As one of Scotland's most celebrated industries, our food and drink sector (estimated to be worth around £16 billion) stretches to every part of the country – from the world-renowned whisky distilleries of the Highlands, Moray and Speyside to the Arbroath Smokies; from Aberdeen Angus Beef to Edinburgh Gin. In addition to a reputation for excellence, the intellectual property (IP) rights often carry the most value for the products and the sector.
It is important for businesses to assess what IP assets they have and take the necessary steps to protect them. There have been numerous high-profile food and drink related IP infringement cases in the headlines over the past few years, none more infamous than the Colin the Caterpillar case.
Let's look at the different IP rights that are relevant to businesses operating in the food and drink sector, and the varying degrees of protection available.
Ingredients – the different IP rights
IP rights are a bundle of legal rights that seek to protect the expression of ideas and creations of the mind.
A common misconception is that IP rights only concern inventors, famous brands and the creative arts. However, protecting your IP is important for all businesses, particularly those operating in food and drink. In the UK, there are two general categories of IP rights:
- Registered IP: primarily, trade marks, designs and patents.
- Unregistered IP: including copyright and trade secrets/confidential information.
1. Trade Marks
Trade marks indicate the source of a product or brand. This includes business names and logos, but can also include shapes like the iconic Toblerone triangular shape.
Trade marks do not have to be registered, but there are advantages in doing so. This includes putting others (e.g., any competitors) on public notice that the brand owner owns certain rights, and gives clearer routes to enforce its rights against third party infringers. This can be useful when seeking to prevent copycat products and branding – e.g., in the recent cases involving M&S and Aldi (Colin the Caterpillar cakes). To successfully register a trade mark, the mark must be distinctive - either inherently, such as a made-up word, or have acquired distinctiveness; e.g. a commonly used word applied to new, non-descriptive goods/services. Registered trade mark protection is unlikely to be granted where the mark simply describes the product/services that the trade mark seeks to cover. Protection can be secured in the UK, EU and/or internationally.
Where trade marks are not registered, but the mark/brand has built up a reputation in its relevant marketplace, the party using the mark/brand may be able to rely on the law of "passing off". For a successful claim of passing off, the brand owner must show that: (a) the mark has sufficient goodwill or reputation in the mind of consumers; (b) there has been misrepresentation of the mark by a third party; and (c) damage has been caused to the brand owner's mark / brand as a result of such third party misrepresentation.
These marks indicate membership, e.g. of a trade association. Members will need to comply with rules governing the use of the relevant collective mark. Examples include the "Made in Britain" mark.
These marks can be added to products to provide a guarantee that the goods / services bearing the mark meet a certain defined standard or possess a particular characteristic. Examples include the "Fairtrade (ethical practices" mark.
2. Geographical Indication
It may also be possible to obtain Geographical Indication protection for products. Geographical Indications (GI) protect the name of a product that has a specific geographical origin and owes its qualities and/or reputation to production in that location (e.g., Stornoway Black Pudding, Scotch Lamb and Orkney Cheddar). GIs are particularly important for Scotland's whiskies. Scotland is synonymous with whisky, and GIs protect the value of brands selling genuine Scotch Whisky.
To be protected by a GI, at least part of the production, processing or preparation will have to take place in the relevant area. The Scotch Whisky GI, for example, means that in order for whisky to be officially classed as "Scotch Whisky", production and maturation must take place in Scotland. The GI therefore protects the products against imitation and those who do not meet the necessary criteria cannot use, imitate or evoke the GI and therefore benefit from the associated reputation.
The Department for Environment, Food and Rural Affairs manages the UK GI scheme. For further information, read our blog on GIs and the UK regime post-Brexit.
Design rights give the rights owner a monopoly over their design for a limited period, stopping others from making, using or selling a product using or incorporating the same or sufficiently similar design.
Like trade marks, designs do not need to be registered but it is advantageous to do so. There are different types of unregistered design, with the duration of protection depending on the design in question (e.g. unregistered 3D-shape and configuration designs are protected for either 10 years from date of first sale, or 15 years from the date of creation (whichever ends first); whilst the appearance of 2D or 3D products (such as the shape, colours, textures and ornamentation, is protected in the UK by the supplementary unregistered design right for three years from the date you make your design public). There is separate protection available at the EU-level.
A registered design, however, gives the right holder wider protection – covering the whole (or part of the) design appearance, and can cover 2D or 3D objects. Registered design protection can last for up to 25 years.
To be registrable, a design must:
- be 'novel': no other identical design can exist; and
- possess 'individual character': produce a different overall impression to any other design publicly available.
A patent is an IP right covering inventions. An invention is a product or process which is a new or novel solution. A patent application includes technical information about the invention. The patent holder has the right to prevent or stop others from using the patented invention for commercial use, preventing it being made, used, distributed or sold by others without the patent owner's consent.
To register a patent the invention must be new, meaning it has not been made publicly available anywhere in the world, and inventive, meaning it is not an obvious change to something that already exists.
Copyright protects the form of expression of ideas, including written or artistic works. In the UK, copyright arises automatically on creation of the work - there is no registration required in order to benefit from copyright protection. Copyright helps to protect the work and prevents third parties from copying the works or distributing copies of the works.
6. Trade Secrets and Confidential Information
Information may be protected both under common law as confidential information, and as a trade secret. This is one of the most important forms of protection for food and drink businesses, for example in order to keep recipes secret. If an invention is not patentable, it can still be afforded protection as a trade secret or as confidential information.
Free samples – examples of IP in the food and drink sector
Written recipes can be protected by copyright, but this only guards against their written re-publication by third parties. It would not stop a third party from using the recipes.
The key is to keep recipes confidential (i.e., as a trade secret, by ensuring internal access restrictions are in place within your business, and by using non-disclosure agreements). The benefit of trade secrets is that they last for as long as the information remains confidential. The Coca-Cola recipe, for example, has been protected as a trade secret since 1891, and the Irn Bru recipe is reportedly only known by three people in the world.
For your company and product names, slogans, logos and even colours (e.g., Cadbury's purple), the primary safeguard for your branding is trade mark protection; the general rule being, the more distinctive and unique the branding, the stronger your trade mark.
Care should be taken regarding the copyright in any branding materials. If you have used third parties to design your logos, websites and marketing materials, make sure you have written contracts that assign the copyright in those works to your company – otherwise the third parties will retain ownership by default.
Aside from branding, design right protection might also be available. Famous registered designs include the shape of Cadbury's chocolate bars and the M&S light-up gin bottle.
M&S was able to rely on its registered design right when claiming that Aldi had infringed its IP rights in the latter's alleged copycat version of the light-up gin bottle, proving just how useful registered designs can be for brand owners.
It may be possible to patent food and drink production methods and techniques, if they are new and inventive, rather than an obvious change to something that already exists. Famous examples of this include the (now-expired) patents relating to the fermentation process used to produce Quorn, and the process of extending the shelf-life of foods through the use of additives.
IP protection provides your business with an invaluable competitive advantage, as well as adding value for potential buyers or investors as key assets of your business. Whether you are a start-up food producer, or an internationally-renowned drinks business, understanding and protecting your IP rights should be a key consideration as part of your commercial strategy.
Brodies provides both contentious and non-contentious advice on IP matters – please get in touch if you have any queries relating to your IP portfolio, or would like to discuss any of the topics covered in this article in further detail.