In the latest trademark battle of the UK supermarkets, Iceland has filed an application to register 'King Prawn Ring'. Is this a genuine attempt to protect its iconic dinner party dish or simply a 'fishy' marketing ploy to grab headlines, asks Megan Taylor. She explains what the application reveals about trademark requirements and the 'dos' and 'don'ts' of IP registration in the UK.
The battle of the supermarkets continues in the UK, as Iceland throws its hat in the ring over its king prawn rings. The frozen food giant has become the latest contender to bring about choppy waters by filing for registered trademark protection for 'King Prawn Ring', covering solely king prawn rings, as well as registered design protection. In addition, the supermarket and food warehouse chain has issued an open letter to its competitors (Aldi, Tesco, Asda and Lidl) to warn them of their filings and potential consequences should the other supermarkets fail to cease selling their own versions of the product.
But this stunt should be taken with a pinch of (sea) salt... The trademark requirements set out by the UK Trade Marks Act 1994 (TMA) suggest that Iceland's application is highly unlikely to be accepted. Nonetheless, this fishy marketing ploy provides a helpful reminder of the 'dos' and 'don'ts' of IP registration in the UK.
UK trademark requirements
- Distinctiveness
One of the absolute grounds on which the UK Intellectual Property Office (UKIPO) can refuse a trademark application is that of lack of "distinctive character" (section 3(1)(b), TMA). This is based on the idea that a trademark should enable consumers to distinguish between the goods/services of various undertakings.
Based on the trademark requirements, the term 'King Prawn Ring' would unlikely be seen as a trademark by consumers and, therefore, would have little success distinguishing Iceland's goods from those of competitors.
While it is possible to argue acquired distinctiveness through use in the UK, extensive evidence would be required to support this claim.
- Descriptiveness
Another absolute ground on which a trademark application can be refused is where a mark is descriptive. Section 3(1)(c) TMA stipulates that a mark shall be refused registration if it consists "exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services".
There is no doubt that the term 'King Prawn Ring', as applied to king prawn rings, is descriptive.
Design requirements
Of course, trademarks are not the only means of obtaining protection for IP assets and Iceland has also purported to have filed for registered design protection. However, for this application to be a success the design must also meet certain requirements; namely, it must be deemed 'new' and have 'individual character' (as per section 1B of the Registered Designs Act 1949). For this to apply, the overall impression of the design must make a different impression on the consumer compared to its predecessors. As Iceland states that it launched the product back in the 1990s, this could put it at a disadvantage in the assessment of whether the design constitutes something new and possesses individual character.
What's more, if a design has been disclosed to the public prior to filing the application at the UKIPO, this can also take away its novelty. The UK has a prescribed time limit in which a design can be filed following a disclosure. The supermarket's extensive previous use could, therefore, catch Iceland out.
Unjustified threats
Although it does not apply to Iceland in this case, its open letter is also a reminder of section 21 of the TMA, which deals with 'unjustified threats'.
Many feel pre-action letters are a simple drop in the ocean, but care must be taken when considering their sending and drafting. The term 'infringement' has a specific statutory meaning in the UK, and both attorneys and their clients can be sued for injunction and even damages if such threats are held to be unjustified. Pre-action correspondence (and any deadlines they contain) must comply with the Pre-Action Protocol under the UK's Civil Procedure Rules.
Discover more dos and don'ts of IP protection
While Iceland's application and open letter appear to be bait for publicity, it is important to keep in mind that trademark and design registration is not necessarily a straightforward process. There are many trademark requirements to consider as part of your IP protection strategy, as well as many different types of IP rights.
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.
