Food&Wine for business: how to legally protect your food brand, by a trade marks expert

What’s the difference between a trade mark and a brand?

They’re broadly the same thing. A brand is the name or logo given to a particular product or service, while a trade mark is the intellectual property (IP) right that protects it. Both reflect the way your customers can identify you and your products and services. You choose your brand to set yourself apart and so your customers can find you and repeatedly purchase from you. Getting your brand registered as a trade mark meanwhile gives you a monopoly in that mark; one that allows you to prevent your competitors from copying you, either by using something identical, or something similar to your trade mark. Your brand and your trade mark form a valuable part of your business assets, and their selection and protection are not to be ignored. Trade marks are as important as the product or service itself.

If you’re about to launch a product on to the market, here are some of my legal tips to bear in mind:

Choose something distinctive

Here’s where marketing and legal collide. Marketing wants a brand name and trade mark that tells a story, something that directly tells the customer about you and your product. Legal want the exact opposite, and there’s a good reason why. Trade marks should not be descriptive of your product or service as this makes them hard to protect, and hard to enforce against infringers. Elements of a brand which describe a location or other quality of your products or services are hard to claim ownership in; it’s tricky to try to stop someone also referring to your city as part of their name. It’s very hard to claim that descriptive words identify your goods, and only your goods. It’s far better to choose something either allusive, or suggestive as your rights in that name will be easier to protect, and stronger to enforce. In fact, it’s even better to choose something totally unrelated to your products or services. While it may not immediately tell your story, it will make for a much stronger, distinctive trade mark. Illustrating this, it’s interesting to note that the world’s most valuable trade mark is APPLE. The world’s strongest food brand is HERSHEY’S. The world’s fastest growing food brand is BELVITA. All distinctive. None are descriptive at all…which shows it pays to think outside the box a bit.

Do your research

IP rights are not a freedom to operate. They are a monopoly in the thing protected, which allows you to prevent third parties from copying you. So, before launch, some research is strongly recommended. Searches using online search engines can reveal other entities using similar/identical names to your own, and you might infringe them if you use a similar/identical name to theirs. For food and drinks products, you might also need to think about whether your chosen name is actually already protected as a Geographical Indication (PGI) or a Protected Designation of Origin (PDO). You can’t call your cheese a halloumi, for example, unless it’s made in Cyprus. It can’t be called a blaa unless it’s from County Waterford (or a small part of Kilkenny, too). It’s not a Champagne unless it comes from the Champagne region of France – otherwise it’s a…. you get the picture! Other factors to consider are avoiding crop variety names which might also be protected. You might also like to have a bit of a think about whether there are any negative connotations of the name – might it have links to unsavoury characters? Does it mean something rude as Gaeilge? Having tor rebrand can be expensive, and potentially embarrassing, too.

Trade marks aren’t just words

Anything you can represent graphically can be registered as a trade mark, so that can include words, logos, the name of a restaurant and/or a chef, the 3D shape of goods and their packaging, sounds, smells, colours, logos….if you can represent it graphically, and it’s important to you, it might be worth protecting. Examples of more non-standard brandings that have trade mark protection include ‘Cadbury’s purple’; GORDON RAMSAY; the Coca Cola bottle shape; the sounds of Homer Simpson’s “D’Oh!”; the shape of a Viennetta ice cream – all protected, all distinctive, all can be used to prevent competitors copying them.

Think beyond trade marks

In addition to trade marks, there’s an array of other types of IP protection available - patent protection is important for certain food/beverage production, packaging and manufacturing processes. New foods can be protected by patents – for example, Chef Ferran Adria enjoys patent protection for his Olive Oil Caviar. Recipes and formulations can be highly confidential and considered ‘trade secrets’ - the Coca Cola secret recipe, for one. These can be protected using non-disclosure agreements, and by including appropriate provisions in employment/production contracts. Copyright can protect artwork in logos/labels; content on websites and menus and other materials like manuals, instructions and source code. It is important that any ownership of copyright works created by third parties like graphic designers should be assigned to you as otherwise you may not own it.

Protect it (please)

Almost 10% of total employment worldwide is in the food/beverage sector, which enjoys total annual sales of over €1.5 trillion. As a result, the sector is highly competitive. It’s also one where products are mostly selected by customers based on their appearance, given how they are offered for sale in store settings. This makes ist essential to protect your IP. Usually the simplest, most effective way to achieve this is through the registration of trade marks, and also designs, particularly for their packaging, design or shape. When it comes to protecting your IP rights, pre-emptive protection gives you security and a competitive edge. It’s also much easier to enforce your rights if those rights are the subject of some sort of IP registration. Trust me: I’m 20 years in the game, and the most important takeaway you can have is that you can save yourself a lot of heartbreak by getting your IP ducks in a row sooner, rather than later.

Hazel Tunney works with Tomkins, a leading intellectual property law firm based in Dublin 6 and servicing clients internationally - see tomkins.com. She will be take part in an online conversation with Gillian Nelis, editor of Food&Wine and Gráinne Mullins, founder of Grá Chocolates on Wednesday August 9 at 4pm. For free access to this Food&Wine Masterclass event, click to register here: https://foodwineexperiences.ie/