Let’s cut to the CHEESE – a banquet of IP updates

Sarah Neil serves up four delicious courses which stretch the boundaries of Intellectual Property in the food industry

Here at AAT we love food. Not only do we love eating food, we love cooking food, thinking about food and talking about food. We also love combining food with our other passion: IP. In recent years, the food industry has been responsible for a number of important and thought provoking IP cases in trade mark law establishing key principles in the field of non-traditional trade marks and bad faith. The last year has seen even more interesting questions raised in the field of IP.

The creepy crawlies starter

I recently learned of some research to find a solution to the problem of feeding the world’s growing population with the Earth’s limited resources. One such solution is investigating the use of insects to replace traditional meat sources. Insect farming requires less space and resource than traditional animal farming and there is potential for insect meat to be mass produced replicating a range of familiar flavours.

As soon as I heard about this research, I instantly thought to myself “but how will the producers of insect meat classify the goods in their trade mark applications?” Okay, so it may not be the first question which pops into your mind, but it is an interesting one none the less. So I decided to turn to the Nice Classification, only to be quickly reassured that the good people in charge of classification have already thought the matter through and have us covered whether the insects are alive (Class 31) or not (Class 29). So, maybe my question wasn’t so crazy after all. The answer may not have been very meaty but it’s only the starter right?

The uniquely tasting main course

Much to the annoyance of my colleagues here in the Trade Mark Department, I have excitedly been following the progress of Levola Hengelo since I first became aware of it back in 2017. In November last year the Court of Justice of the European Union finally answered the much anticipated question: Can copyright subsist in the taste of cheese?

The question originates from The Netherlands during proceedings concerning the alleged infringement of IP rights in the taste of a spreadable cheese. Relying by analogy on a 2006 decision of the Supreme Court of the Netherlands which recognised the possibility of copyright existing in the scent of a perfume, Levola sought to argue that the taste of a food product is a work of literature, science or art which is eligible for copyright protection. Smilde, the Defendant in the infringement proceedings, argued that the instability of food products and the subjective nature of the taste experience precludes the taste of food from qualifying for copyright protection.

In an unsurprising decision, the CJEU brought the matter to a close by confirming that copyright cannot subsist in the taste of cheese. The decision revolves around the question of whether the taste of a food product can be classified as a ‘work’ within the meaning of the Copyright Directive. Without expressly referencing it, the Court’s reasoning touches upon the opinion of Advocate General (AG) Wathelet, which is perhaps the most interesting aspect of this case. In his opinion, the AG openly referred to the Sieckmann criteria in relation to the graphic representation of a trade mark. The Court did not reference Sieckmann, but it appears it had these criteria in mind when finding that a work “must be expressed in a manner which is identifiable with sufficient precision and objectivity”. This led the Court to hold that as the taste of a food product will be identified on the basis of subjective and variable taste sensations and experiences, it is not sufficiently precise and objective to be classified as a ‘work’. As a result, copyright cannot subsist in the taste of food.

This surprising application of trade mark law in the field of copyright protection may have led to this predictable outcome, but the reasoning feels slightly odd. The decision includes discussion of the fact the taste of food is subjective and will be influenced by factors such as the age, preferences, and consumption habits of the person eating the food as well as the environment in which the product is consumed. This is likely a very accurate assessment, but could the same not be said of other ‘works’ which are readily accepted as appropriate for copyright protection? To take music as an example, many of the same factors will influence the perception of a listener of a piece of music and that is why the public has such a wide range of musical preferences. As you sit back and acknowledge the musical accompaniment to your main course (a bit of imagination on your part is required here…) it is entirely plausible that you hear nothing but noise as you listen to what I consider to be a musical masterpiece. The subjective perception of an individual plays a part in the enjoyment, or otherwise, of all forms of ‘work’ and it seems inappropriate to suggest that this should play a role in whether copyright can or cannot subsist.

On that note, I suggest we leave the potential for jurisprudential debate behind us and move on to more indulgent parts of our meal.

The cheese board

Don’t worry if the mains gave you your fill of cheese, the cheese board isn’t really about cheese, rather it’s about cannabis seeds called CHEESE.

In 2015, EU Trade Mark Registration No. 013924139 was successfully entered onto the EU trade mark register. The mark applied for was CHEESE and the relevant goods ‘Grains and agricultural, horticultural and forestry products not included in other classes; seeds’ in class 31. In 2016 a declaration for invalidity was filed claiming the mark was devoid of distinctive character and descriptive. The invalidity applicant submitted evidence and arguments claiming that, at the date of fling the application, the term CHEESE was known to manufacturers, retailers and consumers in the market as the name of a type of marijuana seed. The EU IPO agreed and cancelled the registration in 2017.

The case was appealed and in October 2018 the Board of Appeal upheld the decision of the Cancellation Division. The Trade Mark Applicant submitted arguments that it was responsible for the coining of the phrase CHEESE and the sign is not descriptive. Although the issue of the origin of the word was not decided, the Board of Appeal highlighted that the Applicant itself used the sign CHEESE together with its brand names. This practice was adopted by other retailers, as shown in the evidence filed by the Invalidity Applicant, and supported the idea that CHEESE is a descriptive term for the relevant goods.

The Board of Appeal found that at the date the trade mark application was filed, regular users of marijuana would recognise CHEESE as referring to a particular marijuana seed, thus immediately making a connection between the mark and the goods in question and rendering the mark descriptive (although, I suppose in reality the immediate nature of this connection depends on just how frequently, and how recently, the user has been using marijuana!)

The after dinner mint

As you come down from the high of indulging in a feast of weird and wonderful IP questions, and as you are enjoying your coffee and after dinner mints, I hope you will take some time to reflect on the relevance of IP to your business. The food industry might not seem like an obvious candidate for a broad range of IP, but the questions and challenges raised in these cases show that matters are not always as straightforward as they may seem.

If you have any queries about how to protect your business assets using IP (whether food related or not), please contact the writer or another member of our team.

Category: Latest Insights | Author: Sarah Neil | Published: | Read more