Food fights: trade marks, passing off and copycat packaging

The news back in September of last year that the Supreme Court of England and Wales had refused yoghurt-maker Chobani permission to appeal against the earlier rulings of the Court of Appeal and High Court brought to an end its dispute with competitor Fage, market leader and owner of the Total brand of Greek yoghurt. That dispute raised (and answered) questions around whether or not Chobani’s use of the words “Greek Yoghurt” to describe its US-produced yoghurt was in fact a form of passing-off which damaged the distinctiveness of the “Greek Yoghurt” description.

This is just the latest in a long line of legal spats between manufacturers in the food sector about what products are called and how they are packaged. Indeed, it is such a hot topic that the Department of Business Innovation and Skills recently launched a consultation on the issue of so-called copycat packaging.

In this article, the IP team at Freeths provides a summary of the main issues, and how intellectual property laws apply in this area.

Trade marks

Most businesses will protect their commercially valuable brands by registering trademarks such as brand names and associated logos. A registered trade mark essentially grants its owner a limited monopoly to use that trade mark in relation to the goods and services for which it registered.

Any business which uses an identical (or similar) mark in relation to the same (or similar) goods and services runs the risk of the trade mark owner bringing trade mark infringement proceedings against them.

It is not uncommon for businesses in some sectors to keep a close watching brief on the trade mark registration activities of their close competitors. In the confectionary world for example, Nestle and Cadbury have sought to restrict or prevent the other from registering certain trademarks.

In 2004 Cadbury applied to register a particular shade of purple as a trade mark, described in the application as follows: “the colour purple (Pantone 2685C)… applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”. The case ultimately went before the Court of Appeal, which in October 2013 which denied Cadbury’s the registration, finding that the mark applied for was insufficiently clear and precise to warrant registration as a trade mark.

In 2013 Nestle applied to register the shape of its KitKat bars as a UK trade mark. Cadbury opposed the application on a technicality, namely that the shape claimed was necessary to obtain a technical result (i.e. to facilitate the breaking of the bar into separate pieces for ease of consumption). The IPO hearing officer refused to register the mark (also finding that the shape was not sufficiently distinctive so far as chocolate bars are concerned), and Nestle appealed to the High Court. In January 2014, the High Court referred the matter to the Court of Justice in the European Union for guidance. The case rumbles on.

Passing Off

The standard modern authority for the law of passing off in England and Wales derives from a packaging dispute in the food sector which went all the way to the House of Lords for final judgment. In the Jif Lemon case, manufacturer Reckitt brought a claim against Coleman in relation to Coleman’s manufacture and sale of lemon juice in a yellow plastic container moulded to look like a lemon. Reckitt claimed that consumers were being deceived into believing that Coleman’s lemon juice product was in fact
the well-known Jif Lemon product, which had been packaged in a yellow plastic container moulded to look like a lemon for several years.

The House of Lords, finding in favour of Reckitt, took the opportunity to restate the law of passing off as a three-part test: firstly, the claimant must have accrued goodwill or reputation in their product; secondly, the defendant’s packaging must amount to a misrepresentation that is likely to lead the public to believe that the goods offered by him are the goods of the claimant; and thirdly the claimant must have suffered some damage as a result (normally lost sales, but this can be reputational or other damage).

Passing off rights can be particularly important where a claimant does not have appropriate trade mark registrations, or where their claims of trade mark infringement fails. A classic example of this was the Penguin v Puffin case. United Biscuits, manufacturers of the Penguin chocolate biscuit, took action against Asda in relation to their Puffin chocolate biscuit. While the High Court found that the use by Asda of the PUFFIN name did not infringe the PENGUIN trade mark, the overall get-up and packaging of the
Puffin biscuit was likely to deceive consumers into believing there was a connection between the two products.

Copycat packaging

So-called copycat packaging has become a hot topic in recent times, particularly with the rise of retailers’ own-brand products and the tendency to package them to look similar to market leaders without infringing trade mark or other rights. In a very recent non-food case, Aldi was cleared of claims of passing off brought by Moroccanoil Israel Limited in relation to packaging of Aldi’s own-brand argan hair-oil product (Moroccanoil Israel Ltd v Aldi Stores Ltd [2014]). Freeths specialist IP team acted for Aldi in this case. The court’s reasons for dismissing the claim in passing off included the fact that, notwithstanding the fact that the packaging of Aldi’s product called to mind the packaging of Moroccanoil market leading product, consumers were aware that they were buying an own-brand product, and were not being deceived.

In April 2014 the Department of Business Innovation and Skills (BIS) began a 6 month consultation and review of the Consumer Protection from Unfair Trading Regulations 2008 (CPRs), as a result of concerns that copycat packaging was confusing customers. The CPRs prohibit traders from engaging in misleading actions, including marketing a product in a way which creates confusion with the products, trade marks, trade names or other distinguishing marks of a competitor, so that the purchasing decisions of consumers is (or is likely to be) affected. Freeths has been actively involved in the BIS consultation.

In particular the BIS review is considering whether or not the CPRs should be amended to provide for businesses to seek injunctive relief against competitors who use copycat packaging. At this stage it is unclear what legal tests may be brought to bear by the courts in the event that the CPRs are so amended, or how such remedies might differ from the remedies available to businesses under existing trade mark laws and the law of passing off.

Extended passing off

The Fage v Chobani Greek yoghurt case is the latest in a line of cases relating to what is known as extended passing off. Extended passing off has developed as a result of actions in passing off brought by a class of traders (or sometimes just one of them) who share the collective goodwill in a particular trade name or get-up that distinguishes their products from other similar goods in the minds of the public.

Successful extended passing-off claims have been brought by the producers of goods such as:

• Champagne – Tattinger v Allbev Ltd.
• Avocaat – Warnick (Erven) Besloten Veenootschap v J Townend & Sons (Hull) Ltd.
• Swiss chocolate – Chocosuisse Union des Fabricants Suisses de Chocolat v Cadbury Ltd.
• Vodka – Diageo North America, Inc and another v Intercontinental Brands (ICB) Ltd.
• Most recently, Greek yoghurt  – Fage UK Ltd & Anor v Chobani UK Ltd & Anor.

Extended passing off can be particularly useful as an enforcement tool for market leaders whose products are perceived by the relevant public as a premium product, although, as the Court of Appeal made clear in the 2010 vodka case, that is not a requirement to enable a finding that passing off has taken place.

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The content of this page is a summary of the law in force at the date of publication and is not exhaustive, nor does it contain definitive advice. Specialist legal advice should be sought in relation to any queries that may arise.