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A recent Court of Appeal decision demonstrates how the law of passing-off can protect marks that may be considered descriptive, writes Gerard Kelly of Mason Hayes & Curran

The last year or so has seen a steady flow of Intellectual Property cases relating to the food and beverage sector. For the FMCG industry, in particular, IP is paramount to developing exclusivity and loyalty in the minds of consumers and their buying habits.

The scope of what is protectable in the sector is constantly being questioned. Registered trademarks are traditionally relied upon to protect brands, logos and, at times, the packaging of food and beverage products. However, producers of such products are always looking at innovative ways to protect more non-conventional marks that may not potentially sit neatly with the requirements for a registered trademark, such as descriptive marks.

This article examines two interesting recent developments in the sector.

Can Taste Be Protected As An IP Right? 

The question of whether the taste of a food product can be protected as an IP right was recently examined. Dutch retailer Levola sought to protect under copyright law its spreadable dip with cream cheese and fresh herbs, called Heks’nkaas.

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Copyright law protects what are described as works, and provides protection for the creator of such works against acts of reproduction for a significant period of time. Levola argued that the copyright in a taste refers to the “overall impression on the sense of taste caused by the consumption of a food product, including the sensation in the mouth perceived through the sense of touch”.

In November 2018, the EU Court of Justice ruled that the taste of a food product cannot be identified with precision and objectivity. Unlike a literary, pictorial, cinematographic or musical work, which is a precise and objective expression, the taste of a food product will be identified essentially on the basis of taste sensations and experiences, which are subjective and variable to the individual consumer concerned. Among other things, they depend on factors particular to the person tasting the product concerned, such as age, food preferences and consumption habits.

Protecting Unregistered Trademarks

The registration of a trademark is a real value-add for food and beverage companies, as it grants a clearly defined right to prevent others from using a confusingly similar sign in the marketplace. A Court of Appeal decision in January 2019 demonstrates how the law of passing off can protect marks that may be considered descriptive and potentially not protected by a registered trademark right.

Passing off protects the goodwill in a mark, or as an old case held, “the attractive force that brings in custom”. It can apply to brand names and, at times, to get-up and packaging. Such issues were central to the relatively recent dispute between McCambridge Bread and Brennans Bread that went to the Supreme Court, and led to the change of the latter’s packaging, as it was deemed too similar to the McCambridge product.

Galway Free Range Eggs, the appellant in the recent Court of Appeal case, appealed the order of the High Court dismissing its claim for an order restraining a competitor from passing off its goods by the use of the name ‘O’Briens of Galway Free Range Eggs’.

The decision is particularly interesting in that it confirms the ability of otherwise descriptive terms to gain a secondary meaning and attract sufficient goodwill for passing-off purposes. Based on the evidence, the court found that it was possible for the appellant to have an established goodwill in the name ‘Galway’ used in connection with the words ‘Free Range Eggs’.

The Court of Appeal also dismissed the argument that EU and domestic regulations requiring products to be labelled ‘free range’ could be interpreted as facilitating the use of that term in the name of the product rather than otherwise on the packaging. As there was evidence that a significant proportion of the public could be confused between the brands, the case was successful.

Gerard Kelly is Head of IP in Mason Hayes & Curran
Email: gkelly@mhc.ie
www.mhc.ie