Our summary of five key intellectual property cases from the food and drink industry reported over the last 18 months, which distils the facts and outcomes from each case into helpful take aways and tips for businesses and individuals operating in the sector.
Our round-up has a good mix of case highs and the lows, from luxury goods companies taking brand protection seriously, as you might expect, to budget supermarkets and fast-food outlets being party to litigation.
The main trends emerging from these cases are that the European Union Intellectual Property Office (EUIPO) will partially revoke marks if there is no real evidence that they are being used; and that budget supermarkets are sailing ever closer to the wind with dupe products and the courts are willing to step in to protect the originals.
Our Commercial Disputes team at Shepherd and Wedderburn have a wealth of experience in commercial contract, intellectual property, and brand protection disputes. Please don't hesitate to get in touch with Partner Matt Phillip or Senior Solicitor Carly Duckett if you need straightforward, commercial advice to help resolve issues affecting your business.
Lidl v EUIPO– the Veuve Clicquot orange label
Summary
Lidl wanted to sell champagne with orange on its label. Veuve Clicquot has an orange colour trademarked in the EU and objected to Lidl's use of the colour on its own champagne product.
Lidl then challenged the validity of the European trademark (EUTM) and was successful in having it revoked because the evidence that was submitted to point to acquired distinctiveness through use was insufficient.
Maisons Hérès Champagne Société, Veuve Clicquot's parent company, sought permission to appeal the decision. Its application to appeal was refused on 2 October 2024.
Take away
There is a high bar for successfully defending EUTMs because trademark owners must show that the mark has acquired distinctiveness through use.
Tip
Make sure that you use the EUTM as registered for the relevant goods and services, and record your evidence proving your use of the mark in case it's ever challenged.
Lidl v Tesco– signposting Clubcard discount prices
Summary
In 2023, the High Court found that Tesco's Clubcard logo, used to identify discounted pricing on various products in its stores, infringed Lidl's trademark of its yellow circle in a blue square logo and amounted to passing off and copyright infringement. It also found that Lidl had registered its wordless trademarks (i.e. those without LIDL on the logo) in bad faith. Both parties appealed and Lidl led evidence of actual confusion among its customers.
The Court of Appeal agreed with the High Court that Lidl's wordless marks had been registered in bad faith and that there had been passing off and trademark infringement because of the potential for customers to be misled by Tesco's Clubcard signage, but the High Court's ruling on Tesco's copyright infringement was overturned.
Take away
Ensure you intend to use your trademarks before you register them, which is required for a UK trademark (UKTM), otherwise you'll be vulnerable to a finding of a bad faith registration.
Evidence of confusion is relevant to the tests for trademark infringement and passing off, and can be valuable for businesses that want to protect their trademarks.
Tip
If you're concerned about a competitor using your trademarks, keep an eye out for and record all instances of actual confusion among your customers.
If you want to read more about this case, we've written a longform article about it, which is linked here.
Supermac's v EUIPO– BigMac defeat for McDonalds
Summary
Supermac's is an Irish fast-food chain, specialising in chicken and burger products. In 2015, it attempted to trademark its name in the EU, which was opposed by McDonalds. Supermac's was able to trademark its name for its restaurants, but not for many of its food and drink products.
In 2017, Supermac's filed a non-use revocation application against McDonalds' 'Big Mac' trademark. Based on insufficient evidence, the EUIPO revoked the Big Mac mark. McDonald's appealed and the decision was partially annulled, then Supermac appealed again.
On 5 June 2024, the EUIPO decided to partially revoke the Big Mac trademark because there had not been real commercial use of the mark in relation to certain products (including chicken sandwiches). Unsurprisingly, they were able to find sufficient evidence of its use for beef products, so it's still in place for them.
Take away
If you have trademarks registered for a range of products and the mark is only used for one of them, you are at a real risk of losing it in relation to certain categories if an application for revocation is made against you.
Tip
Pick your trademark classes carefully, and if you want to uphold broad protection, think about whether you can maximise the trademarks you have by using them when you're developing new products within a range. McDonald's developed a Chicken BigMac special for a limited time, but that was insufficient. The outcome might have been different if that was a permanent feature on its menu.
Thatchers v Aldi – Cloudy Lemon Cider
Summary
Thatchers is a well-known cider producer in the UK, with a cloudy lemon cider product that is packaged in a pale lemon-coloured box with lemon patterns and dark text against the pale background. In May 2022, Aldi launched a product named 'Taurus Cloudy Lemon Cider' with similar packaging. Thatchers raised an action for trademark infringement and passing off.
At first instance, the Court decided that there was a low degree of similarity in the overall appearance of the products; that the names were aurally and conceptually dissimilar; and that the use of pale yellow and lemon print on a lemon drink product was common. It concluded that Aldi did not intend to exploit Thatchers' goodwill and that there was not a likelihood of confusion or any misrepresentation. The High Court decided that both of Thatchers' claims failed.
Thatchers appealed the decision that Aldi's cider didn't infringe their trademark under section 10(3) of the Trade Marks Act and led evidence that the team developing the Aldi cider packaging had used Thatchers' product as the benchmark for their lemon cider and wanted the packaging to be similar.
On 20 January 2025 the Court of Appeal overturned the High Court's decision on that point, stating that:
"The inescapable conclusion is that Aldi intended the Sign to remind consumers of [Thatchers'] Trade Mark. This can only have been in order to convey the message that the Aldi Product was like the Thatchers Product, only cheaper."
That finding captures the essence of dupe products and shows the courts' awareness of the issues that the originators of these products face in a market flooded with dupes.
Take away
Supermarkets are continuing to create own-brand dupes of well-known products right on the fringes of trademark infringement and passing off, but the courts are cognisant of the fact that if the packaging is similar enough to an existing mark, there's a significant risk that the potential infringer has taken unfair advantage of the existing mark's reputation, which amounts to infringement.
Tip
If you're entering a saturated market in good faith, make sure that your products have unique designs on their packaging that are not exclusively descriptive so that you have a better chance of properly enforcing your rights.
If you want to read more about this case, we've written a longform article about it, which is linked here.
Campari Group v Dark Sky Brewery – Skyy vodka and Dark Sky beer
Summary
Dark Sky is a microbrewery operating in Teesdale County Durham. In June 2022, it applied to register its monochrome trademark with a black background, the words DARK SKY in bold in the centre of the mark, the outline of an owl above, and BREWERY below, all in white. Campari, which owns SKYY vodka, has a trademark for the word SKYY for beers and all other alcoholic beverages. It opposed the registration and Dark Sky's owner represented himself in defending his mark.
Campari's opposition was unsuccessful because:
- while there was some degree of competition between the products, those drinking alcohol are rarely deciding between beer and vodka ;
- the logos were similar to only a low degree and were unlikely to be mistaken for or misremembered as one another; and
- the common element between the marks (the word "sky") was not so distinctive that the average consumer would expect only one company to use it.
Take away
If you have a generic brand name, be prepared that others in your industry might use it and take steps to ensure that other elements of your branding are distinctive.
Tip
If you're using a generic term in your brand name, you face an increased risk of challenge. Choosing a distinctive name and get up reduces the likelihood of any infringement or passing off allegations against you later down the line, which can be difficult to manage when you've started to develop a reputation using generic branding.
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.
