Protecting intellectual property rights in the food & drink industry
Many businesses in the food and drink industry underestimate the value of their intellectual property (“IP”) rights, such as their name or design of their products, which are just as valuable as (or sometimes more than) any of their tangible assets. Some IP rights can arise automatically and others can be protected through registration. We have summarised the main characteristics of the registrable IP rights that tend to be relevant to the food and drink industry below.
1. Trade marks
The essential function of a trade mark is to be a badge of origin. Trade marks may comprise of words, slogans, logos, sounds and/or three-dimensional symbols, which distinguish the goods and services of one business from those of another.
The process of registering your trade mark is likely to take about four months to complete. Once registered, your trade mark will be valid for 10 years (and can be renewed for a further 10 years at a time for as long as the trademark is in use), entitling you to:
• take legal action against anyone who uses it without your permission;
• put the “®” symbol next to your brand (thus highlighting that it is registered); and
• commercialise your brand by selling or licensing your relevant IP rights.
Registering your trade mark can also prevent other businesses from gaining “inspiration” from your IP, as has been highlighted in the recent dispute between Nando’s (the popular Peri-Peri chicken restaurant chain) and Fernando’s (a Portuguese-inspired chicken restaurant based in Reading). Although the owner of Fernando’s claims that his inspiration for the restaurant came from a popular TV dating show, the multitude of similarities between his start-up and Nando’s registered trade marks has prompted the latter to commence legal action for infringement of Nando’s IP rights.
2. Registered designs
A registered design right can protect the appearance of the whole or part of a product, including its physical shape, configuration and decoration. You should consider registering both the key elements of your design as well as the entirety of your design in order to protect infringers from cherry-picking specific features.
A registered design protection lasts for a period of five years from the date of registration. You may renew the registration for one or more periods of five years, limited to a total term of 25 years.
3. Patents and trade secrets
A patent protects certain types of technical inventions. In the food and drink industry, patents are most relevant to new recipes. In theory, it is possible to obtain a patent for a recipe, however, in practice, most inventors will rarely satisfy the relevant two-step statutory test, namely, proving that their recipe is both “new” and “inventive”. Even if one manages to satisfy the first part of the test by inventing a recipe that has never been used before, it is extremely hard to also show that the same would not have been obvious to a skilled person in the food creation industry. The application process itself is also cumbersome, time-consuming and expensive. The average application takes roughly five years to complete.
If you cannot obtain a patent, but you nevertheless believe that your recipe deserves protection, then consider the trade secrets regime that has historically been the best type of protection for food and drink related inventions. For a recipe to fall within the definition of trade secrets, it must have the necessary “quality of confidence” and it must have been imparted in a situation “imposing an obligation of confidence”. If your recipe satisfies this definition and it is feasible for it to be kept secret (both from the public and the majority of your employees), the protection conferred by the relevant legislation and case law is likely to allow your recipe to be kept away from the public eye for generations – such as the secret recipe of Coca Cola.
If you would like to find out more about any of the above IP rights, please contact Daisy Divoka or give us a call on 0345 070 6000.