IP protection for your food and beverage company is vital as it can transform an invention into a valuable commercial asset, act as a hallmark of quality, and act as a deterrent preventing imitations from competitors.
As consumers, we encounter a multitude of well-known brands from the food and beverage sector on a daily basis. Whether that be when we are selecting our choice of cereal or coffee in the morning or choosing specific ingredients and accompaniments for our evening meal. It therefore goes without saying, that IP protection for your food and beverage company is vital as it can transform an invention into a valuable commercial asset, act as a hallmark of quality, and act as a deterrent preventing imitations from competitors.
We see large corporations spending a great deal of time and money investing and promoting their brands and protecting their vast IP portfolios by filing trade mark applications for names, logo’s, packaging, slogans, colours, and sounds. However, it is just as important that Brand owners also give an equal amount of time and attention when it comes to actively enforcing and defending those IP rights against competitors.
We have outlined some historical and recent cases in the EU and UK which provide some practical tips for brand owners in the food and beverage sector. The below mentioned cases illustrate that trying to register, or even hold on to that valuable brand may seem easier in theory than it is in practice.
The Estate of Elvis Presley v BrewDog – All shook up over the name Elvis
Consumers of Beer, Lager and Ales will be aware that there is a great deal of competition in the market, particularly with the success of craft beers in recent years. Owners of these brands have recognised that it is vital for beer producers to use trade marks that stand out and ensure that the rights are protected appropriately.
In 2015, the Scottish craft beer company BrewDog launched a grapefruit and orange infused IPA Beer, which it named ‘Elvis Juice’. In 2016, BrewDog sought to protect the marks ELVIS JUICE and BREWDOG ELVIS JUICE in the UK for goods which included beer and ale. The holding company of the Elvis Presley Estate objected to this and filed formal notices of opposition based on its ELVIS and ELVIS PRESLEY trade marks, which are registered for a variety of goods including beer. The Elvis Presley Estate succeeded in its oppositions against both applications. BrewDog appealed these decisions and was successful in relation to the marks BREWDOG ELVIS JUICE but was unsuccessful in appealing the decision for the registration of ELVIS JUICE.
Whilst BrewDog was successful in defending the opposition against the trade mark BREWDOG ELVIS JUICE, this case highlights the importance of conducting a degree of searching before setting your hopes on a particular trade mark or brand name. A full availability clearance search will identify earlier trade mark rights, reduce the risk of conflict with earlier right holders and will also ultimately reduce the possibility of costly and lengthy opposition proceedings.
Penguin v Puffin – P… P… P… Pick up a… puffin? How close is too close?
While browsing the supermarket aisles whether in person or online, as consumers we often see supermarket own/ home brands which bare a striking resemblance to well-known brands. An example of this is shown in the case involving United Biscuits, who enforced its unregistered IP rights and took action against Asda supermarket for copying their trade mark on the following: colour, typography, and bird (Penguin) character. United Biscuits argued that Asda was acting deceitfully in passing off its own-brand product as that of United Biscuits. The courts agreed and decided that the similarities between the respective packaging would mislead consumers. As such, ASDA was forced to re-design its products. ASDA continue to sell its own-brand chocolate Puffin biscuits in plain blue packaging, and its own-brand mint Puffin biscuits in plain green packaging.
Although this case is a win for Penguin, we suggest that brand owners secure a trade mark registration before launching a product. If your trade mark is registered and you have discovered another third party using an identical or similar mark, you will be better placed to prevent that use with a trade mark registration, rather than relying on a claim of passing off, which can be difficult and expensive to pursue.
McDonalds v Supermac – Ronald McDonald is not lovin’ this.
Fast food restaurant chains McDonalds and Supermac’s had been involved in a number of trade mark disputes over the years due to the use of ‘Mac’ and ‘Mc’. The most recent cases involve the Irish fast food restaurant chain Supermac’s applying to cancel McDonald’s EU trade mark registrations for ‘Big Mac’ and ‘Mc’ respectively.
In the UK and EU, once a mark has been registered for five years, it is possible for a third party to apply to cancel or revoke that mark if it has not been put to genuine use in relation to the goods and services it covers and there are no proper reasons for non-use. In both matters McDonald’s was required to submit evidence that it had used the brands in the EU between April 2012 and April 2017. At first sight, this seemed like an easy obstacle for McDonalds to overcome because Big Mac’s, McFlurry’s, and McChicken sandwiches are all synonymous with the McDonalds Brand.
In support of its registrations, McDonalds submitted evidence which consisted of signed affidavits, extracts from the McDonald’s website from several different countries, several marketing documents, and different surveys.
The European Union Intellectual Property office (EU IPO) considered that the evidence submitted did show the correct time and place of use, that being the European Union within the aforementioned period. However, it held that the evidence submitted was not sufficient to show that the mark had been put to genuine use and was of limited value because the evidence submitted did not provide any data for the real commercial presence of the trade mark (e.g. indications of numbers of visitors to its website) for any of the goods or services it was registered for. Likewise, the EU IPO found that the ‘Mc’ trade mark had been used as a prefix to a secondary element; for example, McFlurry and McChicken. According to EUIPO’s Cancellation Division, McDonald’s failed to prove separate use of the trademark ‘Mc’ for most of the contested goods. McDonald’s EU trade marks for ‘Big Mac’ and ‘Mc’ were therefore removed from the trade mark register.
This case ultimately concerns having the appropriate evidence to defend a trade mark registration and serves as a reminder for brand owners to ensure that they keep accurate records of the development of all IP work. Therefore, keeping abreast of your business and IP rights will ensure that if/ when called upon, brand owners can provide satisfactory evidence to ensure that its rights are not removed from the register.
So, with that in mind, here are some practical points we encourage brand owners to consider
- Conducting thorough searches before launching is important, particularly in the food and beverage sector. Aside from a search of identical and similar trade marks, consideration as to whether the brand has negative connotations in other jurisdictions, and whether it has a Protected Designation of Origin (PDO) or a Geographical Indication (GI) should also be considered.
- Conducting regular IP audits to ensure protection is up to date, this includes unregistered rights, other forms of confidential information, including trade secrets and other commercial information such as recipes for sauces, drinks, and, and baked goods.
- Keep records to show development of all IP work, this will help track the history of current and new products. In a dispute situation, being able to demonstrate the history of the creation of an unregistered design or brand is crucial.
- Before disclosure to third parties, consider the registration of any IP rights first, or set up a confidentiality agreement. In situations where work is contracted out to others or developed jointly with others, consider putting formal agreements in place to deal with issues including confidentiality and ownership of IP rights.
- Keep an eye on competitors and their new products and ensure that copycat or lookalike products are dealt with as soon as possible. Remedies that are available to reinforce brand owners’ rights include Oppositions at the Intellectual Property Office (in the UK or abroad) or Infringement Actions in the courts. A successful claimant in court proceedings may be able to obtain financial damages for a third party’s infringement as well as an injunction to prevent the continued infringement. In suitable cases, interim injunctions (i.e. Temporary orders) may be obtained to prevent e.g. launch of a new potentially infringing third party product. But those orders most be sought from the court very soon after you have become aware of the potentially infringing actions and so advice must be sought promptly.