“1. Trade marks (1) In this Act a ‘trade mark’ means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging. [(2)....] 2. Registered trade marks (1) A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act. (2) No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act affects the law relating to passing off. 3. Absolute grounds for refusal of registration (1) The following shall not be registered- (a) signs which do not satisfy the requirements of section 1(1), (b) trade marks which are devoid of any distinctive character, (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade: Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it. 11. Limits on effect of registered trademark [(1)....] (2) A registered trade mark is not infringed by – (a) the use by a person of his own name or address, (b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or (c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts), provided the use is in accordance with honest practices in industrial or commercial matters.”
“94. In assessing the extent to which I should regard these witnesses as representatives of the relevant public I must bear in mind [counsel for Mars] justifiable criticism of the way the evidence was collected. 95. Further, I suspect that there would, to some extent, have been a process of self-selection which resulted in more of those with stronger views going on to make statutory declarations compared to the other people...approached who, for one reason or another, did not do so. 96. Nevertheless, I believe that the evidence indicates that a proportion of the public would be likely to suppose that a chocolate bar called HAVE A BREAK originated from the makers of Kit Kat. On the evidence before me, I am unable to say that it is a significant proportion.”
“The key point is, in my judgment, that any expectation that has been shown to exist about the trade source of a product called “Have a Break”, arises not because of the use of the trade mark “Have a Break”, but because of the use of the trade mark “Have a break, have a Kit Kat”
“...I find that the mark HAVE A BREAK will be readily understood by consumers as an origin neutral invitation to consume a snack when it is used in the course of promoting a snack food product, whether the use is in an advertisement or on the packaging of the product. Consequently, I find that, prima facie, the words “Have a break” have no trade mark character when considered in relation to the snack products listed in the application, and the mark is therefore excluded from registration by s.3(1)(b) of the Act.”
“In my judgment, in reaching his decision the Hearing Officer applied the law correctly and gave manifestly careful consideration to the essentially factual question of whether or not the mark enjoyed the requisite distinctive character. He concluded that it did not. I consider that that was a conclusion to which he was entitled to come. It is possible that others might have come to a different conclusion, but that does not mean that the Hearing Officer was wrong to come to the conclusion he did. I consider that I ought only to review his decision if I am satisfied that it was plainly wrong or perverse, or that he materially misdirected himself as to either the facts or the law in the course of arriving at it. I am not satisfied that it was or he did. I dismiss the appeal so far as based on inherent distinctiveness.”
“37. It is clear from those two provisions [sections 3(1) and 11(2)] taken together that the purpose of the prohibition of registration of purely descriptive signs or indications as trade marks is...to prevent registration as trade marks of signs or indications which, because they are no different from the usual way of designating goods or services or their characteristics, could not fulfil the function of identifying the undertaking that markets them and are thus devoid of the distinctive character needed for that function. 39. The signs and indications referred to in [section 3(1)(c)] are thus only those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought. Furthermore, a mark composed of signs or indications satisfying that definition should not be refused registration unless it comprises no other signs or indications and, in addition, the purely descriptive signs or indications of which it is composed are not presented or configured in a manner that distinguishes the resultant whole from the usual way of designating the goods or services concerned or their essential characteristics. 40. As regards trade marks composed of words, such as the mark at issue here, descriptiveness must be determined not only in relation to each word taken separately but also in relation to the whole which they form. Any perceptible difference between the combination of words submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character on the word combination enabling it to be registered as a trade mark. 41. It is true that Article 7(2) of Regulation No. 40/94 states that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the Community. That provision...implies that, if a combination of words is purely descriptive in one of the languages used in trade within the Community, that is sufficient to render it ineligible for registration as a Community trade mark. 42. In order to assess whether a word combination such as BABY-DRY is capable of distinctiveness, it is therefore necessary to put oneself in the shoes of an English-speaking consumer. From that point of view, and given that the goods concerned in this case are babies’ nappies, the determination to be made depends on whether the word combination in question may be viewed as a normal way of referring to the goods or of representing their essential characteristics in common parlance. 43. As it is, that word combination, whilst it does unquestionably allude to the function which the goods are supposed to fulfil, still does not satisfy the disqualifying criteria set forth in paragraphs 39 to 42 of this judgment. Whilst each of the two words in the combination may form part of expressions used in everyday speech to designate the function of babies’ nappies, their syntactically unusual juxtaposition is not a familiar expression in the English language, either for designating babies’ nappies or for describing their essential characteristics. 44. Word combinations like BABY-DRY cannot therefore be regarded as exhibiting, as a whole, descriptive character; they are lexical inventions bestowing distinctive power on the mark so formed and may not be refused registration under [section 3(1)(c)].”
“40. For a mark to possess distinctive character within the meaning of [Article 3(1)(b)] it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from products of other undertakings. 41. In addition, a trade mark’s distinctiveness must be assessed by reference to, first, the goods or services in respect of which registration is sought and, second, the perception of the relevant persons, namely the consumers of the goods or services. According to the Court’s case-law, that means the presumed expectatations of an average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect. 42. Finally, the Court observed in paragraph 48 of its judgment in Philips that the criteria for assessing the distinctiveness of three-dimensional shape of product marks are no different from those to be applied to other categories of trade mark. Article 3(1)(b) of the Directive makes no distinction between the different categories of trade mark for the purposes of assessing their distinctiveness.”
“On the basis of my findings so far, whatever distinctive character HAVE A BREAK has acquired is as a result of the use, prior to the relevant date, of the slogan mark Have a Break, Have a Kit Kat.”
“Once a mark is registered, the proprietor receives an exclusive right to use it in respect of goods for which it is registered. In the case of an identical mark, the proprietor has an absolute right to prevent unauthorised registration or use of the mark by third parties, without having to establish a likelihood of confusion. Ss.5(1) and 10(1) refer. This is the umbra of protection afforded by registration. 103. In addition, sections 5(2), 5(3), 10(2) and 10(3) provide a penumbra of protection which extends to the use and registration of similar marks and goods, where there exists a likelihood of confusion, and in some situations extends also to dissimilar goods. 104. The applicant’s evidence of use fails to establish any, or any material, use of HAVE A BREAK as an independent trade mark, at least prior to the date of the application. In these circumstances, the most the applicant’s evidence can establish is that HAVE A BREAK falls within the penumbra of protection afforded to the (already registered) trade mark HAVE A BREAK HAVE A KIT KAT. Even if the evidence establishes this, I do not believe that this is sufficient to justify the registration of HAVE A BREAK solus, thus creating a new umbra and penumbra of protection for that mark in the absence of any, or any material, use of it prior to the relevant date. 105. I have therefore come to the conclusion that the mark HAVE A BREAK has not been shown to have acquired a distinctive character through use prior to the date of application.”
“26. As a matter of construction, each “it” refers back to “trade mark”
“The contention of the examiner that because the words THE GREATEST SHOW ON EARTH have always appeared alongside the appellant’s registered trade mark, the sign is not likely to be considered as evidence of trade mark use is not in the Board’s view a valid one. The Board can well understand that a slogan-like phrase associated with a trade mark, like in this case, might by repetition over time, create a separate and independent impression.”
“if the facts have been found and the community law issue is critical to the court’s final decision, the appropriate course is ordinarily to refer the issue to the Court of Justice unless the national court can with complete confidence resolve the issue itself. In considering whether it can with complete confidence resolve the issue itself the national court must be fully mindful of the differences between national and community legislation, of the pitfalls which face a national court venturing into what may be an unfamiliar field, or the need for uniform interpretation throughout the community and of the great advantages enjoyed by the Court of Justice in construing community instruments. If the national court has any real doubt it should ordinarily refer.”
“Whether the distinctive character of a mark referred to in Article 3(3) Council Directive 89/104/EEC and Article 7(3) Council Regulation 40/94 may be acquired following or in consequence of the use of that mark as part of or in conjunction with another mark?”
“Wealthy traders are habitually eager to enclose parts of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure.”