CSY’s five tips on brand protection in the food and drink sector

This article will cover our five top tips on brand protection for companies in the food and drinks sector.

  1. Adopt a striking and protectable brand

The aim is to stand out in an already crowded market, so your brand should be unique (not derivative of existing brands), and, protectable (not just descriptive of the product or product shape)

  1. Clearance/evaluation checks

Minimise the risk of infringing existing registered rights, by running clearance checks of the relevant Trade Marks Registers.

Also, check that the brands (in whatever form they appear) are inherently “suitable” to be registered, e.g. not descriptive, offensive (including in translation) or consisting of the product shape, for example Kit-Kat has struggled, so far unsuccessfully, to register its four-finger KitKat bar.

Companies should also make sure that the copyright in any brand logo designed or commissioned is transferred in writing to the brand owner – which didn’t happen in the case of the Innocent Smoothies “Dude” Logo, and resulted in a long legal battle over who owned the rights.

  1. File a trade mark application

Ensure you stake your claim in the mark by getting an application in as soon as possible. Get professional help in ensuring you are registering for the correct goods and services, and, for the right versions of the branding.

This could include registering both stylized and unstylized versions of your brand. As a case in point, the well-known frozen food producer Aunt Bessie Limited unsuccessfully opposed a stylised trade mark application for “Aunt Berta’s”. Aunt Bessie’s opposition might have had a different outcome, had they registered a stylized version of the “Aunt Bessie’s” mark, in addition to the unstylized word mark “AUNT BESSIE’S”.

It is important to bear in mind that “lookalike” infringers don’t tend to copy all the elements of a successful logo/trade mark (particularly if it’s a fairly complex one with several elements). They tend to copy just some parts, adding their own branding, and then argue that their version isn’t confusingly similar, and hence aren’t “caught” by the relevant trade mark registration.

Registering each key individual element of your trade mark or your get-up (i.e. the visual appearance of your packaging) under a separate trade mark application, in addition to registering the whole mark, of course, should help to avert “lookalike” infringement.

  1. Maintaining your trade mark registration (enforcement)

Monitor for unauthorised use of your trade mark, or a similar trade mark, and send a letter of complaint against the use of any third party branding which is too close to yours, keeping a record of all responses.

  1. Use it or lose it (and keep good records)

Although a trade mark registration can be maintained in perpetuity, it can be revoked if it hasn’t been used by the owner within five years following registration. Earlier this year, McDonald’s lost its EU trade mark rights in “BIG MAC” through its failure to show sufficient genuine use in the region, thereby flagging up the importance of documenting and retaining records of a mark’s usage.

At Cleveland Scott York, we understand the distinctive importance of brands in the food, beverage and hospitality sector for building and maintaining the trust of consumers and investors alike.

For specialist advice, contact our team today: http://bit.ly/2Wv6euL

Author: Joanna Larkey

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Posted on: 1st November 2019