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Food for Thought: Protecting Your Intellectual Property in the Food and Drink Sector

Food for Thought: Protecting Your Intellectual Property in the Food and Drink Sector

The recent case involving McDonalds, where the EU Intellectual Property Office revoked the company’s EU trade mark for “BIG MAC” owing to McDonalds’ failure to show genuine use certainly raises some interesting questions.  It has also led food and drinks businesses to query what practical steps they can take to protect their most important commodity: their brand.  As is so often the case, the answer lies in ensuring a company’s valuable intellectual property rights are properly protected.

Who owns your logo?
 
Something that often catches companies out is that if a logo is designed by an external consultant, or someone other than an employee of the company, the default position is that the designer will be first owner of the copyright.   To ensure that the company who commissioned the logo is the true owner of the copyright in the logo, a written agreement (known as an assignation) requires to be put in place which transfers the copyright from that third party to the brand holder.  

Failing to make such arrangements is not uncommon in practice, but the consequences can be significant (and very expensive).  In 2015, the High Court in London heard a case in which it was alleged that the well-known Innocent Smoothies logo was not owned by Innocent’s trading company.  This was on the basis that ownership of that copyright had never been effectively transferred from the design agency commissioned by Innocent to carry out that work.  Although it was ultimately decided that Innocent had “beneficial ownership” of the logo, the entire case could have been avoided with a simple contract.

Trade Marks – use it or lose it

As well as ensuring a brand holder owns the copyright in their logo, it is always sensible to register your brand or brands as a registered trade mark.  Trade marks cover recognisable signs, designs or expressions which distinguish goods and services.  Trade mark registration lasts for 10 years and there is no limit to the number of times a registration can be renewed.  A trade mark registration can give the owner a monopoly right over that trade mark for ever, as long as the registration is maintained.

One note of caution is that even if a trade mark is registered there is no guarantee that it will remain protected.  A registered trade mark can be revoked if there has been no genuine use of the mark by the owner for a period of five years after it has been registered.  As the McDonalds case shows, being able to demonstrate genuine use in the relevant territory during the relevant period isn’t always straightforward.  

Thinking outside the (one dimensional) box

In addition to registering a brand name, it is also possible to register a 3D mark which covers the shape of a product or its packaging (i.e. the shape of a bottle).  It is by no means certain that each and every shape is capable of enjoying the protection of a 3D trade mark - for example Kit-Kat’s application to register their four-fingered KitKat bar was refused (you can read more about that decision here).  Whilst there are some important limits as to what can and cannot be registered as a 3D mark, there is no doubt that if capable of registration, a 3D mark can add real strength to the overall brand value. 

Top Secret

In 2018 the UK Government introduced new Trade Secret Regulations, extending statutory protection to trade secrets for the first time.  Unlike trade marks and patents, trade secrets do not require registration in order to qualify for protection.  To come within the definition of a “trade secret”, the information, process or know-how must not be generally known, there must be a commercial value attributable to it remaining a secret and there must be reasonable steps in place to keep it a secret.  Once these criteria are met, the Regulations provide for a number of remedies in the event that the trade secret is unlawfully appropriated; including interdicts (the Scottish equivalents of injunctions) against the unlawful use and orders for seizure or delivery up of the infringing goods.

One home-grown company that will reap the benefits of these new regulations is AG Barr.  Irn Bru is one of Scotland’s best-loved soft drinks, with the equivalent of 12 330ml cans consumed every second.  A key ingredient of Irn Bru’s success has been AG Barr’s ability to keep their recipe under lock and key and out of their competitors’ clutches.  Indeed, it is said that only three people worldwide know the exact recipe of Irn Bru. 

In the food and drink industry where recipes may well be a closely-guarded secret, the 2018 Regulations provide added protection to guard against copying. 

Colin Hulme, Partner 

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