UK: Protecting Your Brand: Focus On The Food & Drink Sector

Last Updated: 27 November 2018
Article by Danielle Cooksley

Brand protection is essential, particularly in the highly competitive, fast-paced Food and Drink (F&D) industry. As any F&D producer will know, building a successful brand requires significant investment of time and capital. Whatever stage your F&D business is at, a strong brand will be a significant part of the value of your company - it is therefore vital that your brand is protected.

Creating a Distinctive Brand

Given that that the purpose of a brand is to differentiate one company's products from those of its competitors, there is an obvious commercial benefit to creating a distinctive brand that will stand out in a crowded marketplace and will be readily associated with your products, and yours alone. There are legal benefits, too; the distinctiveness of a trade mark impacts on its registrability, its scope of protection and its enforceability.

Minimising Risk: Clearance Searches

When businesses develop new brands, attention is often focused on the success of the brand from a marketing perspective. However, it is also important not to overlook the legal risk posed by the intellectual property rights of others.

So as to reduce the level of risk involved in launching a new brand or entering a new market, it is almost always advisable to conduct some trade mark searches. There can often be a large number of potentially relevant prior rights in existence, and clearance searches will help to detect those potential risks at the outset. In the event that obvious barriers to use or registration are identified, spotting these problems at an early stage avoids wasting time and money developing a brand that cannot be launched or, in the worst case scenario, having to rebrand at a later date because of conflict with the proprietor of an existing trade mark. Where potentially relevant third party rights are identified, you need to consider your strategy carefully.

Protecting Your Brand

Ensuring that you are in a position to prevent others from using or registering trade marks that are either the same as, or confusingly similar to, those of your business is crucial to maintaining a strong brand.

+ Unregistered Rights and Passing off

Trade Mark registration is not mandatory and in some countries, including in the UK, enforceable "common law" rights may be obtained without a national registration, simply by using a mark in commerce.

Unregistered trade marks in the UK are protected by the common law tort of passing off. The underlying principles of a successful passing off claim were formulated in a packaging dispute in the F&D industry (the "Jif Lemon" case) and such claims often concern the unregistered 'get up' of a product, i.e. its packaging and/or appearance.

Although passing off rights can be important where a business does not possess relevant trade mark registrations, relying on unregistered rights is far more difficult and more expensive than relying on registered trade mark rights.

+ Registered Rights

Rights in a registered trade mark arise on the basis of first to file (although, in some territories, they can potentially be trumped by earlier user rights). Accordingly, you should seek to register your trade mark as soon as possible; delaying might lead to someone else beating you to it and subsequently preventing you from using or registering your chosen mark.

What Can Be Protected?

Trade marks can be words, logos, slogans and can also include shapes, colours, sounds and even smells.

"Businesses often overlook the value of protecting their brand in block capitals, as well as in their stylised logo form. These should be the first marks for which protection is sought by any business."

However, colour and shape marks are of particular interest for the F&D industry as the colour and/or shape of a product and/or its packaging can play a significant role in distinguishing products, and both are often key factors that influence consumer behaviour.

Such "non-traditional" types of trade marks may be registered in the UK and Europe provided that they are capable of distinguishing the goods or services of one undertaking from those of others (i.e. the "distinctiveness requirement" discussed above). In an attempt to assist the registration of "non-traditional" trade marks, at EU level, trade marks may now be represented in any appropriate form using generally available technology. From January 2019, UK law will be amended to match.

In practice, the distinctiveness requirement poses a considerable hurdle for registration of colour and shape marks as the courts have taken the view that consumers are not in the habit of perceiving colours and shapes as indications of trade origin. It is also worth noting that additional considerations are applied to the registration of shape marks in the UK.

Nestlé has spent more than a decade fighting to protect the shape of its four-fingered KitKat bar and Lindt's chocolate bunnies failed to hop over the distinctiveness hurdle. However, the shape of the Coca Cola bottle and the Toblerone chocolate bar have both been successfully registered. On colour marks, Cadbury failed to secure registered protection for the colour purple and Red Bull also failed to maintain its European registrations for the colour combination blue and silver.

As a final point, it is worth mentioning that a "non-distinctive" trade mark may be registered if can be proven that the mark has acquired distinctiveness as a result of the use made of it; of course the "acquired distinctiveness" provision will not assist if you are about to launch a new product.

Scope of Protection

When filing a trade mark application, it is necessary to provide a statement of the goods or services for which the mark is used or is intended to be used. Drafting the specification and selecting the appropriate class to properly protect your product(s) is a complex process. If drafted too narrowly, there is little flexibility for your business to evolve. On the other hand, if drafted too broadly, you risk exposing yourself to unnecessary third party challenges. Additionally, if you register your trade mark but do not use it within a certain period of time, it may become vulnerable to cancellation for non-use.

Enforcing Your Brand

Once your brand is secure, it may be advisable to set up a watch service to monitor for new trade mark applications for conflicting trade marks, so that you can take action as appropriate to protect your brand. It is also advisable to keep a watchful eye on the market and take steps to stop any use of a mark that infringes your registered rights.


Consumers now have an unprecedented level of choice and F&D producers must clearly distinguish their products from the competition if they want to succeed.

A distinctive brand that stands out in today's crowded marketplace will give your business a competitive edge and it may just be your most valuable asset.

Like any valuable asset, a brand should be protected.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions