Trade Mark Protection in the Food Industry - Life cycle of a brand: Creating, building, exploiting and enforcing your brand

01 September 2011

Rachel Fetches, Amy Williams

In the fiercely competitive food and drink industry, successfully launching a new product and building a compelling brand that keeps customers coming back for more takes enormous effort.   Industry giants invest significant resources into the development and launch of new products but with careful planning smaller companies can also harness the power of a successful brand in distinguishing their product offering from competitors. Brands are increasingly valuable; for example, about half the entire value of the Coca-Cola Company is its brand, which was estimated in 2011 to be worth $74 billion. For smaller companies, a good brand will also be a very significant part of the value of the company, so it is worth taking the time to make sure you get it right first time.

Creating Your Brand

Ideally, companies should start thinking about branding as soon as the idea for a new product is discussed.  It is worthwhile spending time to create a distinctive brand for the product as even small companies can gain a huge reputation and significant customer goodwill with a strong and unique brand to build on.

The Levi Roots brand is an example of how a simple but compelling brand can be built from the goodwill in an initial product.  Levi Roots became famous in 2007 after appearing on the BBC television show Dragons’ Den.  After obtaining an investment from the Dragons, the Levi Roots’ Reggae Reggae sauce is now stocked by all the major UK retailers.  The branding alludes to the fact that this is Caribbean cuisine with the colour scheme and Levi Roots’ musical background through the use of “Reggae Reggae” and the Levi Roots guitar logo.

         

Early on in the brand’s life cycle, it is important to consider the elements of that brand, such as, logos, names or get-up, which might be suitable for trade mark protection. The more distinctive the brand, the easier it will be to register certain features as trade marks.

To protect the strength of the image which he had developed through selling his original product, Levi Roots registered a number of trade marks covering the key elements of his brand, including two device marks covering the “get-up” of the sauce and the guitar logo, and the word marks LEVI ROOTS, REGGAE REGGAE, ROOTS REGGAE REGGAE and the slogan PUT MUSIC IN YOUR FOOD.

It is also important to ensure that the branding does not come too close to an existing brand.  The purpose of a brand is to clearly and consistently distinguish a company’s product from those of its competitors, so there is a clear advantage to coming up with a new and unique image for your brand which is readily associated with your products.  Successful brands allow the consumer to understand that buying a particular product guarantees that it comes from a company they trust or value for a particular reason. 


Building Your Brand

Applying to Register a Trade Mark
Trade mark protection is available through a number of different routes at either the national level in the UK or at the Community level for all European Community countries. 

One of the first considerations is to check that no one else has registered the marks which you have decided to use. Trade mark registers are available to the public and can be searched prior to making your application.  Trade mark attorneys can also conduct “clearance” searches for both registered and unregistered trade marks to identify any potential issues.  This avoids wasting time and costs of developing a brand that cannot be launched or, even more costly, having to withdraw the brand at a later date because of objections from the owner of an existing trade mark.

Secondly, a trade mark must be capable of being graphically represented.  This includes words, logos, slogans, the shape of goods or their packaging and also specific colours and sounds, such as advertising jingles. 

Thirdly, the applicant must specify the goods and/or services (which are grouped into 45 different classes) which will be protected by the trade mark.  For example, class 33 includes all alcoholic beverages except for beers (which is included in class 32).  It is important to obtain coverage for the particular product that is being launched but some forward planning can be done by also applying for protection for goods and services that are complementary to or an obvious extension from the original product. 

Examination of a Trade Mark Application

When the trade mark application is received by the Trade Mark Registry it will be examined to ensure that it satisfies the basic requirements above and further checks will be carried out against similar marks which have already been registered. In addition, there area number of “absolute” grounds on which trade mark applications can be refused. 

Applications can be rejected if they lack distinctive character or are descriptive of the goods or services or a characteristic of them.  This is so that no business has a monopoly on common or descriptive marks that are widely used, so an application for a trade mark for “ORANGE” would be descriptive for oranges and not registrable but is not descriptive for telecommunication services.  The trade mark REGGAE REGGAE SAUCE is distinctive as it includes an adjective which is repeated and which is usually associated with a type of music to describe a food product. However, SPICY SAUCE would be likely to be unacceptable for an application for a similar product, as it describes a quality of the goods being sold.

For the same policy reasons, applications for colour marks have to be quite narrowly drafted.  Heinz has a UK trade mark for the particular “colour of turquoise” (which can be viewed on the register) as used for Heinz baked beans, “being the most dominant single colour applied to the visible exterior of the packaging of goods”.  Applications for colour marks now have to provide both an example of the colour or colours being applied for together with a Pantone number (or similar).    


Shape marks are of particular interest for the food and drinks industries as packaging can play a key part in distinguishing products.  The same “absolute grounds” requirements apply for shape marks as for other trade marks but there are additional considerations that are applied to shape marks.  Shape marks cannot be obtained if the shape is typical of the goods for which they are applied for (or part of them) or the shape has a function or gives substantial value to the goods.  Examples of shape marks that have been registered are the distinctive Toblerone shape, the Coca Cola bottle and the Chambord bottle.

       

It is worth noting that the objections under the absolute grounds can be overcome if, before the date of the application, the trade mark has acquired a distinctive character as a result of use.  This might provide some comfort for existing brands that have developed over time but is not the best option if considering the launch of a new product.

Opposing a Trade Mark Application

Once the trade mark application has passed the initial examination, it is published and third parties have a 2 or 3 month opportunity to oppose registration based on “relative” grounds.  The owner of an existing identical or similar mark registered for identical or similar goods can oppose an application. If the marks and the goods are both similar there is an additional requirement for  the owner of the earlier trade mark to demonstrate that there is a likelihood that the relevant consumers would be confused as to the origin of the applicant’s goods and might think they were actually the goods of the owner of the earlier mark.  If a registered trade mark is well known and has an established “reputation” owners can also object to a later application that takes unfair advantage of or is detrimental to the reputation of the earlier well known mark. 

Although it is beneficial to register a trade mark to give protection from the first time a mark is used, the unregistered get-up of a product may also be protected under the law of passing off, if it has established sufficient goodwill and reputation. It is therefore also possible to oppose a trade mark application on the basis of passing off.

Once a trade mark is registered, the protection can, in theory last indefinitely provided the renewal fees are paid and the validity of the registration isn’t challenged.  Trade marks must be renewed on the 10th anniversary of the filing date and every 10 years thereafter.


Exploiting Your Brand

Once you have established a brand with the relevant trade mark protection it is important to reinforce your brand in the minds of the public in order to increase its reputation and build up goodwill for your products. This will assist your business as you launch new products under the same brand.

From the original Reggae Reggae sauce, Levi Roots has developed his brand by extending into other products such as cooking sauces, snacks and ready-to-eat, frozen and chilled foods. These products are consistently branded under the Reggae Reggae mark, the Levi Roots logo and the recognisable colours and lettering.  

Maintaining Your Registered Trade Mark

To maintain trade mark protection, the trade mark must be used for all the goods and services for which it is registered.  This is important as, if a trade mark is not used within 5 years of its registration, or if, after that time, it is not used for an uninterrupted period of 5 years, anyone can apply to have it revoked.  Where the mark has only been used for some of the goods and services, the trade mark may be partially revoked to remove protection for the other goods and services. 

The use of a trade mark must be genuine use, such that the business can show it has genuinely attempted to carve out a commercial course of trade for that mark.  Promotional use of a mark is not enough, so a clothing store giving away promotional drinks to customers who had bought a branded t-shirt was not considered genuine use in the course of trade for drinks (although the use was genuine for t-shirts).

The validity of a trade mark can also be challenged post-registration if it becomes “generic” in the trade for the goods or services for which it is registered or if it is likely to mislead the public as to the nature, quality or geographical origin of the goods and services.   


Enforcing Your Brand

As well as using your own registered trade mark, it is also important to monitor any use or application by others of similar marks.  Failure to do so can lead to dilution of your trade mark, where its distinctiveness and ability to differentiate your brand from a competitor’s brand is reduced. 

The more distinctive your trade mark, the easier  it will be to enforce  The specific goods and services for which you have registered your trade mark will affect the extent of your protection against competitors, as you can only bring an action where the later mark is used in relation to identical or similar goods.

The pitfalls of launching a brand that is too close to existing brands and the difficulties that can arise is illustrated by a widely reported letter before action sent in early 2011 by Fresh Trading Ltd, the owners of Innocent Drinks, to Innocent Vitamins objecting to Innocent Vitamin’s use of a similar “innocent” logo, written in lower case and a similar font, for heath products and asking them to stop using the innocent brand name.     

        

This also demonstrates the importance of monitoring new products and trade mark applications, so that brand owners can oppose the applications as they are made on the basis of a comparison with their earlier mark under the relative grounds (as set out above).  Once the period for opposition has closed and a new mark is registered, the earlier trade mark owner also has the option to bring invalidity proceedings (also based on the relative grounds) to remove the mark from the register. 

Additionally, trade mark owners may issue trade mark infringement proceedings in the UK courts against any party who uses, in the course of trade, a sign that is identical or similar to their existing trade mark for identical or similar goods or services.  The grounds on which an infringement can be found are therefore the same as those for finding that a trade mark is invalid due to a prior registration. Therefore it is likely that a trade mark owner will bring an infringement and invalidity action jointly against a later registered mark.

Although there are a number of defences to trade mark infringement, such as demonstrating that there is no likelihood of confusion, the most common response to an infringement action is to attack the validity of the trade mark being asserted. It is therefore very important that your trade mark is as strong as possible as potential infringers are likely to question your trade mark’s validity if you bring an infringement action against them.  The owner of the later mark may also claim that the classes for which your trade mark is registered are broader than those for which it is actually being used.

If a trade mark owner is successful in showing trade mark infringement, they can obtain an injunction and damages from the infringer as well as being able to seize and/or destroy the infringing goods. The infringer may also be required to announce the decision in, for example, a relevant trade publication.

Recently, the internet has presented additional issues for trade mark owners. You should monitor how other people use your trade marks online, for example in domain names and key-word searches, and also how your brand or product appears on social media sites. A registered trade mark can be enforced against unauthorised third parties who register a domain name or create a social networking group using your brand name through infringement proceedings. However, unofficial fan pages may be beneficial to your brand so there may be a case for encouraging rather than making enemies of your key customers.

Conclusion

The power of branding is increasingly important in differentiating products from a competitor’s offering.  Developing a strong brand that is also a good trade mark, conducting clearance searches and registering the trade marks, offers one of the best ways of protecting the investment in building goodwill and consumer recognition in that brand, which all goes to increasing the value of the business.



This article appeared in Volume 25(3) of the September 2011 issue Food Science & Technology, the quarterly information journal of the UK’s Institute of Food Science & Technology (www.ifst.org).