Recent news reports (such as this one from the BBC) indicate that the employee-owned supermarket, Waitrose, has issued a letter to its competitor Asda raising trade mark concerns.

The letter apparently takes issue with Asda's recent release of its new value grocery range, which it has named "Just Essentials". Waitrose claims that this is too similar to its own "Essential" range which launched in 2009, and which is protected under the trade mark "ESSENTIAL WAITROSE".

In the event that Waitrose decides to bring a court action against Asda for trade mark infringement, what legal points would be considered by the court?

Trade mark infringement?

Section 10 of the Trade Marks Act 1994 sets out that there is trade mark infringement if a sign is similar to the trade mark and is used in the course of trade and either:

  • It is used in relation to similar or identical goods or services and there is a likelihood of confusion on the part of the public; or
  • The trade mark has a reputation in the UK and the use of the sign takes unfair advantage or, or is detrimental to, the distinctive character or repute of the trade mark.

Therefore, the onus would be on Waitrose to satisfy a court on these points. Waitrose has stated that its brand has "built up a strong reputation for value, quality and higher welfare standards" so that would likely be a key point relied on in any litigation.

Potential defence?

A spokesperson from Asda has stated that "essentials" is a "generic and commonly-used term" for retailers to describe value ranges of products.

Trade mark law operates on the basis that certain terms should not be registered, on the basis that to do so would give the owner a monopoly in the market and this would constitute anti-competitive behaviour. For this reason, it is not permissible to have a trade mark which:

  • is devoid of any distinctive character (section 3(1)(b) of the 1994 Act); or
  • consists exclusively of signs which designate the characteristics of the goods or services, such as their value (section 3(1)(c))

Accordingly, these could be factors relied upon by Asda if it required to defend any legal proceedings.

Brand protection

While the dispute between Waitrose and Asda is currently at an early stage, it will be interesting to see how it unfolds and whether there are ramifications for other retailers.

The dispute reminds us of the importance of brand protection. Intellectual property (IP) is often the most valuable asset of a business. It is crucial that companies take steps to protect and enforce its IP. The first step is to have a robust IP protection and enforcement strategy in place, as we have discussed previously

If you have any queries relating to this, or to IP in general, please get in touch with a member of the IP, Technology and Data team or your usual contact at Brodies.

Contributors

Monica Connolly

Senior Associate

Martha Speed

Trainee Solicitor