 11(2)] taken together that the purpose of the prohibition of registration of purely descriptive signs or indications as trade marks is...to prevent registration as trade marks of signs or indications which, because they are no different from the usual way of designating goods or services or their characteristics, could not fulfil the function of identifying the undertaking that markets them and are thus devoid of the distinctive character needed for that function.

39.

The signs and indications referred to in [section 3(1)(c)] are thus only those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought. Furthermore, a mark composed of signs or indications satisfying that definition should not be refused registration unless it comprises no other signs or indications and, in addition, the purely descriptive signs or indications of which it is composed are not presented or configured in a manner that distinguishes the resultant whole from the usual way of designating the goods or services concerned or their essential characteristics.

40.

As regards trade marks composed of words, such as the mark at issue here, descriptiveness must be determined not only in relation to each word taken separately but also in relation to the whole which they form. Any perceptible difference between the combination of words submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character on the word combination enabling it to be registered as a trade mark.

41.

It is true that Article 7(2) of Regulation No. 40/94 states that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the Community. That provision...implies that, if a combination of words is purely descriptive in one of the languages used in trade within the Community, that is sufficient to render it ineligible for registration as a Community trade mark.

42.

In order to assess whether a word combination such as BABY-DRY is capable of distinctiveness, it is therefore necessary to put oneself in the shoes of an English-speaking consumer. From that point of view, and given that the goods concerned in this case are babies’ nappies, the determination to be made depends on whether the word combination in question may be viewed as a normal way of referring to the goods or of representing their essential characteristics in common parlance.

43.

As it is, that word combination, whilst it does unquestionably allude to the function which the goods are supposed to fulfil, still does not satisfy the disqualifying criteria set forth in paragraphs 39 to 42 of this judgment. Whilst each of the two words in the combination may form part of expressions used in everyday speech to designate the function of babies’ nappies, their syntactically unusual juxtaposition is not a familiar expression in the English language, either for designating babies’ nappies or for describing their essential characteristics.

44.

Word combinations like BABY-DRY cannot therefore be regarded as exhibiting, as a whole, descriptive character; they are lexical inventions bestowing distinctive power on the mark so formed and may not be refused registration under [section 3(1)(c)].”

In the light of that judgment the case was remitted to the Board of Appeal for further consideration. That court invited submissions as to the applicability of Article 7(1)(b). In its judgment given on 17th July 2002 the Board of Appeal considered that it should follow the appreciation of the ECJ as to the distinctiveness of the mark BABY-DRY so that Article 7(1)(b) was no bar to registration.

The Baby-Dry litigation was considered by the Court of Appeal in West v Fuller, Smith & Turner plc [2003] EWHC Civ 48. Pumfrey J, with whom Schiemann and Arden LJJ agreed, pointed out (para 20) that there is a substantial overlap between paragraphs (b) and (c) of s.3(1) and that the word “devoid” in paragraph (b) is to be strictly applied.

I should also refer to the judgment of the Court of First Instance in Daimler Chrysler Corpn v Office for Harmonisation in the Internal Market (Case T-128/01) given on 6th March 2003. This case concerned the registrability of a representation of a car’s radiator grille. The examiner refused registration as required by Article 7(1)(b) on the ground of lack of distinctive character. The Board of Appeal agreed but the Court of First Instance did not. In paragraphs 31 to 33 the Court of First Instance reiterated certain principles. Omitting the references to previous decisions, they are

“31.

Signs falling within Article 7(1)(b) of Regulation 40/94 are deemed not to be capable of exercising the essential function of a trade mark, which is to identify the commercial origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent purchase.

32.

A mark’s distinctiveness must be assessed by reference to the goods or services for which the registration of the sign is sought and the perception of the target public, which comprises consumers of those goods or services.

33.

Finally, it is clear from the wording of Article 7(1)(b) of Regulation 40/94 that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in that article.”

Finally I should refer to the judgment of ECJ in Linde AG v Rado Uhren AG (Cases C-53/01 and C-54/01) given on 8th April 2003. In those cases the applicants sought the registration of three dimensional trade marks, consisting of a vehicle, a torch and a wristwatch. The ECJ considered the requirements of Article 3(1)(b) of the Directive, which is in the same terms as s.3(1)(b). Omitting the references to previous cases they were held to be:

“40.

For a mark to possess distinctive character within the meaning of [Article 3(1)(b)] it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from products of other undertakings.

41.

In addition, a trade mark’s distinctiveness must be assessed by reference to, first, the goods or services in respect of which registration is sought and, second, the perception of the relevant persons, namely the consumers of the goods or services. According to the Court’s case-law, that means the presumed expectatations of an average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect.

42.

Finally, the Court observed in paragraph 48 of its judgment in Philips that the criteria for assessing the distinctiveness of three-dimensional shape of product marks are no different from those to be applied to other categories of trade mark. Article 3(1)(b) of the Directive makes no distinction between the different categories of trade mark for the purposes of assessing their distinctiveness.”

Later, in paragraph 47, the Court reiterated that

“As paragraph 40 of this judgment makes clear, distinctive character means, for all trade marks, that the mark must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings.”

In the light of all these judgments, in particular that of ECJ in Linde, I can see no need for any further reference to the ECJ on the issue of inherent distinctiveness. The relevant principles are now well established and it is for the domestic court to apply them.

The distinctiveness to be considered is that which identifies a product as originating from a particular undertaking. Such distinctiveness is to be considered by reference to goods of the class for which registration is sought and consumers of those goods. In relation to the consumers of those goods the court is required to consider the presumed expectations of reasonably well informed, and circumspect consumers. For my part I would particularly emphasise that the relevant distinctiveness is that which identifies a product as originating from a particular undertaking. Individual words and letters are used as inherently distinctive of other words or letters but this does not make them registrable as trade marks. If the mark for which registration is sought is distinctive in the relevant sense to any extent then its registration is not precluded by s.3(1)(b).

I have set out in paragraphs 11 and 12 above the conclusion of the Hearing Officer and the steps by which he arrived at it. I am unable to detect any error of law. To the contrary, the Hearing Officer correctly anticipated the later cases to which I have referred. It follows that I agree with the conclusion of Rimer J set out in paragraph 13 above. Accordingly I conclude that the provisions of s.3(1)(b) preclude registration as a trade mark of the phrase “Have a break” unless Nestlé can establish acquired distinctiveness in accordance with the proviso to the subsection.

I have set out in paragraph 10 above the paragraph (98) in which the Hearing Officer described what to him was the key point. He returned to it in paragraph 101 where he concluded that:

“On the basis of my findings so far, whatever distinctive character HAVE A BREAK has acquired is as a result of the use, prior to the relevant date, of the slogan mark Have a Break, Have a Kit Kat.”

The Hearing Officer then considered the significance of this finding in relation to the scheme of the Act. He continued in paragraph 102:

“Once a mark is registered, the proprietor receives an exclusive right to use it in respect of goods for which it is registered. In the case of an identical mark, the proprietor has an absolute right to prevent unauthorised registration or use of the mark by third parties, without having to establish a likelihood of confusion. Ss.5(1) and 10(1) refer. This is the umbra of protection afforded by registration.

103.

In addition, sections 5(2), 5(3), 10(2) and 10(3) provide a penumbra of protection which extends to the use and registration of similar marks and goods, where there exists a likelihood of confusion, and in some situations extends also to dissimilar goods.

104.

The applicant’s evidence of use fails to establish any, or any material, use of HAVE A BREAK as an independent trade mark, at least prior to the date of the application. In these circumstances, the most the applicant’s evidence can establish is that HAVE A BREAK falls within the penumbra of protection afforded to the (already registered) trade mark HAVE A BREAK HAVE A KIT KAT. Even if the evidence establishes this, I do not believe that this is sufficient to justify the registration of HAVE A BREAK solus, thus creating a new umbra and penumbra of protection for that mark in the absence of any, or any material, use of it prior to the relevant date.

105.

I have therefore come to the conclusion that the mark HAVE A BREAK has not been shown to have acquired a distinctive character through use prior to the date of application.”

Rimer J agreed with the approach of the Hearing Officer. After quoting the proviso to s.3(1) he continued:

“26.

As a matter of construction, each “it” refers back to “trade mark”. It follows in my view that, to establish a case under the proviso, the applicant must prove that the use of the subject mark has resulted in the acquisition by it of a distinctive character. So Nestlé had to show that the use of the mark HAVE A BREAK had resulted in its acquisition of such a character. Nestlé’s problem, however, is that it has only made minimal independent use of the mark HAVE A BREAK, and I did not understand Mr Carr to suggest that the Hearing Officer should have found that that use was sufficient to confer the requisite distinctive character on the mark. Nestlé’s point under this part of its case was wholly dependent on the use it had made of the phrase HAVE A BREAK as part of its trade mark HAVE A BREAK … HAVE A KIT KAT.

27.

The Hearing Officer’s conclusion, in paragraph 104 of his decision, was that because of the lack of any material use of the mark HAVE A BREAK as an independent trade mark, Nestlé failed to establish a case under the proviso. I agree with him. I regard that conclusion as applying the correct interpretation of the proviso to the particular facts of the present case.”

The dangers of the progressive umbrae and penumbrae to which the Hearing Officer referred were also described by Aldous LJ in Thomson Holidays Ltd v Norwegian Cruise Line Ltd [2002] EWCA Civ 1828 para 29 and by Jacob J in Societé des Produits Nestlé S.A. v Unilever plc [2002] EWHC 2709 (Ch) para 32.

Counsel for Nestlé observes that the point of construction which appealed to the Hearing Officer and Rimer J also arises in relation to Article 3(3) of the Directive and Article 7(3) of the Regulation. He submits that the conclusion to which they came could have serious consequences for those who seek to register marks comprising shapes. Similar problems may face those seeking to register a subsidiary mark. Such marks are seldom used by themselves. He contends that the point is not supported by a decision of any court of the European Union and appears to be contrary to one.

The authority to which counsel for Nestlé refers is the decision of the Board of Appeal in Ringling Bros – Barnum & Bailey Combined Shows Inc. (Case R 111/2000-2) given on 23rd May 2001. In that case the applicant sought to register as a community mark the phrase THE GREATEST SHOW ON EARTH. The examiner considered that registration was precluded by Article 7(1)(b) and (c). In relation to the former the examiner held that the evidence tendered in support of the contention that the mark had acquired distinctiveness was insufficient. The applicant appealed. In paragraph 10 of its decision the Board of Appeal described the evidence before the examiner. It upheld the decision of the examiner to refuse registration in accordance with Article 7(1)(c). In paragraph 17 the Board indicated that it was impressed by the evidence to support the appellant’s claim that the mark THE GREATEST SHOW ON EARTH had acquired distinctiveness through long and wide use throughout the Community. In paragraph 19 it stated:

“The contention of the examiner that because the words THE GREATEST SHOW ON EARTH have always appeared alongside the appellant’s registered trade mark, the sign is not likely to be considered as evidence of trade mark use is not in the Board’s view a valid one. The Board can well understand that a slogan-like phrase associated with a trade mark, like in this case, might by repetition over time, create a separate and independent impression.”

Counsel for Nestlé suggests that the word “it” in the context of s.3(1)(b) of the Act, Article 3(3) of the Directive and Article 7(3) of the Regulation does not necessarily connote a use of the mark for which registration is sought separate and distinct from any other mark. Counsel for Mars submitted that it was not suggested in Ringling Bros – Barnum & Bailey Combined Shows Inc. (Case R 111/2000-2) that the mark had never been used on its own and, in any event, the decision of the Hearing Officer was based on the facts of the case and not any such construction of the proviso.

I would reject both of the submissions of counsel for Mars. The terms of paragraph 19 of the decision of the Board of Appeal in Ringling Bros – Barnum & Bailey Combined Shows Inc. (Case R 111/2000-2), particularly the use of the word “always”, show that the decision was based on the conclusion that that is what the evidence showed. Further the decisions of the Hearing Officer and of Rimer J were clearly based on their conclusions as to the proper construction of the proviso. If use of the mark for which registration is sought either as part of or in conjunction with another mark can be sufficient then their conclusions were based on a wrong view of the law. In the case of the Hearing Officer one consequence will be that he did not consider the evidence or make findings with this possibility in mind. For example, if the phrase “Have a break” prompts the average consumer of chocolate to respond “Have a Kit Kat” and if the response is distinctive in a trade mark sense then it could well be that the phrase is itself distinctive in that sense.

In those circumstances we have to decide whether it is necessary to enable us to resolve the question of construction of the proviso in all the three contexts to which I have referred to obtain a ruling of the European Court. Guidance as to the circumstances in which such a ruling should be sought by a national court below the level of the final court of appeal is contained in the judgment of Sir Thomas Bingham MR in R v International Stock Exchange of the UK, ex parte Else [1993] 1 AER 420, 426:

“if the facts have been found and the community law issue is critical to the court’s final decision, the appropriate course is ordinarily to refer the issue to the Court of Justice unless the national court can with complete confidence resolve the issue itself. In considering whether it can with complete confidence resolve the issue itself the national court must be fully mindful of the differences between national and community legislation, of the pitfalls which face a national court venturing into what may be an unfamiliar field, or the need for uniform interpretation throughout the community and of the great advantages enjoyed by the Court of Justice in construing community instruments. If the national court has any real doubt it should ordinarily refer.”

In essence the issue is one of Community law. It arises directly in relation to Article 3(3) of the Directive because this court should construe the proviso to s.3(1) in conformity with it. It arises in the interpretation of Article 7(3) of the Regulation which determines the issue of acquired distinctiveness in the context of a community trade mark. It is thus of far reaching importance in the European Community as a whole and should in my view be decided by the European Court of Justice. The contrasting views of Rimer J and the Board of Appeal show how the point may give rise to reasonable differences of opinion such that a national court cannot be entirely confident as to the outcome. The issue having been raised the sooner it is authoritatively resolved the better.

For all these reasons I would refer to the European Court of Justice the following question:

“Whether the distinctive character of a mark referred to in Article 3(3) Council Directive 89/104/EEC and Article 7(3) Council Regulation 40/94 may be acquired following or in consequence of the use of that mark as part of or in conjunction with another mark?”

If the ruling is in the affirmative then it will be necessary to set aside the decisions of the Judge and of the Hearing Officer and to remit the matter to a different Hearing Officer to re-evaluate the evidence in the light of the preliminary ruling. If the ruling is in the negative then the conclusions of the Hearing Officer and the Judge were correct as a matter of law and the appeal based on acquired distinctiveness will fail also.

Counsel for Nestlé also suggested that there should be referred to the ECJ further questions designed to elicit guidance as to whether the Hearing Officer was right to reject as sufficient use which merely caused a consumer to wonder whether or be reminded that the goods in question emanated from a particular commercial origin. I have described the circumstances in which that issue arises in paragraph 8 above. I do not accept that suggestion. First the point will not arise whatever the outcome of the reference I have suggested. Second, as counsel for Mars pointed out the conclusion of the Hearing Officer I have summarised in paragraph 9 above amounts to little more than a point on the evaluation of the evidence before him. Whether or not the evaluation of the Hearing Officer was right is a matter for this court and should not be elevated into a point of Community law.

For the reasons I have given I would refer to the European Court of Justice for a preliminary ruling under Article 234 of the EU Treaty the question I have set out in paragraph 35 above. As at present advised I see no reason why this court should not now make an order disposing of the appeal along the lines I have suggested in paragraph 35 above. But as the point has not been argued I would invite the parties to consider that suggestion, which would have the merit of saving time and costs, and make such further submissions on it as they think fit.

I agree that, in order to decide this appeal, it is necessary to refer to the Court of Justice the question of interpretation of Article 3.3 of the Directive 89/104/EEC set out in paragraph 35 of the Vice-Chancellor’s judgment. As for the remaining points on inherent distinctiveness and acquired distinctiveness, I agree with the judgment of the Vice-Chancellor. I only wish to add a few comments on some of the submissions ably advanced by Mr Henry Carr QC on behalf of Nestlé.

The overarching question is posed by the definition of “trade mark” in s 1(1) of the 1994 Act and in Article 2 of the Directive: are the words HAVE A BREAK capable of distinguishing the chocolate products of Nestlé from those of other undertakings? In order to answer that question it is necessary to consider separately the grounds for refusing registration in s 3 of the 1994 Act (Article 3 of the Directive).

Inherent distinctiveness

The critical question on inherent distinctiveness (s 3 (1) (b) and Article 3 (1) (b)) is: are the words HAVE A BREAK, for which registration as a trade mark is sought by Nestlé in respect of chocolate products, “devoid of any distinctive character?” The Hearing Officer concluded that they were. He accordingly held that the words were excluded from registration, subject only to the proviso to s 3 relating to actual use of the words (actual distinctiveness: see paragraphs 43 and 44 below).

There was no error in the decision of the Hearing Officer on the lack of inherent distinctiveness. He correctly interpreted s 3(1)(b) and applied it to the facts found by him. Rimer J rightly dismissed Nestlé’s appeal on that point. No question arises on the interpretation of the Directive necessitating a reference to the Court of Justice.

In a vigorous attack on the decisions of the Hearing Officer and of Rimer J, Mr Henry Carr QC made two submissions on which I would like to comment briefly.

Acquired distinctiveness

The critical question on acquired distinctiveness is: have the words HAVE A BREAK, for which registration as a trade mark is sought, in fact acquired a distinctive character as a result of the use made of them by Nestlé in relation to chocolate products? If they have, then registration shall not be refused by virtue, for example, of the words not satisfying the requirements of the definition of a trade mark in s1(1); or by virtue of the words being devoid of any distinctive character under s3(1)(b); or by virtue of the words designating specified characteristics of chocolate products within s 3(1)(c).

The reliance by Nestlé on actual use of HAVE A BREAK in combination with HAVE A KITKAT and as part of the registered composite word mark gives rise to the question of interpretation identified in paragraph 35 of the Vice-Chancellor’s judgment. The point is not covered by any decision of the Court of Justice. Mars contended that the Directive does not allow reliance on such use as distinctive of HAVE A BREAK on its own. The actual use was in association with the words HAVE A KITKAT. The Hearing Officer and Rimer J agreed. They held that the proviso to s 3(1) only operates where the mark applied for has been used as an independent mark. Mr Carr QC for Nestlé contended that this was an unwarranted gloss on the legislation and had a restrictive effect on the future registrability of trade marks, in particular shape marks. I do not have that complete confidence which is required in order to decide the question of interpretation without the assistance of a ruling from the Court of Justice. I would therefore make the order proposed by the Vice-Chancellor.

I agree that the Hearing Officer’s finding that the words “Have a break” possess no inherently distinctive character is unimpeachable.

I also respectfully agree that the discrepant approaches to the issue of acquired distinctiveness taken by Rimer J in the present case and the Board of Appeal in Ringling Bros. pose the question formulated by Sir Andrew Morritt V-C in paragraph 35 of his judgment.But I have found myself in serious doubt whether even an affirmative answer to the question could enable Nestlé to succeed on the evidence which was before the Hearing Officer. If this were the case, it would not be appropriate to make a reference.

In Procter and Gamble v OHIM [2001] ETMR 75 (the ‘Baby-Dry’ case), Advocate General Jacobs cited the dictum of Cozens-Hardy MR in Perfection: Joseph Crosfield and Sons’ application (1909) 26 RPC 837, 854: “Wealthy traders are habitually eager to enclose parts of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure.” Although time and political geography may have softened its impact, it is evident from its citation by the Advocate General that the metaphor remains relevant to the modern regime of European trade marks.

Where what is sought to be registered is a simple colloquial phrase, any distinctiveness will necessarily have been acquired by its association or combination with some other element. This seems to me to differ paradigmatically from the phrase “The greatest show on earth”, which by itself is capable of being regarded as a (perhaps modest) lexical invention, and which may therefore have acquired distinctiveness independently of the names which have historically been attached to it.

The phrase “Have a break”, by contrast, has become distinctive only in combination with “Have a Kit-Kat”. The brand recognition now accorded, on a favourable reading of the evidence, to the first three words in isolation is a function of that very fact. It is also a function of the fact that the phrase as a whole incorporates a pun on the word “break” which is lost when the phrase is severed. The endeavour to appropriate the use of the first three words seems to me to involve forfeiting the very element of combination and of double-entendre on which the claim to acquired distinctiveness is built. To use another colloquial English phrase, Nestlé want the penny and the bun. None of this was true of the Ringling Bros application.

I therefore have serious doubts whether, even given an affirmative answer to the question, it would be open to a Hearing Officer to find on the evidence in Nestlé’s favour. But I accept that as much, perhaps more, may turn on the reasons for the Court’s answer as on the answer itself. For that reason, in spite of my concern at the possible consequences of this attempt to enclose a part of our common language, I agree that a reference is appropriate.