It has been said that we first eat with our eyes, which is also generally how we first identify with brands. The last couple of months have been active for intellectual property issues in the food and drink industry. Here we take a look at three recent matters, from interesting trade mark applications to interim interdict, which show that the role of IP in this sector cannot be underestimated.

Falling flat

Ardagh Metal Beverage Holding raised probably the most unique question - can you trade mark the sound of a fizzy drink can opening? The short answer, for them, was no - but that is not to say it cannot be done.

This case was the first time the General Court of the EU has given a ruling on the registration of a sound mark, submitted in audio format. Ardagh sought to apply for a trade mark consisting of the sound made by a drink can being opened, followed by a silence of around one second and a fizzing sound lasting around nine seconds. While that may seem very specific, the EUIPO rejected the application on the basis that it was not distinctive. Ardagh appealed to the Board of Appeal and then the General Court who dismissed the action in agreement with the EUIPO's reasoning.

Previously, 20th Century Fox trade marked its "Lion roar" and McDonald's obtained protection for its "I'm loving it" jingle, so it is possible to obtain such protection for non-traditional marks. Indeed, in this case the court specifically clarified that the mere fact that a sound is made only on consumption, as opposed to prior to purchase, does not mean that the use of a sound to indicate the commercial origin of a product would be unusual. However, of key importance is that consumers must be able to associate the sound with the commercial offering to which it relates, based on the sound alone. This association cannot be in reliance on any other contributing elements i.e. a word or logo. Ardagh now has the opportunity to appeal to the European Court of Justice on points of law.

Imitation is the sincerest form of flattery

The Scottish court's very own Colin v Cuthbert came in the form of Hendrick's v Hampstead. In this case, Hendrick's (owned by William Grant & Sons) was successful in securing an interim interdict to stop Lidl selling its Hampstead gin in Scotland.

Hendrick's has been sold in the UK since around 2000 and is the owner of a UK trade mark for its bottle's shape and label. Lidl had sold Hampstead gin in its stores for around 10 years prior to this matter coming to court. However, up until 2020, its Hampstead gin was sold in a green bottle, more akin to your average gin bottle. The style of Lidl’s Hampstead gin then changed to a dark, rounded bottle, reminiscent to that of Hendrick's. The Court of Session found that there was evidence to suggest that Lidl was riding on the coat-tails of the Hendrick’s mark and granted an interim interdict to stop the sale of the bottles in Scotland, pending a full trial.

It was found, at this stage, that there exists no likelihood of confusion as to commercial origin, even given the similarities in looks and pricing between the bottles, nor was there misrepresentation. Therefore arguments under s.10(2) of the Trade Marks Act 1994 and passing off were not successful. However, the existing reputation of the Hendrick's trade mark in the UK could be relied upon to establish a prima facie case under s.10(3) of the 1994 Act. This was on the basis that there was a reasonable prospect of success in Hendrick's showing that Lidl amended the design of its gin bottle with the intention of benefitting from the reputation and goodwill of the Hendrick's mark. Reference was made to the fact Lidl was charging 60% more for the re-designed bottle than their previous Hampstead offering, therefore taking unfair advantage of the Hendrick's mark.

This decision sheds light on retailers sailing close to the wind and the important intellectual property considerations as to where the line is crossed when it comes to copycat products. It also highlights the difficulties in businesses enforcing their rights when they do not meet the reputation requirements to rely on s.10(3).

Not Oaty

Oat drink company Oatly brought an action for trade mark infringement and passing off against UK-based Glebe Farm Foods. Oatly claimed that Glebe Farm's "PureOaty" brand infringes its "Oatly" and "Oat-ly!" EU word and logo marks, and its packaging is too similar to that of Oatly's.

Oatly is deemed the world's original and largest oat drink company. Headquartered in Sweden, the company has been operating for over 25 years and is now a multi-billion dollar operation. Glebe Farm has operated since 2008 and specialises in gluten free food and drinks. Similarly to the situation with Hendrick's and Hampstead, the issue in this matter arose on the back of a re-brand of Glebe Farm's "Oat Drink" and its packaging to "PureOaty" in January 2020. Oatly's position is that the intention was for Glebe Farm's products to bring Oatly's to the mind of the consumer and benefit from its reputation.

The outcome of the trial is expected shortly. Of note is that Oatly has faced some backlash over the action, as to whether it is a genuine protection of rights or a David v Goliath power play against a small, family run company.

While we wait first instance decisions, full hearings and potential appeals, these matters raise some interesting points. The unique approach to protection from Ardagh is to be commended and provides food for thought as to whether brands are using all avenues open to them to protect the unique elements of their offering. Additionally, the Hendrick's and Oatly cases highlight the importance of not only having registered rights but also enforcing them to prevent dilution of your brand – albeit taking into consideration potential trial by social media, which could be more damaging to a brand.