Imitation is said to be the sincerest form of flattery, although from the number of ‘copycat’ type cases that arise in the food and drink sector, it is clear that doesn’t hold true for many! That is no surprise; brands invest heavily in differentiating their products and want to keep how their product is identified unique to them.
Depending on the nature of your brand identifier and/or product, the most common source of protection comes from registering one or more trade marks. What can be trade marked is very wide – essentially anything that can be shown graphically and can distinguish one entity’s goods from another. There is the obvious – products and brand names – but trade marks have also been registered for the visuals on packaging, shapes of products or packaging, colours, jingles or sounds, and even just a colour. There are, of course, limitations, including where a sign is descriptive and/or non-distinct or where it indicates the characteristics or geographic origin of the goods or services.
Alongside trade marks, there are potential rights in passing off (which are akin to trade marks but don’t require action to register your rights). To benefit from protection under passing off, a business needs to be able to show that it: has goodwill in its goods/services; that there has been a misrepresentation (that has or is likely to mislead the public as to the origin of someone else’s goods or services); and that damage has been (or will be) suffered. Most commonly, the misrepresentation will be aping a feature of a product or its packaging, but passing off can extend to other circumstances too.
Although rarer in the food and drink sector, there are examples of packaging and/or containers being registered as designs with the UK Intellectual Property Office (and equivalent bodies internationally). A registered design protects against others making an item to the design that has been registered. This allows the owner to prevent others mimicking the design of its packaging. It is, however, worth noting that a design must be new and create a different overall impression to what is currently available, so only reasonably different and/or novel designs are likely to be registrable and enforceable.
There are other forms of protection that subsist without taking any action to register them, namely unregistered design rights, supplemental unregistered designs and copyright. These are less likely to apply in brand protection scenarios, and as they exist without taking any active steps they can be considered should the need arise.
Finally, there are forms of protection which are almost exclusive to the food and drink sector. There are broadly three types of protections, which all fall under the banner of ‘protected food names’ and all three require steps to obtain a grant of protection. Essentially, they are different forms of protection where a product has a particular connection with a geographical region (either as originating there or due to a special characteristic the area gives a particular product) and products with a traditional name that are produced using traditional methods or recipe.
Brand battles
By no means is brand protection, and taking action to enforce intellectual property rights, the sole domain of larger businesses. It is, however, true that cases involving well-known brands garner the most media and public interest.
It is also true that many cases never go as far as a formal claim being issued, and of those where a claim is issued only a small number go to trial. That is often because a resolution is reached between the parties. For example, the now infamous caterpillar cake case between Marks & Spencer and Aldi which, whilst a claim was issued, never got to trial and, whilst we do not know the specifics, was settled at a relatively early stage.
More recently, a decision has been made on a claim between Thatchers Cider and Aldi regarding cloudy lemon cider for trade mark infringement and passing off. That case did go to trial and Aldi successfully defended the claim.
From cider to milk alternatives, only a few years ago Oatly brought a claim for trade mark infringement and passing off against a much smaller business that had launched their own oat drink under the name ‘pureoaty’.
Oatly relied on various trade marks but ultimately were unsuccessful.
A final example was another clash between Marks & Spencer and Aldi, this time over registered designs for decorated bottles, of which some of the designs contained an integrated light in the base of the bottle. Although not strictly relevant, both companies were using their respective bottles for gin products. Marks & Spencer prevailed at trial in that case (and following an appeal to the Court of Appeal).
The examples above are, at a glance, a mixed bag in terms of successfully stopping what the brand owner felt was a ‘copycat’ product. We would always recommend having protections in place however, and ideally registered protections.
If you would like to get in touch in relation to any of the issues raised in this article or any other Intellectual Property matters, call 01604 230400, email stephen.ruse@howespercival.com or jenna.bruce@howespercival.com or visit the website.
