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Food Products and Trade Mark Protection – Blurring the Line of Descriptiveness

By Ben Murphy
Food Products and Trade Mark Protection – Blurring the Line of Descriptiveness

Visitors to a supermarket will be confronted with thousands of famous and distinctive brand names competing for space in their (virtual or physical) shopping basket. However, they may not realise that yet more trade marks are hiding in plain sight – some words which seem, at first glance, to be descriptive of the products on which they appear can in fact be registered trade marks owned and used by a particular company. Here are some examples.

Did you know – these food product names are all registered trade marks?

UK Trade Mark Registration No. 2266091 TENDERSTEM

The name ‘tenderstem’ is more than just a reference to the texture of a part of a broccoli floret. Sakata UK Limited owns a UK registration for the trade mark TENDERSTEM, registered since 16 August 2002. It covers “vegetables” in class 31 and is used as the name for a variety of leafy brassica described as a hybrid of Chinese kale and broccoli. Sakata Seed Corporation is also the owner of a number of registrations in other jurisdictions for the mark BROCCOLINI, another name by which the same plant variety is known in several countries.

UK Trade Mark Registration No. 902042679 PINK LADY

This registration is used as the brand name for the ‘Cripps Pink’ variety of apple, being an apparent reference to the apple’s colour and the fact that it is a hybrid of the Lady Williams and Golden Delicious apples. Registrations for the trade mark PINK LADY are owned by Apple & Pear Australia Limited, an industry body and non-profit membership organisation that supports Australia’s commercial apple and pear growers.

UK Trade Mark Registration No. 568964 GRANARY BREAD

This registration was filed in 1936 by Hovis Limited, who also own a registration for the mark GRANARY in the UK (filed in 1972) and several other jurisdictions. On its own website, Hovis Limited takes care to point out that “Granary® is not just a type of bread. The ® is there for a reason. It’s a brand and registered trademark of Hovis®. So if it’s not Hovis® it’s not Granary®.”

UK Trade Mark Registration No. 2467951 LOCHMUIR

Marks and Spencer Plc filed its application for the above mark on 27 September 2007. As The Scotsman reported in 2006 (upon the launch of the brand), ‘Lochmuir’ is not a real place in Scotland, although it nonetheless evokes a Scottish place name given the use of the word ‘Loch’ in the brand. Incidentally, the registration covers “Fish; salmon; all the produce of Scotland” in class 29.

Marks & Spencer is not the only supermarket to use trade marks which bring to mind a fictitious place name. In 2016, Tesco Stores Limited obtained registrations for WOODSIDE FARMS, BOSWELL FARMS, REDMERE FARMS, SUNTRAIL FARMS, ROSEDENE FARMS, NIGHTINGALE FARMS and WILLOW FARMS. It was reported in the press that year that some of these trade marks did not correspond to the name of a real farm. The marks were instead created by Tesco to be used as their brand name for different ‘own brand’ food products.

EU Trade Mark Registration No. 1050251 GRANOLA

While many would consider ‘granola’ to be a generic word describing a type of breakfast cereal, the German supermarket operator REWE-Zentral AG owns a trade mark registration for this word which was filed on 22 January 1999 and covers goods in classes 5, 29 and 30. Consequently, the word ‘granola’ cannot be included in a specification of goods for an EU trade mark registration, as it is a registered trade mark. Alternative goods such as ‘cereal’ or ‘muesli’ would not prompt such an objection.

Until relatively recently, GRANOLA was also a live UK trade mark registration dating back to 1885. The registration (No. 49555) was owned by United Biscuits (UK) Limited and covered several different food products in classes 29 and 30. This registration was fully surrendered in August 2005 and is no longer valid.

The concept of ‘generic’ use of a registered trade mark

Owners of trade marks which allude to characteristics of the goods or services for which they are registered should take care to avoid using the mark in a manner that suggests they are a common name for the products they protect. Under Section 46(1)(c) of the Trade Marks Act 1994, registrations for such marks can be revoked.

However, some famous trade marks thought by some to be 'generic' continue to be protected by valid registrations. For example, brands such as Hoover and Rollerblade are listed in the UK IPO’s Manual of Trade Marks Practice as signs that “have been used by the proprietor purely in a trade mark sense and have been protected vigorously under the law to ensure that they are not used as generic titles for goods”.

Other IP rights used by food producers

Operators in the food industry may be well-advised to seek protection of their product names as registered trade marks. As the above examples show, this may be possible even where the ‘brand’ name alludes to characteristics of the product itself (although purely descriptive product names cannot be registered as a trade mark in the UK or EU).

However, in the UK, other forms of registered protection for food products are available. For example, under the UK Geographical Indication scheme, several registers exist for names of food products, including Protected Designation of Origin (PDO) and Protected Geographical Indication (PGI), traditional speciality guaranteed (TSG) and registers for protected or traditional names for alcoholic drinks. In addition, there is a UK register of Plant Breeders’ Rights through which right holders can obtain the exclusive right to grow, market and commercialise a type of plant variety which they have bred. Some food products can even be patented!

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