"HAVE A BREAK" – a well-known mark?

Advertising slogans are registrable as marks provided they meet certain requirements. These include, for example, a certain degree of originality and brevity. The slogan "HAVE A BREAK" of the Nestlé corporate group was registered in 2007 as a Community trade mark inter alia for chocolate goods and is used in advertising campaigns for the chocolate bar "Kit Kat". The question arises when a mark proprietor can rely on the protection for reputation of a Community trade mark. The Higher Regional Court (OLG) Frankfurt a.M. investigated this question.

The confectionery manufacturer Nestlé took action against competitor company Griesson-de Beukelaer and their mark "TWIN BREAK", which has been registered since 2011 likewise for chocolate goods and similar products. Both companies distribute chocolate-coated waffle bars under the said marks.

Nestlé is of the opinion that the use of the designation "TWIN BREAK" infringes the rights arising from the mark "HAVE A BREAK".

At first instance, Nestlé was unsuccessful; the action was dismissed by the Regional Court (LG) Frankfurt a.M.

The decision of the court

With judgment of 17.09.2015 – Az. 6 U 148/14 the view held by Nestlé was largely confirmed. The Frankfurt judges concluded that "HAVE A BREAK" is a well-known mark.

Consumer surveys led to the result that "HAVE A BREAK" has a market penetration rate of 67.2% among the general population in Germany. With regard to the degree of association with the product Kit Kat, expert opinions arrived at a percentage of 61%. In addition, the advertising slogan "HAVE A BREAK" has been used for decades and the chocolate bar "Kit Kat" can be purchased in most supermarkets and other points of sale in Germany. Thus, the protection for reputation of "HAVE A BREAK" was confirmed – however, only for Germany.

The court is furthermore of the opinion that Griesson-de Beukelaer successfully attempted, with "TWIN BREAK", to position itself within the sphere of attraction of the well-known plaintiff's mark in order to benefit from its drawing power and reputation and to exploit the economic efforts of the plaintiff in creating and maintaining the image of the plaintiff's mark.

Griesson-de Beukelaer is now no longer permitted to offer chocolate waffle products under the designation "TWIN BREAK" and must delete the German mark "TWIN BREAK" insofar as it is registered for chocolate goods and similar products.

Conclusion

The judgment from Frankfurt a.M. demonstrates that advertising slogans also have significance under trade mark law. For the question of the conditions under which a mark is well-known, all relevant circumstances of the case must be taken into account, such as, for example, the market share of the mark, the intensity and geographical extent and the duration of use. For the protection for reputation of a Community trade mark, it is sufficient if the required degree of recognition is achieved only in the territory of the Federal Republic of Germany. However, the protection for reputation is then likewise limited to this territory.