IP in the food sector


17 December 2021

The food and drink sector is, arguably, in a constant state of competition because in relation to any particular product there are often a number of options for consumers to choose from. Each may have its own particular elements that determine look, flavour or even a USP relating to its origin or ingredients, however, even drilling down into these particular elements there is often still choice for the consumer.

 It is recognised brand loyalty exists among consumers but before this is established how does one encourage one’s product to be a consumer choice? For many it is the creation and subsequent consistent use of a strong brand and its corresponding trade marks. There has been a recent flurry of cases, which demonstrate the importance that producers place on their marks, and protection of those. 

However, some of the cases also highlight the potential pitfalls of a successful product brand for example with copycat products, whilst underlining the benefit of intellectual property rights in the face of those.

The issues of copycat products was brought to prominence by the actions of Marks & Spencer to defend their Colin the Caterpillar against Aldi’s Cuthbert. It is understood that the claim has been based on Aldi's alleged infringement of a number of registered trade marks owned by Marks & Spencer, passing off as their own. As this is an ongoing claim, we do not yet know whether Marks & Spencer will manage to successfully argue that the appearance of Colin is so well known that consumers would recognise it as Marks & Spencer’s product. 

The issue of copycat products and in particular the rise of copycat products brought in by supermarkets is well-documented and the most recent example of this came in the form of William Grant & Sons Irish Brands Ltd. v Lidl Stiftung & Co. & Ors [2021] CSOH 55 in the Scottish Court of Session.

William Grant owns Hendricks Gin. Hendricks has been sold in the UK since around 2000 and there are UK registered trade marks for the bottle shape and label.

Lidl has a gin product known as “Hampstead”. It had been on sale for around ten years but it underwent a 'revamp' in 2020 and its packaging was changed to a dark, rounded bottle reminiscent to that of Hendricks. The Court of Session found that there was evidence to suggest that Lidl was riding on the coattails of the Hendricks marks and granted the equivalent of an interim injunction to stop the sale of bottles in Scotland pending a full trial.

Notably, William Grant’s success at the interim stage was due to its reliance on Section 10(3) of the Trade Marks Act 1994 (namely that the trade mark has a reputation in the UK and the use of the mark therefore takes unfair advantage of or is detrimental to the distinctive character or repute of the trade mark). 

Whilst this case does of course give comfort to those facing copycat products it also highlights that, were it not for the extensive Hendricks reputation, the outcome may have been frustratingly different for Hendricks. As an interim decision only the eventual outcome will be awaited keenly.

Another case which grabbed headlines in recent months, because of its David vs Goliath nature was the Oatly v Glebe Farm Foods. Glebe Farm Foods, a farm in Cambridgeshire which specialises in gluten-free food and drinks, standing up to Oatly, a multi-billion-dollar operation with headquarters in Sweden, following allegations of trade mark infringement by Oatly. In deciding the case, the court looked at the names and also the packaging for both products. 

The court found in favour of Glebe Farm Foods as it felt that there were only “very modest” similarities in the names and that the similarities stemmed from the word “oat” which is descriptive of the products. The judge found, in respect of the packaging, that the Oatly packaging was “highly distinctive and would be very recognisable to customers” which did not support the contention of the risk of confusion. Oatly was also unable to show any actual evidence of confusion.

There is undoubtedly an element of commercial impact on pursuing claims of this nature. 

Marks & Spencer no doubt felt the social media impact of choosing to bring its claim against Aldi. Some may argue that Aldi fared better out of the immediate media storm generated. Arguably, the winner will be whichever succeeds at court. However, one may consider that consumers will not be particularly swayed either way in their purchases as it involves two, relatively large and very corporate entities.

Compare this, however, with the potential impact on consumer perception (at least in the UK) for Oatly, having chosen to fight a significantly smaller entity and ultimately losing. 

Whilst there is, inevitably, a balance to be achieved between asserting ones rights and the commercial impact and considerations, being seen to be willing to stand up and protects one’s IP can be a sign of strength and, moreover, necessary in a challenging market.

The content of this article is for general information only. It is not, and should not be taken as, legal advice. If you require any further information in relation to this article please contact the author in the first instance. Law covered as at December 2021.

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