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Take care when choosing a name

By Julie Brown

A catchy and memorable brand name is high on the list of priorities for any food and drink manufacturer looking to make a mark on the market – but care must be taken when choosing a brand, to ensure it is capable of being registered as a trade mark.

Julie Brown is an associate in the intellectual property and technology department at Maclay Murray & Spens LLP. Julie.Brown@mms.co.uk

Why might a business be prevented from registering a trade mark?  
Businesses will usually seek to register a trade mark for a brand, so that they can effectively deter third parties from the unauthorised use of that brand name.
However, as a registered trade mark offers very strong rights, there are various rules that prohibit the registration of certain words or marks; if your brand name falls foul of these, you won’t be able to register that particular brand name as a trade mark.
A trade mark, which exclusively describes the characteristics of the relevant goods, for example, may not be registered on the basis that those terms should be available to all producers to define the qualities of the goods in question.
In particular, a place name famous for the type of goods concerned, cannot be registered as a trade mark in respect of those goods.
 
What can we learn from recent legal decisions?
Food and drinks entrepreneurs seeking to protect a brand for their business should look at a recent case which highlighted some of the key issues that businesses can face when looking to register a trade mark.
Niagara Bottling LLC, a company which applied for an EU trade mark for the word ‘Niagara’, to use on a variety of bottled drinking water products.
Its application was rejected by the European Union Intellectual Property Office on the basis that the word Niagara was “descriptive in nature and devoid of distinctive character”.
The brand owner appealed the decision of the European Union Intellectual Property Office to the EU General Court, arguing that the Niagara River and Falls cannot be described as mineral springs, and instead convey images of danger, turbulence and risk to life. The General Court considered whether the general public would perceive the bottled water as originating from Niagara Falls, or the surrounding area.

The court noted that it was not necessary to establish whether the trade mark truly does establish the geographical origin of the goods: the only relevant fact was whether the public would perceive the sign as the origin of the goods in question.

The court noted that it was not necessary to establish whether the trade mark truly does establish the geographical origin of the goods: the only relevant fact was whether the public would perceive the sign as the origin of the goods in question. On this basis, the General Court found that the first association that springs to mind in connection to the word Niagara is water.
What’s more, although the company’s products included distilled, purified, flavoured and mineral-enhanced water, their essential element was water and the Niagara Falls connection was, therefore, applicable.
The Court upheld the decision of the European Union Intellectual Property Office.

What lessons can be learned by food and drink brand owners from the Niagara case?
This case shows that even if an associated and famous place name is important to a business’s brand, it must not take priority when it comes to choosing a brand name, as that may prevent the brand from being registered as a trade mark.
Instead, great care should be exercised when choosing a brand name, to ensure it is truly distinctive and unique to your business.

Do you have a business, property or legal question or issue that you would like to know more about? Contact Scottish Grocer and we’ll put it to an expert.
Contact John McNee 0141 567 6032 or john.mcnee@peeblesmedia.com

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