linked in facebook twitter rss

  • Interbrand
  • Brandchannel

your chance!
your chance!
Also of interest...
 

Kit Kat - barred


  Kit Kat
barred
by Slaven Marinovich
June 6, 2005

For nearly fifty years, Kit Kat has used the strapline "Have a break... Have a Kit Kat." The phrase was used in the chocolate bar's first television advertisement in 1957 and has entered the English-speaking lexicon as belonging to the two- or four-fingered bar.

Now owner Swiss food giant Nestlé is working hard to acquire the rights to just three of the seven words in its strapline.

 
 

Nestlé registered "Have a break... Have a Kit Kat," "Kit Kat" and "Have a Kit Kat" as trademarks in the UK. But issues arose when the company sought to register only the words "Have a break" as an independent phrase for chocolate products in March 1995.

Rival Mars opposed, claiming that "Have a break" could not be registered as it had no distinctive character (unlike the "Have a break... Have a Kit Kat" strapline), and therefore did not comply with rules for trademark registration.

A trademark's essential function is to distinguish goods or services of one company from another. A trademark must therefore be of distinctive character and cannot merely be descriptive of the goods or services sold.

A mark can be inherently distinctive, or it may, through use, acquire a distinctive character, initially lacking, and thus be registered as a trademark.

Nestlé's hearing officer established that the relevant consumers construe "Have a break" as an invitation that is neutral in regard to origin and therefore devoid of inherent distinctiveness. Further the mark had not acquired distinctive character through use because, although there was extensive use of "Have a break... Have a Kit Kat," hardly any use was made of the line "Have a break" on its own. The hearing officer felt that use of the first three words on their own was essential. Therefore Nestlé`s application was blocked in December 2002.

Nestlé appealed, pointing to a consumer survey showing that a high proportion of the public associated the phrase "Have a break" with the trademark. The Court of Appeal had to consider whether the phrase "Have a break" as a result of use of the principal strapline "Have a break... Have a Kit-Kat" had acquired its own independent distinctive character.

For technical reasons to do with interpreting the UK Trade Mark Act in accordance with Community Law, the Court decided that this question had to be referred to the European Court for clarification.

On 27 January 2005, Juliane Kokott, an advocate general at the European Court in Luxenbourg, released her opinion on the matter.

Kokott stated that the use of a word sequence as part of a word mark can, as a matter of principle, lead to that word sequence acquiring the requisite distinctive character in order to be registrable as a trademark.

Kokott said that it may be presumed that the slogan "Have a break" used on its own, causes many relevant consumers to react automatically and to complete that slogan with "Have a Kit Kat." However, on its own that reflex reaction is not sufficient to prove distinctive character.

Instead it must be demonstrated that a product or service designated by the mark "Have a break" will in fact be attributed by the relevant consumers directly and unmistakably to the manufacturers of Kit Kat: Nestlé. It is therefore not sufficient for those consumers to wonder whether the product or service originates from that manufacturer. That would only give rise to the likelihood of confusion.

A brand owner wishing to register a non-distinctive element of a composite trademark is advised to make some individual use of the mark applied for on its own before application. Where the composite trademark is highly distinctive, as in Kit Kat's case, today's consumers should, with the help of advertising, quickly learn to treat the target mark as a trademark. This should then lead to a fast and successful registration of the mark.

An advocate general's opinion is followed in about 85 percent of cases by the full court; in this case the full court's ruling is due later this year. Once the full court rules on what criteria are needed, the UK court must make a final judgment if Nestlé and its "Have a break" slogan meet those terms.

But how important is the slogan "Have a break... Have a Kit Kat" to Nestlé anyway?

Research found that while 90 percent of the population could recite the slogan, it did not actually make them purchase a Kit Kat any more. So Nestlé dropped "Have a break... Have a Kit Kat" last year and replaced it with the slogan "Make the most of your break." With this move, Nestlé aims at increasing the market for workplace confectionery and snacks, currently worth € 140 billion in western Europe alone (US$ 171bn).

But according to a report in the Financial Times, the company is not giving up entirely on the old slogan. The FT speculated that it could be reinstated in three or four years when Nestlé has "re-established the relevance of the brand."

 
     
  

Slaven Marinovich is a freelance writer in Hamburg, Germany.

  
     
 commenting closed Add Social Bookmark bookmark  print
 suggest topic  recommend ( 6 )  email

  brandchannel profile archive   2011  |  2010  |  2009  |  2008  |  2007  |  2006  | 2005  |  2004  |  2003  |  2002  |  2001
 
 
Dec 19, 2005 Jonathan Adler - furnishing touch -- Vivian Manning-Schaffel
  Home furnishings design brand Jonathan Adler proves that the pot grows when you stick to what you love best.
   
 
Dec 12, 2005 The Pop Shoppe - pops back -- Renée Alexander
  The Pop Shoppe pours on the nostalgia to attract new markets with its retro appeal.
   
 
Dec 5, 2005 Express Personnel - clocks in -- Dale Buss
  Express Personnel takes a slow approach to winning over accounts.
   
 
Nov 28, 2005 Canadian Tire - auto response -- Renée Alexander
  Canadian Tire wheels out a female-friendly store.
   
 
Nov 21, 2005 Starbucks - supreme bean -- John Simmons
  On what grounds does Starbucks succeed in places where American brands are not welcome?
   
 
Nov 14, 2005 Preserve Toothbrush - envirodental -- Evelyn Hafferty
  The quest to sell an eight-dollar toothbrush leads to over-design in the category and waste in our landfills. Recycline’s Preserve sinks its teeth into a more sustainable solution.
   
 
Nov 7, 2005 REI - working out -- Dale Buss
  Outdoor gear retailer REI climbs hand in hand with its employees.
   
 
Oct 31, 2005 Vespa - viva -- Jackson Mahr
  Vespa’s authenticity gives it an unassuming cool that has survived through the decades.
   
 
Oct 24, 2005 NHL - face-off -- Evelyn Hafferty
  The NHL shoots, but does it score with its new logo?
   
 
Oct 17, 2005 Putumayo - earth tones -- Alycia de Mesa
  Putumayo packages world music for the neophyte.
   
 
Oct 10, 2005 Tim Hortons - power play -- Renée Alexander
  Can Canadian fast-food franchise Tim Hortons tempt Americans away from Dunkin’ Donuts and McDonald’s?
   
 
Oct 3, 2005 Neau - no water -- Erwin Wijman
  A social campaign in the Netherlands says Neau to bottled waters.
   
 
Sep 26, 2005 The Source - rewired -- Renée Alexander
  RadioShack rebrands itself in Canada as The Source and signals its approach up North.
   
 
Sep 19, 2005 Dragonair - flights of fancy -- Adeline Chong
  Flying Dragons: Dragonair’s livery design draws from Chinese tradition.
   
 
Sep 12, 2005 Make Poverty History - passion statement -- Rob Mitchell
  Non-profit organization Make Poverty History makes history in a very short period of time by getting on the agenda of the G8 summit.
   
 
Sep 5, 2005 Clear RX - design on drugs -- Evelyn Hafferty
  Target shows bottle by adopting an innovative approach to pharmaceutical container design.
   
 
Aug 29, 2005 Napster - pounces -- Rob Mitchell
  Cat Tails: Napster springs back to life only to encounter an Apple in its place.
   
 
Aug 22, 2005 Mountain Crest - brewing feud -- Renée Alexander
  Mountain Crest starts a bar brawl among Canadian brewers.
   
 
Aug 15, 2005 CBGB - punks out -- Abram Sauer
  Punk rock venue CBGB’s faces extinction 20 years past its due date.
   
 
Aug 8, 2005 Tommy Bahama - dressed to chill -- Alycia de Mesa
  Tommy Bahama hopes to entice you into the good life of sun and surf.
   
 
Aug 1, 2005 United Nations - fractured -- Lisa Marchese and Rachel Simmons
  Is the United Nations in crisis? Not surprisingly a recent poll found the UN suffers from negative perceptions, but what to do?
   
 
Jul 25, 2005 The Peninsula Hotels - made -- Adeline Chong
  The Peninsula Hotel anchors its brand in its staff.
   
 
Jul 18, 2005 Harry Potter - brand wizard -- Stephen Brown
  What's the secret behind the Harry Potter brand?
   
 
Jul 11, 2005 Jetsgo - looney -- Renée Alexander
  Three strikes you're out: The founder of failed airlines Jetsgo, Intair and Royal is still trying to take off, but can a brand image recover from bankruptcy?
   
 
Jul 4, 2005 America - home free? -- Simon Anholt
  The challenger to America's brand is not America's military foes, but the disaffection of its consumers and the skill and determination of its competitors.
   
 
Jun 27, 2005 Dubai - mirage? -- Sunil Varughese
  Enhancing Brand Dubai
   
 
Jun 20, 2005 Liberator - well positioned -- Abram Sauer
  Erotic goods manufacturer Liberator straddles the market between an X-treme sport for the XXX crowd and a remedy for bad back sufferers.
   
 
Jun 13, 2005 easyGroup - complex -- Jackson Mahr
  EasyGroup: are the strengths of each sub-brand robbed by the diversity of the others?
   
 
May 30, 2005 Essence - right time? -- A.K. Cabell
  Essence leads the way in targeting African-American women.
   
 
May 23, 2005 MG Rover - sacked -- Chris Grannell
  MG Rover’s breakdown demonstrates the value of intangible assets.
   
 
May 16, 2005 Lloyds TSB - high interest? -- Alicia Clegg
  Lloyds TSB set out to raise interest among job seekers in the UK, but how does its recruitment campaign work with the overall brand identity?
   
 
May 9, 2005 Sony - played -- Jackson Mahr and Lesley Keene
  Sony’s fall is not isolated to its own actions; however it needs to act immediately to keep its media empire from crumbling.
   
 
May 2, 2005 QuikTrip - full service -- Alycia de Mesa
  QuikTrip strives to show that quick doesn’t need to mean nasty.
   
 
Apr 25, 2005 Hummer H3 - civilized -- Alycia de Mesa
  The General Motors sets out to rule the road with the Hummer H3.
   
 
Apr 18, 2005 Microsoft - no connection -- Jackson Mahr
  How can Microsoft be such a valuable brand when most users are so resentful of the company and its products.
   
 
Apr 11, 2005 H&R Block - angling -- Peter J. Burger
  H&R Block hopes its name will sprout up throughout the year, not just in spring.
   
 
Apr 4, 2005 Les Poochs - doggy style -- Robert Sprung
  Can an old marketer learn new tricks from a canine fragrance brand?
   
 
Mar 28, 2005 Starbucks Coffee Liqueur - double shot -- Alycia de Mesa
  Two vices for the price of one: Starbucks introduces Coffee Liqueur.
   
 
Mar 21, 2005 London Underground - bridging the gap -- Jackson Mahr
  Can the London Underground take its quaint wartime brand into the 21st century?
   
 
Mar 14, 2005 agnès b - je ne sais quoi -- Jackson Mahr
  Fashion brand agnès b finds small is beautiful.
   
 
Mar 7, 2005 Michelin Red Guide - cooked -- Joe Ray
  Recent events have scorched the Michelin Red Guide’s credibility, but is its goose in fact cooked?
   
 
Feb 28, 2005 Land Rover LR3 - driven -- Alycia de Mesa
  LR3: How does the first Land Rover developed entirely under Ford Motor Company ownership handle?
   
 
Feb 21, 2005 Nalgene Outdoor - venturing -- Jared Salter
  Nalgene’s initial popularity started with a happy accident, but it took a bit more planning to turn it into a success.
   
 
Feb 14, 2005 OnStar - first aid -- Dale Buss
  General Motor’s OnStar technology arrives after a long journey.
   
 
Feb 7, 2005 IBM - reboots -- Chris Grannell
  What does the sale of IBM’s manufacturing unit to Chinese manufacturer Lenovo mean for either brand?
   
 
Jan 31, 2005 Google Appliance - nice rack -- Chris Grannell
  Google links its brand with a hardware offering, the Search Appliance.
   
 
Jan 24, 2005 Virgin - spreads -- Jackson Mahr
  How far can Virgin stretch before the message is no longer pure?
   
 
Jan 17, 2005 Walkers Sensations - chip shape -- Alicia Clegg
  Walkers Sensations brings a premium brand to the mainstream market.
   
 
Jan 10, 2005 Maxim - brand masturbation -- Abram Sauer
  Can Maxim extend its brand without shortening its life?
   
 
Jan 3, 2005 Michelin Man - pumped -- Jackson Mahr
  Michelin breaks all the rules with the Michelin Man and creates a lovable mark for a utility brand.