A decision by the UK’s specialist court for intellectual property, declining a national supermarket’s request to dismiss a claim over their alleged infringement of a kebab trade mark, has highlighted the importance for food providers in protecting their brand.
The dispute between Babek International and Iceland Foods surrounds the latter attempting to sell a product under licence from a third party that allegedly infringed the former’s mark. Thrings’ IP expert Megan Jefferies looks at the case and what food producers can learn from it.
What is the case?
In response to Babek taking action against Iceland over its selling of a product containing the word Kebab spelled backwards (Babek), Iceland applied to the UK Intellectual Property Enterprise Court (IPEC) for a summary judgment to invalidate the claim.
Babek’s mark was registered in respect of, among other things, food and drink, and carried the description of “Gold oval with embossed BABEK writing. Colour Claimed: Gold, black.”
An alternative to the High Court, the IPEC deals with legal actions over intellectual property disputes, such as patents, registered designs, trade marks, unregistered design rights and copyright.
Iceland argued that the claim, which also alleges the infringement of Babek’s trade mark in relation to the design and colour of the logo, failed to comply s.1(1) of the Trade Marks Act on a range of issues, including not specifying the style or location of the writing or the colours/hues to be used instead saying “gold” and “black” – and that other colours were included.
Iceland also claimed the logo was an ellipse not an oval, that the black used was actually a shadow and that the embossing was not just applied to the letters.
In a sweeping judgment, which utilised the word “pedant” on a number of occasions, the Judge dismissed Iceland’s claim also rejecting Iceland’s claim that a description must accurately describe every element of the sign.
With the food retailer’s arguments rejected, Babek’s case against Iceland continues.
What does this mean?
In an increasingly crowded food sector, guarding the reputation of a quality product, and the factors that help to identify it, are becoming increasingly vital for leveraging your brand on the market. This helps you avoid getting lost in a sea of alternatives and copycats.
Accurately registering your name and/or logo as a trade mark will prevent other businesses using the mark in relation to the same or similar goods or services, in very much the same way Babek have been able to repel Iceland’s claim for dismissal.
Not only is a trade mark a springboard to enable businesses to insist third parties cease using the same or similar brands to theirs and potentially to obtain losses in relation to damage to their brand resulting from their unauthorised use, having the brand registered also serves as a deterrent to would be infringers in the first place.
Protecting your brand with trade marks
Applying for a trade mark can protect:
Trade marks cannot, however, be offensive, misleading or be either too descriptive or too generic. They also cannot contain symbols or graphics too close to state symbols – such as national flags or hallmarks.
Once it is decided what is being protected, the goods and services that the protection applies to needs to be determined – with 45 different classes to choose from – to ensure there is no risk of confusing it with another product or service out there that might otherwise be unrelated.
Thrings’ Intellectual Property lawyers are experienced in safeguarding brands and trade marks from infringement and have successfully advised multinational organisations on a range of matters from IP disputes, including copyright infringement, and trade mark prosecution, to managing diverse portfolios and worldwide expansions. To find out how they can help protect your IP rights, get in touch.