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United Kingdom Intellectual Property Office Decisions
You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> HAVE A BREAK (Trade Mark: Opposition) [2002] UKIntelP o23202 (31 May 2002)
URL: http://www.bailii.org/uk/cases/UKIntelP/2002/o23202.html
Cite as: [2002] UKIntelP o23202
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HAVE A BREAK (Trade Mark: Opposition) [2002] UKIntelP o23202 (31 May 2002)
For the whole decision click here: o23202
Trade mark decision
- BL Number
- O/232/02
- Decision date
- 31 May 2002
- Hearing officer
- Mr A James
- Mark
- HAVE A BREAK
- Classes
- 30
- Applicant
- Societe des Produits Nestle S.A.
- Opponent
- Mars UK Limited
- Opposition
- Sections 3(1)(a), (b), (c) & (d)
Result
Section 3(1)(a) - Opposition failed
Section 3(1)(b) - Opposition succeeded
Section 3(1)(c) - Opposition failed
Section 3(1)(d) - Opposition failed
Points Of Interest
- 1. See also BL O/254/02 where an opposition by Asda Stores Ltd, based on their mark ASDA TAKEABREAK, was unsuccessful.
Summary
The applicant had previously applied for registration under the 1938 Trade Marks Act and on appeal to the High Court was refused as not registrable prima facie and also that it had not acquired a distinctive character at the date of the application in 1983 (1993 RPC 217).
The Hearing Officer considered the prima facie case and decided that the mark was not barred from registration by Section 3(1)(a); that 'HAVE A BREAK' were not words in general use in relation to chocolate products, biscuits etc and thus did not fall foul of Section 3(1)(d); that the words comprising the mark are not a normal means of designating any characteristics of the goods applied for and thus the ground under Section 3(1)(c) also failed.
Under Section 3(1)(b) the Hearing Officer noted that the mark at issue was a slogan but this did not mean that the mark should be treated any differently to a normal mark. However, he concluded that the mark would be readily understood by consumers as an invitation to ‘have a break’ and he went on to conclude that, prima facie, the mark HAVE A BREAK has no trade mark character in relation to the goods at issue. The mark, therefore, was excluded from registration by Section 3(1)(b).
Both parties had filed significant amounts of evidence in support of their conflicting views. The applicants evidence included survey evidence which the Hearing Officer did not find totally convincing. What the evidence showed was that HAVE A BREAK is associated with the chocolate product KIT KAT and that combination has already been registered by the applicants. The Hearing Officer concluded after a full sift of the evidence, and taking submissions at the Hearing into account, that the mark HAVE A BREAK had not acquired a distinctive character through use at the date of application in 1995. Opposition thus succeeded.