Bird & Bird wraps up Kit-Kat win for Nestlé

Bird & Bird and Nestlé’s in-house team have secured a landmark victory in the European Court of Justice (ECJ).

Following a 10-year legal battle over the registration of the Kit-Kat slogan ‘Have a Break’, the ECJ ruled in favour of Nestlé on 7 July and said the slogan can be registered.

As first reported on www.thelawyer.com (8 July), the ruling, which follows the advocate general’s decision earlier this year, sets an important precedent for all trademark owners, which will now enjoy wider protection by removing the requirement for a mark to be used independently.

However, it will be necessary to show that the relevant mark “has become distinctive, so that it is capable of performing the function of a trademark”, said Jane Mutimear, who led the Bird & Bird team.

In 1995, Nestlé filed an application in the UK to register ‘Have a Break’ as part of its longer slogan ‘Have a Break… Have a Kit-Kat’. The application was rejected by the UK Trademarks Registry and objected to by US rival Mars before the Court of Appeal referred the case to the ECJ.

Bird & Bird was first instructed by longstanding client Nestlé at the end of 2001, when Mars indicated that it wished to cross-examine Nestlé’s witnesses in the registry.

The evidence has now gone back to the UK courts and the registry, which will need to interpret the ECJ’s decision on the facts of the case.