THE ATTACK OF THE MARS
In a jurisdiction far, far away, Nestle and Mars, the
confectionary behemoths, battle it out on the floors of the
European Court of Justice. The Mark “Have a break…Have
a Kit Kat” was already registered as a TM by Nestle, but now, Nestle
is trying to register “Have a break” in isolation. Will Mars be able to stop Nestle…
The following discussion, despite being based upon a 2005 ECJ Judgment (C-353/03), is extremely relevant to TM lawyers as it deals with a question that lies at the core of validity issues concerning unconventional marks:
“May the distinctive character of a mark referred to in Article 3(3) of [the directive]… be acquired following or in consequence of the use of that mark as part of or in conjunction with another mark?“
In other words, the Court needed to clarify upon whether a mark could acquire distinctiveness as a consequence of being used along with other marks. The query finds greater significance in the context of unconventional marks (shapes, colours, slogans), as they generally exist in conjunction with conventional marks (word marks, logos, etc.).
Prior to deconstructing the judgment, let us have a quick look at the relevant statute.
3(3) of First Council Directive 89/104/EEC
“A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1 (b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration.“
Trade Mark Act, 1999 (India) equivalent provision (S.9) for reference:
“Provided that a trade mark shall not be refused registration if before the date of application for
registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.“
To briefly recapitulate, the marks “Have a break…Have a Kit Kat” and “Kit Kat” were already registered by Nestle and their validity isn’t under question. Now, Mars is opposing Nestle’s attempt to register the mark “Have a break“. It isn’t the mark’s lack of inherent distinctiveness that’s in dispute, but whether the mark has acquired distinctiveness.
Now, the central question is if a mark can acquire distinctiveness despite being used as “part of” or along with “in conjunction with” another mark. It is relevant, for comprehension, to take note of the distinction between the phrases “part of” and “in conjunction with“. A mark is “part of” another mark if it is a sub-component (as is the case with the mark under discussion). On the other hand, it is said to be “in conjunction with” if the marks are used together, despite being actually distinct.
Nestle argued that marks could acquire distinctiveness, irrespective of whether they were used in conjunction with or as part of another mark. The argument was based on the logic that preventing registration of such marks, would impliedly, preclude registration of unconventional marks as well. And such a consequence wouldn’t be acceptable as the relevant statute explicitly allows for registration of unconventional marks.
On the other hand, Mars argued for a more categorical approach. It suggested that marks that were used in conjunction with registered marks could acquire distinctiveness, but marks that were part of a registered mark couldn’t. The judgment doesn’t provide the rationale behind the stance, though the Advocate General’s opinion (discussed later) dealt with it.
Moving on, the Court’s analysis was rather straightforward. Reviewing the case law on the matter, the Court held that there existed no such restriction in the statute’s text and the sole statutory requirement was the mark’s “use” as a trade mark (Phillips; Case C-299/99,  ECR I-547; Discussed here). Please note that the “use” discussed above refers to the usage of the mark as a trade mark by the undertaking, as opposed to the mark’s usage as an identifier by the consumers. The latter is also a relevant factor in certain instances, but wasn’t up for debate here (Refer here).
Further, the Court reviewed the relevant factors for determining acquired distinctiveness, laid down in Windsurfing Chiemsee (Joined Cases C-108/97 and C-109/97, ECR I-2779), namely “the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations“.
To sum up, the Court held that marks could acquire distinctiveness, irrespective of whether they were used as a part of or in conjunction with another mark. The conditions to be satisfied are that the undertaking uses the mark as a trade mark and further, that the relevant consumers rely upon the mark to identify the product to originate from the concerned undertaking.
I have reproduced the relevant excerpt below:
“Yet, such identification, and thus acquisition of distinctive character, may be as a result both of the use, as part of a registered trade mark, of a component thereof and of the use of a separate mark in conjunction with a registered trade mark. In both cases it is sufficient that, in consequence of such use, the relevant class of persons actually perceive the product or service, designated exclusively by the mark applied for, as originating from a given undertaking.“
COMING UP IN PART II
Though the Court’s analysis is rather simplistic, the Advocate General’s opinion analyzes the issues with far greater rigour. Let us review the same in Part II, along with a normative analysis of the law.
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