United States: Protecting Novel Foods

Clare Cornell of Finnegan looks at intellectual property considerations for creating and manufacturing novel foods, in particular vegetarian or vegan products.

When seeking to develop a new food product, thinking about intellectual property (IP) is an important step in early-stage development. IP needs to be considered from two angles: firstly will your product infringe anybody else's IP, and secondly, how will you protect your ideas, product and brand?

New production methods

Once you have a product in mind, it is prudent to consider third party IP, which might be relevant to your manufacturing process.

Novel and innovative processes in food production and processing may be protected by patents. This is often the case where new methods of processing have been developed to manufacture products which have the look and feel of meat but are made with plant-based ingredients.

If you are intending to use a manufacturing process which you think is new, patent searching is invaluable to help avoid infringing anyone else's patents. If there are valid patents in the area you seek to enter, it may be possible to license a third party manufacturing process to make your product. This might be an entire process, or just a part of a process you will use in product development.

If you have devised a new manufacturing process, it may be protectable by patent if it is both novel and inventive. New processes or technology to overcome a problem in the manufacture of a product, may also be protectable.

It will be necessary to identify the inventive element of your process and describe and claim this in your patent application. The application will then be examined against existing patents and publicly available materials in order to determine that it is indeed new and inventive, prior to the granting of a registration. It should be noted that securing patent protection is likely to be expensive.

What's in a name?

Once you have scaled up your development and your product is close to market, it is important to consider how to brand it. This will comprise more than just a trade mark and should also include packaging designs and devising a marketing strategy to identify the product.

Trade mark searching is worthwhile, when choosing a brand name, to avoid inadvertently choosing a mark similar to the name used by an unknown competitor. Trade marks will help to protect the product name and securing design registrations is a cost effective way to protect the appearance of product packaging. Registering designs is useful if you hope to introduce a line of products with a common design theme across the range.

When naming a product, it is important to consider whether to choose an entirely distinctive name or one that alludes to the type of product you are selling. This is an important consideration, particularly for products in the plant-based/meat alternative space.

Registering a trade mark can be a relatively low-cost exercise if no objections are raised during the registration process. There will likely be a need to communicate the type of 'alternative' product you are selling. It can be tempting to choose a descriptive name, or one similar to an existing product, but this can have pitfalls, including possible allegations of trade mark infringement, or issues registering your mark because it does not meet the required distinctiveness threshold at the trade mark registry. This is a common objection raised during examination when the mark is descriptive of the product. Avoiding the temptation to create copycat marks can help reduce costs. With a unique and original trade mark, the need to defend against allegations of infringement, which can be damaging, is avoided.

Although it is possible to sell a product without a trade mark registration, you may struggle to prevent others from using an identical or similar trade mark in the future. An example of a mark which would be considered as purely descriptive is 'soya-snax' for products derived from soy protein with the element snax likely to be understood to be an obvious misspelling of snacks. If a company has a distinctive house mark, combining this with a descriptive name can help to secure a trade mark registration.

In the UK, the examination process may also identify similar earlier trade mark registrations, but your application will not be refused on this basis. However, the earlier rights holders will be notified of your application and could oppose registration if they have concerns that the marks might be confusingly similar.

It is important to note that trade mark infringement extends beyond identical marks, it is also an infringement of third party rights if your mark is sufficiently similar to an existing registered mark that customers might be confused into believing a product originates from somebody else or that there is an endorsement of the product by a third party.

Examples of such confusion are encountered not only in small businesses, but also when established companies inadvertently find themselves in trouble if the mark they choose is too similar to a mark used by another business. For example, Waitrose raised concerns over Asda's use of Just Essentials, which has some similarity to their Essential Waitrose range. Lidl has also claimed that Tesco's ClubCard deals blue and yellow colour scheme infringes their distinctive blue square background featuring a yellow disk.

Vegetarian and vegan markets

Businesses looking to expand into the vegetarian or vegan space, which have traditionally sold meat-containing products, can face other challenges including how to retain customer confidence in both the traditional meat markets and the meat alternatives that they choose to market.

Manufacturers can face criticism if vegan products are manufactured in an environment that may contain traces of animal-derived products. Another challenge may arise from supporters

of the traditional meat industry, who are opposed to the sale of plant-based alternative products and the use of traditional meat product names to describe such products.

Choices also need to be made regarding product labelling. Brands can consider taking a license to use the Vegan Society's Vegan mark, which can help raise customer confidence in the product's plant-based credentials. In order to obtain such a license, certain specific criteria need to be met and adhered to for the duration of the license.

Having a strategy and clear vision of the target market can be helpful and can guide product labelling and packaging choices. Larger brands may choose to market plant-based products using new brand names in order to distinguish them from meat-based products, or to acquire smaller independent brands, which have already done the initial leg work to bring a product to market.

Legislative issues

Those looking to move into the meat alternative sector also need to consider regulatory rules concerning product naming (Table 1).

Table 1. Regulatory rules governing naming of vegetarian and vegan foods in the UK¹, ²