A DISPUTE over a request to trademark KitKat's Have A Break slogan will be finally resolved by the British courts.

Nestl has used the phrase to support its KitKat chocolate bars with the slogan Have A Break ... Have A KitKat, which already is protected.

Now, the Swiss chocolate giant wants to extend that to the partial slogan.

In her opinion on the case, Advocate General Juliane Kokott, of the Luxembourg-based European Court of Justice, did suggest the partial phrase Have A Break did not enjoy enough distinctive character.

Nestl said, however, it was up to the British courts to assess the basis of the case, and welcomed the advice to send it back to London for the appeal.

If confirmed by the full EU court "this now means that the facts in the case can be reconsidered by the British courts applying the right legal test", said Nestl lawyer Jane Mutimear.

The Advocate General said, in her opinion, that even if an average consumer completes the phrase Have A Break with Have A Kit Kat, "on its own that reflex reaction is not sufficient to prove distinctive character" to be an automatic trademark.

In her conclusion, she set the test Nestl should face.

She argued: "The relevant consumer groups must be shown to understand that the element in question, if used separately, designates a product as originating from a specific undertaking, thus distinguishing it from products from other undertakings."

The opinions of the Advocate General are followed in about 80 per cent of the cases by the full court.

A decision is expected within several months.

Nestl applied in 1995 to have the Have A Break phrase registered for all chocolate products. It's rival, Mars, objected.

British authorities blocked the Nestl application on the grounds that the phrase lacked any inherent distinctive character.

Nestl appealed and the British court asked the European Court to issue an opinion.

A Nestl spokesperson said: "We're delighted at the Advocate General's comments which, in principle, mean we can register the words sequence Have A Break as a trademark, providing certain conditions are fulfilled.

"However, the final decision rests with the UK Registry.

"Nestl invests heavily in its brands and to the consumer this represents a guarantee of quality.

"We therefore believe we should be allowed to protect our brands that provide this guarantee of quality from Nestl."

Updated: 11:57 Wednesday, February 02, 2005