Nestle wins Kit-Kat trademark battle

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

After a 10 year legal battle over the registration of the Kit-Kat slogan “Have a Break”, the ECJ ruled in favour of Nestlé yesterday (7 July) and that the slogan can be registered.

The ruling, which follows the advocate general’s decision earlier this year, sets an important precedent for all trade mark owners who will enjoy a wider protection.

The decision removes the requirement for the 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 trade mark” 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 Registry and objected by US rival Mars before the Court of Appeal referred the case to the ECJ.