Seminar Report: An Appetite for IP

31 July 2014

Toby Bond, Rebekah Sellars

Protecting your intellectual property has never been more important in the fast moving food and beverage sector.  To offer some advice on how to grow, nurture and protect brands in this sector, Bird & Bird recently hosted its "An Appetite for IP" seminar.  Held in the Reading Room at the Law Society in London, representatives from a wide range of food and beverage companies joined us for an afternoon of discussion chaired by IP partner Peter Brownlow, covering a wide range of issues currently affecting those with FMCG brands in the food and beverage sector.  A lot of ground was covered but below is a short summary of some of the highlights from each presentation.

Brand Selection: Strategies for creating and protecting a strong brand and internationalising your business through third party relationships

IP partner Allan Poulter began by explaining the importance of legal input into the creative process when choosing a new FMCG brand, extending an existing brand or for geographical expansion.  Allan then explained how a strategic approach to clearance searches, which takes into account commercial considerations when identifying potential infringement risks and bars to registration, could pay dividends in the long run.  For example a staged approach to a global clearance project can significantly reduce costs by focusing on key jurisdictions first.  Allan concluded that successful clearing and filing strategies need to take account of current and future business objectives.

Franchising partner, Mark Abell followed with a talk on using IP to drive international growth, explaining that food and beverage brands are increasingly looking for innovative business structures to optimise multi-channel growth.  Often this is down to local regulatory concerns but also to allow flexibility to find and incentivise the right type of business partner.  Mark explained that franchising, manchising and subordinated equity arrangements, as options for structuring indirect international retailing, are often seen as less risky than standard international corporate expansion.

IP associate Rachel Fetches then gave a fascinating insight into new opportunities for brands to benefit from protection of non-traditional trade marks beyond words and logos. For example, the potential loosening of the requirement for graphical representation in the forthcoming amendments to EU trade mark law may lead to more sound or movement marks on the register as sound files will now be sufficient for registration.  Rachel explained that although future changes in trade mark law will increase the opportunities to protect non-traditional marks, in practice registration is likely to remain difficult unless trade mark owners can provide compelling evidence the public has been educated to see that mark as a badge of origin.

Labelling, health and nutrition claims and GIs: Meeting EU regulation

Brussels Regulatory partner Marc Martens gave an introduction to the evolution of the regulatory framework for food products in the EU.  Marc explained how the new EU labelling rules (effective from the end of 2014) and new EU nutrition declaring regime (effective from the end of 2016) will work and the potential impact on business in the food and beverage sector.  Marc concluded by discussing how current health claims rules can add extra dimension to brand selection in the food and beverage sector.

Advertising – Getting it Right: misleading, comparative & ambush marketing

Commercial associate Craig Giles explained that the majority of complaints to the UK's Advertising Standards Authority ("ASA") are about misleading advertising.  The key to avoiding an adverse ruling by the ASA is to correctly qualify any claims made in an advert and in particular to follow the "Qualifying Ladder" approach.  Extra care needs to be taken with health claims as the ASA often focuses on subtle differences when it looks at deviations from the authorised wording for a particular ingredient or nutrient.  Craig explained the ASA's rules on nutritional and health claims, alcohol and adverts aimed at children before considering the effect on businesses of comparative advertising rules.  Craig finished by explaining that whilst ambush marketing (where a brand owner attempts to associate itself with a high profile event without paying sponsorship fees) can seem attractive, it can also put you at risk of a claim for passing off from the event organiser.

Reputation Management: practical lessons in dealing with unwanted media attention

IP Partner Phil Sherrell gave the audience practical examples of ways to deal with unwanted media attention. Phil explained that personal rights of individuals involved in a potentially damaging story are often forgotten but can often in practice be more powerful than corporate rights.  This especially applies to undercover filming involving employees.  Phil went on to look at crisis management, the legal and practical tools which can help avoid damaging publicity and how a commercial approach to issues is key.  For example, in relation to defamatory online content businesses need to carefully consider which fights to pick or not and be aware that sometimes taking action runs the risk of doing more harm than maintaining the status quo.

Public health interventions: Issues for brand owners when your sector is targeted as unhealthy

Partner and Co-head of London IP, Katharine Stephens finished the afternoon by looking at the increasing shift in public health thinking towards “nudging” consumers’ behaviour in order to achieve public health outcomes and how this might play out in the food and beverage sector now that fat, salt and sugar levels in products are increasingly in the spotlight.  To give a broader perspective on public health interventions in relation to consumer goods and an indication of what might happen in other sectors in future Katharine looked at the thinking behind regulation in the tobacco industry.  Starting with advertising restrictions in the 1970s, regulation has now progressed to the point where, with the introduction of plain packaging, even the brand identity itself might be stripped from packs.

Whilst rules on plain packaging are open to challenge on the basis they breach the TRIPS Agreement and deprive trade mark owners of their property, past precedent has shown that where tobacco regulation leads, other industries may well follow.  Katharine finished by suggesting the direction of travel in public health thinking could well see more restrictions being placed on brands in the food and beverage sector.  This could either be through further advertising restrictions or by requiring certain products to carry health warnings which would effectively reduce the space available for branding.

If you would like any further information about any of the topics please contact the relevant speaker or for a consolidated copy of the slides from the event please contact Karla Fryer.