Your trade mark or brand name is a vital business asset, which distinguishes your product or service from those of your competitors. The significance of adequate intellectual property protection is perhaps more apparent in the food and beverage industry than can be observed in any other. There is a multitude of cases in which businesses fail to consider the possibility that expensive litigation or rebranding may arise as a realistic consequence of a company insufficiently seeking to protect their legal rights by filing a trade mark or design application at the outset of their business venture.
Back in 2017, Kilmarnock FC were forced to engage in a costly legal battle, as matchday suppliers Brownings sought to register exclusive trade mark rights for the “Killie” pie, which the football club had previously allowed royalty free use of on product packaging in 2003 as part of the initial catering agreement. Although the club managed to retain the rights to continue to sell their matchday pies under the “Killie” name, this was only following a 10-month legal dispute in which both sides incurred substantial costs. Had Kilmarnock FC filed a trade mark application when they initially decided to create and sell pies under the “Killie” name, they could have avoided this costly litigation and received numerous benefits that cannot be obtained unless appropriate intellectual property protection is considered.
It is important to be aware that a registered trade mark provides you with the right to prevent others from using and registering the same or a similar mark. Therefore, in this case, Kilmarnock FC would have been alerted to the application filed by Brownings once published and could have opposed it at a significantly lower cost.
An example of a company which successfully used their registered rights to defend their mark is PepsiCo, Inc., when they cancelled a UK registration for ‘pepsi’ in 2018. The marks were registered for identical goods, namely “soft drinks and non-alcoholic drinks”. The UKIPO cancelled the registration on the basis that use of the contested mark would take unfair advantage of PepsiCo’s registration. It’s also worth noting there was also a significant likelihood of confusion amongst consumers in relation to these marks, which was a factor in the decision of the UKIPO. This demonstrates the benefit of trade mark registration, as PepsiCo relied on this to defend the reputation of their mark. It could be argued that PepsiCo may have been able to rely on unregistered rights to protect the use of their mark in the UK, however this process would have been significantly more convoluted, costly and time consuming.
However, other cases demonstrate the necessity of guidance in the realm of intellectual property law. US supermarket Whole Foods attempted to challenge an application for a logo which utilised the words ‘whole foods’ and was filed for the same services as the Whole Foods registrations, namely “retail services in relation to foodstuffs”. However, despite the seemingly glaring similarities, the UKIPO found for the applicant in this case. This is due to the fact that the only overlapping element of these marks was use of the words ‘whole foods’. These words were found to be descriptive of the services, which cannot be relied upon as they merely describe the services, rather than introduce any particular unique branding. Without this unique element, the protection afforded by the UKIPO is relatively low, as a monopoly on descriptive terms cannot be allowed as this would damage fair competition across the industry. The dangers that the supermarket faced could have been avoided had they consulted with a trade mark attorney prior to finalisation of their branding. An attorney would have offered advice as to the risks posed by a descriptive name, as well as offering viable alternatives that a business may consider.
Another crucial point to consider concerns use of a trade mark and its relationship to the status of a brand. It had long been widely assumed that the sheer size and global reputation of a brand can render a successful legal challenge beyond the capabilities of mere mortals. However, a little known Irish burger chain named ‘Supermac’ toppled the corporate powerhouse that is McDonald’s. Thus, we think it can be safely assumed that this notion is untrue.
In the landmark case of Supermac (Holdings) Ltd v McDonald’s International Property Company, the European Union Intellectual Property Office invalidated McDonald’s ‘Big Mac’ trade mark registration in the EU on the grounds of non-use. This decision may seem highly unusual given how many thousands of delicious Big Macs are sold every day. However, the Cancellation Division noted in their judgment that McDonald’s had elected to “restrict the evidence submitted” to prove their genuine use of the mark.
In the UK and EU, if a trade mark has not been used during a period of five years from the registration date or within any subsequent five year period in connection with the goods/services for which it is registered, third parties may apply to have it removed from the Register. It is important to note that the method and means of proving genuine use are unlimited. In addition, the standard of proof is not particularly high. However, if a trade mark as globally recognised as ‘Big Mac’ is vulnerable to invalidation proceedings on the grounds of non-use, there clearly exists a valuable caution to all brand owners. This warning relates to both ensuring that the trade mark is genuinely being used and that there is a sufficient record of such use should any challenge arise.
If you have any questions on this information or would like a free consultation, please email Anne Wong at info@mwtrademarks.com or call us at 020 039 898 726.