Counterfeit foods? The importance of considering trade marks in packaging for Food & Drink businesses

So what is “real” food? Most of us would probably say it had to be healthy, nutritional foods, free form additives and probably organic.

But a recent European Court of Justice decision has been required to decide if a crisp manufacturer can register a trade mark to say their crisps are “real hand cooked”.

Counterfeit Food Real Trade Mark Food Drink Packaging

Given its general use to describe foods which are organic and healthy, surely no-one should have a monopoly of its use. But that is exactly what has been discussed in the European Court of Justice in a decision in February 2016 in a case which has been disputed for five years.

The case

In April 2010, Tayto Group, a Northern Ireland crisp manufacturer, filed an application to register a Community trade mark, throughout the European Union for their logo, which showed the words ‘REAL HANDCOOKED’ in black writing.

The general principle is that descriptive terms should not be capable of being registered as a trade mark, but here the words were being used as a logo and it was the logo, not the words, which they sought to protect.

As the trade mark application was in logo form, it would normally be the case that registration would not give general rights to the words contained within the trade mark, but only their use within the logo itself. Effectively, what was being sought was protection of the label or packaging rather than the words “real hand cooked” themselves.

But their application was rejected by the European Trade Mark Office because they considered that it was too similar to an existing trade mark in Germany, which had the word ‘real’ in bold red writing.

The argument has gone on for five years, but in an appeal decision, the European Court of Justice has held that in comparing these two logos, the normal consumer, and here they were concentrating on the consumer in Germany where the previous trademark was registered, would focus, primarily, on the word “real” and so it has been decided that Tayto’s application cannot proceed because there is likelihood of confusion between the two marks.

In considering their decision, the judges have decided that if somebody saw a trade mark “real” they would not regard it as descriptive of the goods, because the goods could not be anything other than “real”. The key therefore, was that the logos would be confused, but in analysing the possibility of confusion, they took account of the way in which they would be described i.e. by using the words.

This does not mean that Tayto is necessarily infringing the existing trade mark in Germany – it simply means that their own application to register their own logo has been blocked. While they retain copyright in the logo form and have common law rights to be able to claim there might passing off if anyone uses a similar logo or label, they cannot acquire the monopoly right which is given by a registered trademark.

That, to some, may appear common sense. As surely most consumers would regard “real” foods as a category, not a brand name.

What does it mean for food producers?

The case does, however, throw up a number of important legal issues. But for food producers it raises the risk that in describing their product as a “real” food, if it is claimed they are using it as part of the brand name rather than a generic description, they could find themselves breaching a trade mark held by a company in Germany.

This highlights the need to consider packaging carefully, not only in a UK context but also for all possible markets.

At Harper Macleod we are used to advising clients on this sort of issue, carrying out appropriate searches and checking regulatory requirements in both the UK and export markets.

Far better to check in advance than to face a claim that your “real” goods are counterfeits of someone else’s.

Get in touch

Scott Kerr is Head of Harper Macleod LLP’s Food and Drink Group. If you wish to discuss any of the issues raised in this article, please get in touch.