Advocate Full General Delivers Accept A Interruption Opinion

Today Advocate General Kokott delivered her Opinion inwards Case C-353/03, the HAVE H5N1 BREAK reference to the ECJ from the U.K. Court of Appeal.

Nestlé uses the slogan HAVE H5N1 BREAK…HAVE H5N1 KIT KAT (for which it owns a merchandise mark) inwards U.K. advertising for its KIT KAT chocolate bars. It applied to register the chemical factor HAVE H5N1 BREAK on its ain every bit a U.K. merchandise mark. The Court of Appeal flora that the HAVE H5N1 BREAK chemical factor lacked inherent distinctive grapheme but referred to the ECJ the query of whether the HAVE H5N1 BREAK chemical factor could accept acquired distinctive grapheme only through exercise every bit business office of the HAVE H5N1 BREAK…HAVE H5N1 KIT KAT slogan or inwards conjunction amongst around other mark.

The Advocate General said yes, a sign that is used every bit business office of, or inwards conjunction amongst around other order tin laid about distinctive character:

§ The exercise mentioned inwards Art.3(3) (distinctiveness acquired through use) agency both independent exercise as well as exercise every bit business office of around other or composite mark.

§ No other inference tin last drawn from Art.10, which deals amongst revocation for non-use. Use of a sign every bit business office of a principal order falls inside the Definition of exercise which does non modification the distinctive grapheme of the order inwards the bird inwards which it was registered (Art.10(2)(a)).

§ The concept of exercise for acquired distinctiveness is wider than the concept of exercise for infringement purposes because exercise for the purposes of acquired distinctiveness is non intended to define the reach of merchandise order protection. Instead it is alone meant to pull the mode inwards which a sign which is non inherently distinctive may laid about distinctiveness.

§ Protecting derivative elements of marks volition non hand over-wide protection marks past times granting protection to derivative of derivatives as well as so-on advertising infinitum since the fact that a primary derivative order itself alone acquires distinctiveness because of its exercise every bit business office of the primary order agency that the primary derivative order volition last unlikely to last able to accept its (rather limited) distinctiveness rub off on the secondary derivative order which is business office of it.

§ It is non the exercise of Community institutions to reject registration to parts of marks which accept acquired distinctiveness through use.

§ Signs must last used inwards the bird it which they are applied for to last registered. If distinctiveness is said to derive alone from the subsidiary mark’s similarity to the regulation mark, in that place tin last no acquired distinctiveness. However, if the distinctiveness derives from exercise every bit business office of or inwards combination amongst the principal mark, in that place tin last acquired distinctiveness.

§ In exercise it may last hard to present that an chemical factor of a order that has alone been used every bit business office of around other order has acquired distinctiveness. The fact that a sign causes consumers to accept a reflex reaction such every bit to consummate the HAVE H5N1 BREAK phrase amongst HAVE H5N1 KIT KAT it non plenty on its own. Instead it must last shown that a production bearing the sign HAVE H5N1 BREAK volition last attributed to Nestlé. If consumers exactly had crusade to wonder whether products bearing the HAVE H5N1 BREAK sign were made past times Nestlé this would only hand rising to likelihood of confusion.

The "Have a Break" is used quite imaginatively on Kit-Kat. Would consumers come across this every bit merchandise order use?

Google shows exercise of the same slogan on Retreat

’s caput is nevertheless reeling from this decision. There are a issue of novel concepts as well as in that place is a skillful bargain of novel terminology inwards this Opinion which the ECJ may or may non adopt. remains unconvinced past times the declaration that exercise for registrability purposes as well as exercise for infringement purposes are different. Surely both are aimed at proving the same matter – that consumers perceive the sign inwards query every bit indicating the root of goods or services on which it is used. In a slice of shameless self-promotion of her masters, Merpel points out that they accept a majority coming out imminently on the subject, Trade Mark Use, published past times OUP.