IP and Food

Gary Townley

Jane Lambert

Tomorrow, between 10:00 and 13:30, Gary Townley, business and events manager at the Intellectual Property Office will talk about IP for the food and drink industry at Northampton Central Library. You can register for the event here.

I don't know what Gary will be talking about but there is a lot of IP connected with food and drink:

• plant breeders' rights for new grain and seed varieties (see my article on Protecting Investment in New Plant Varieties 4 May 2016 Linkedin);
• geographical indications for food and agricultural products;
• patents for new agricultural, food preparation, processing and distribution technology;
• trade marks for food and drink brands and 
• passing off for hotels and restaurants but not plastic lemons.

As I reported in Thought for Food 26 Sept 2017 NIPC London Gary has already spent the last two days at the Takeaway & Restaurant Innovation 2017 Expo.

IP in food production, preparation, marketing and distribution is a subject of which I do have had a lot of experience having been in some important cases and having advised and represented some rising stars in the industry. If you are involved in that sector I should be glad to talk to you. Call +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

So maybe Grantham really is interested in IP Law

Rabbit food produced by Henry Bell of
Granthan

Jane Lambert

Last September I tried to run a seminar on IP law as part of the Gravity Fields science and arts festival. To promote the seminar I wrote What has intellectual property got to do with Grantham? 4 Sept 2015 and an introduction to patent law as a Socratic dialogue in The Beehive pub. Try as I might I just couldn't raise any interest in IP and I had to cancel the seminar.

But a case that came before Mr Justice Arnold a few weeks ago shows that that there is at least one Grantham business that is interested in IP for it has contributed to the development of trade mark law. In Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd [2015] EWHC 256 (Ch) (12 Feb 2015) the Grantham pet food producer Henry Ball & Co. successfully resisted a claim by Ipswich based Supreme Petfoods Ltd. for trade infringement and passing off.  It is a very long, and unless you are a trade mark geek, difficult to follow, judgment but I have analysed it in my case note Trade Marks and Passing Off: Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd. 28 Feb 2915 which appears in my NIPC Law blog.

Basically, Supreme Petfoods objected to the packaging of Henry Ball's products because they had registered the word SUPREME as a word mark and various signs that incorporated the word SUPREME as device marks for various types of animals food.  The judge characterized their claim as an attempt "to monopolise use of the word SUPREME as a trade mark for animal food." He didn't let them do it.  He invalidated several of Supreme Petfoods' registrations except for small animal foods and held that Henry Ball did not infringe the trade marks that remained.

This is an important case for several reasons.

First, Mr Justice Arnold stressed that EU and hence UK trade mark law must be consistent with an annexe to the agreement that established the World Trade Organization called TRIPS (The Agreement on Trade-Related Aspects of Intellectual Property Rights) wherever possible. That is because it is an international agreement which HM government and the governments of all the other member states of the EU signed with most of the rest of the world's governments and pacta sunt servanda (promises need to be kept).

Secondly, the judge explored what makes a trade mark distinctive. It can be inherently distinctive simply because of its uniqueness or in the case of common English words like SUPREME it can acquire distinctiveness through making lots of sales and clever marketing. His lordship focussed on acquired distinctiveness.

Thirdly, the judge laid down six conditions that must be satisfied for a claim under s.10 (1) of the Trade Marks Act 1994 and art 9 (1) (a) of the  Community Trade Mark Regulation which he claimed to have been established by a long line of cases in the Court of Justice of the European Union. Though Mr Justice Arnold made no claim as to originality in respect of this analysis I think he is way too modest because I have never seen them anywhere else.  In Enterprise Holdings, Inc v Europcar Group UK Ltd and another [2015] EWHC 17 (Ch) (13 Jan 2015) which he decided a month earlier he made a similar analysis of the case law for claims under s.10 (2) and (3) of the Act or arts 9 (1) (b) and (c) of the Regulation. When read together Europcar and Supreme set out almost everything you need to know about trade mark law.

Fourthly, his lordship analysed in detail the last two of the six conditions for a successful suit under s.10 (1) or art 9 (1) (a), namely the use of the defendant's sign

"(v) .... must be in relation to goods or services which are identical to those for which the trade mark is registered; and
(vi) it must affect, or be liable to affect, one of the functions of the trade mark."

Most of Mr Justice Arnold's judgment was on those two points. He decided them in the defendant's favour at paragraph [165] because

"Henry Bell's use of the sign SUPREME would be understood by the average consumer as being purely descriptive."

In other words Henry Bell's packaging suggested that its food was of supreme quality and not that it came from Supreme Petfoods Ltd.

Fifthly, he made a very pithy comparison of mark and sign and specified goods and goods in use at paragraph [185] before throwing out the claim under s.10 (2) and art 9 (1) (b).

Sixthly, he did the same for the claim under s.10 (3) and art 9 (1) (c).

So this is a great case if you are a litigation solicitor in Lincoln or commercial lawyer in Spalding and your client walks into your office with a trade mark problem. Instead of thinking of learning curves and what they will do to your profits - or worse what patent counsel will do to those profits - you should read this case with my analyses and all will become clear I promise you.

Now I know this has nothing to do with intellectual property law but I am a ballet nut and the only other person I know who is crazier about ballet than me is called Michelle and she also comes from Linconshire. Your great county, oh Yellow Bellies, happens to host one of the best little dance companies in England called Chantry Dance Company which you really should support with your patronage. Last year they ran a workshop at the Drill Hall in Lincoln.  Here is the video of the show that put together with the help of two folks from Yorkshire and two from Coventry.  Can you identify the dancer stage right in the second row?

'Dream Dance' workshop from Rae Piper on Vimeo.

If you can I will buy you a pint next time we are both in The Beehive. If you want to discuss Supreme Petfoods and Bell or trade mark law in general give me a ring on 020 7404 5252 during normal office hours or message me through my contact form. Hasta luego amigos.

What has intellectual property got to do with Grantham?

Jane Lambert

Everything. 

There are a lot of businesses in Grantham and they all have signs that distinguish them from their competitors. Most of those signs consists of names or logos but the sign for the The Beehive inn in Castlegate is actually a swarm of bees. It is those bees that distinguish The Beehive in the minds of its customers from all other pubs in Grantham and indeed the rest of the world.  The Beehive's regulars would no doubt find their way to the pub if the bees went away but those such as I who are not quite so familiar with Castlegate look out for the hive. It is that hive that draws us to that pub and once inside the pub we spend our money. 

The tendency of customers to frequent a business is called goodwill.  At least some of that goodwill is associated with the hive. The hive is therefore an asset in that it generates revenue for the pub. We class it as an intellectual asset because it is the product of the mind rather than a plot of land or item of machinery. The rights to those assets are known as intellectual property.

An example of how the law protects a sign arose in Bocacina Ltd v Boca Cafes Ltd. and Others [2013] EWHC 3090 (IPEC). In that case the claimant owned a successful and trendy bar, restaurant and gallery in Bristol known as Bocabar which was sometimes abbreviated to Boca.  Its annual turnover was around £1 million per year. It had a website under the domain name bocabar.co.uk and it advertised in the local press and through flyers and point of sale literature. The establishment had been featured in several guides to Bristol and restaurant reviews.

The defendants set up an eatery known as Boca Bistro Café which offered similar food and entertainment some three miles away. They registered BOCA BISTRO CAFE as a trade mark in respect of cafeteria and restaurant services in class 43 and the domain name bocacafes.co.uk which showed up in  close proximity to the claimant's on internet searches.

The claimant sued the defendant in the Intellectual Property Enterprise Court which specializes in resolving intellectual property disputes between small and medium enterprises. The claimant claimed an order from the court known as an injunction to stop the defendants from running a business called Boca, Bocabar or anything similar. An injunction comes with a stern warning from the judge that anyone breaching the order will be fined, sent to prison or punished in some other way. The claimant also claimed orders invalidating the defendant's trade mark and cancelling its domain name registrations and damages or compensation for any loss or damage it had suffered.

In order to win the claimant has to prove that:

1. its goods or services had acquired a goodwill or reputation in the market and are known by some distinguishing feature;
2. there had been a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant; and
3. the claimant had suffered to was likely to suffer damage as a result of the erroneous belief engendered by the defendant's misrepresentation.

The claimant succeeded. The judge held that the Bocabar had acquired a goodwill or reputation in Bristol by reference to its name Bocabar and abbreviations such as Boca. By calling their establishment Boca Bistro Bar and setting up a website under the domain name bocacafes.co.uk the defendants had misrepresented a connection with the Bocabar. They had thereby attracted business for their eatery from customers who would otherwise have gone to the Bocabar.

Could such a case occur in Grantham? Sure it could. Not with The Beehive, of course, but perhaps with other businesses. The rules that I mentioned above are not confined to firms in the catering trade but apply to all industries.

Now if you want to learn more about the laws that stop folk naming their businesses or adopting other signs that are likely to be confused with the signs used by other businesses you will just have to come to my talk at Grantham College on the 26 September 2014 at 14:00 (see "Our contribution to Grantham's Gravity Fields Science Festival: IP Workshop and Clinic" 3 Sept 2014). If you have a specific issue of passing off you can have a free 30 minute consultation with me afterwards.  If you want to register a trade mark or indeed oppose or invalidate someone else's registration you can have a word with Mr Keith Loven of LovenIP in Lincoln.  Of course, if you have a pressing problem you don't have to wait quite that long. You can call me on 020 7404 5252 during office hours or message me through my contact form any time.

I look forward to seeing you on the 26 Sept.