Welcome to the tenth instalment of Scran & sIPs® - the Summer ’23 edition of the quarterly publication from Marks & Clerk that focuses on intellectual property for the Scottish Food & Drink industry.
In this edition, we speak to Scottish EDGE about their inaugural food and drink award that will be granted to one of Scotland’s most up-and-coming, innovative, high-growth potential, entrepreneurial food and drink businesses during Round 23. Ed Carter talks about a robot chef that utilises machine learning to recognise recipes; Paul Chapman talks about alcohol-free and low alcohol drinks; Clodargh Sherrard gives us an insight into Levercliff; Mike Shaw explains why protecting typefaces through design registrations could be beneficial for food and drink companies; Aimee Cawley provides some comments on marvellous mushrooms; Gregory Carty-Hornsby talks about design infringement; and Pamela Bryer and Rebecca Boyd introduce themselves in our Meet the Team segment.
What is Scottish EDGE and how do you help businesses?
Scottish EDGE supports companies by running a bi-annual funding competition aimed at helping to identify Scotland’s up-and-coming, innovative, high-growth potential, entrepreneurial talent. We provide feedback to all our applicants and a mix of grants, loans and business support to our winners. To date, we have invested a total of £23.6 million in the form of grants and business loans and supported 569 Alumni, 473 of which are still trading.
How popular is food & drink as a business idea?
We work with any type of business idea with technology and engineering, creative and food and drink being the most popular categories of business who approach us.
Can you give us some examples of food and drink businesses you’ve supported?
I am delighted to say we have supported some amazing food and drink businesses over the years from Rock Rose Gin in the north of Scotland to Glasgow’s Bare Bones Chocolate and Shetland’s Good Nude Food, who have created Superkraut. We also have delicious coffee and soft drinks businesses and an amazing rum distillery, Matugga. In our last round we helped a delicious oat milk business called Three Robins.
What are the key challenges these businesses face?
Business is full of challenges and for food and drink businesses these can include supply of ingredients, the cost of manufacturing and finding a good manufacturer to work with if you’re outsourcing or raising the funds for equipment and ensuring you can handle volume if you’re making your product in house. Then there is the challenge of securing customers especially if you are aiming for national distribution whether that is speciality shops, wholesalers or supermarkets and also the cost of acquiring customers online if it is direct to consumer. Business isn’t easy (but it is fun)!
Tell us about the new Food & Drink award you will be offering at Scottish EDGE?
We have partnered with Scotland Food & Drink to offer a branded food and drink award to shine the light on this category and its importance for the Scottish economy and to try to get more food and drink businesses to enter the competition.
What advice would you give to an applicant to Scottish EDGE?
We’re here to help. We run application workshops, publish a competition brochure and have sample application forms and videos online as well as offering one to one support if you need it. You don’t need to be staring at the application form wondering what do I do!
Q&A with Scottish Edge (cont'd)
What support do you give to your winners?
As well as funding, we give our winners access to a support package from experts including lawyers, accountants, insurers and IP experts. We also provide Relationship Management, business information and signposting and access to peer-to-peer support through networks and events.
Do you have a particular piece of advice for food & drink winners?
My number one is talk to your customers. That’s the only way of finding out who likes your product and why, and how to reach them through your marketing.
Can you tell us a bit about your own journey to being CEO of Scottish EDGE?
I’ve been working in business support for more years than I care to admit. My last job before EDGE was running a loan fund for the Prince’s Scottish Youth Business Trust which gave young people aged 18-30 access to loans of up to £25,000 to grow their early-stage businesses helping the likes of BrewDog, Safehinge and Seric Systems among others. I also pitched the idea of Young EDGE to the government and was involved in judging Scottish EDGE when it was based at Scottish Enterprise. I joined EDGE as CEO in the autumn of 2014 to take EDGE out of the public sector and set it up as a private-sector led social enterprise.
And finally… as an expert on all things food and drink in Scotland, are there any particular consumer trends we should be looking out for this summer?!
Spice mixes, ready to drink cocktails in cans and pouches, mushroom products (despite The Last of Us), and vertical farm grown microgreens!
Two years ago, Bare Bones Chocolate was awarded £50,000 at Scottish EDGE. What kind of impact has this prize had on the business over the past two years?
At that point we were at a critical growth point in the business. We had outgrown our workshop and were turning down business and needed to move to a new, bigger space with a fit out, new machinery, packaging, and cocoa beans. The EDGE funding enabled us to do that and make the most of that season and the next by taking on new business. At the time of the EDGE win there were three of us and we now have seven people, five full-time and two part-time. At the end of July, we will take on a further five people to gear up for the busy periods. The business has grown by 110% in the last two years.
Despite the popularity of mass-produced confectionary there is a growing appreciation for businesses that prize quality over quantity. Your ‘bean to bar’ process is something that encapsulates this, so could you tell us a little bit more about this process and the benefits you have seen from operating this way?
We’re so glad we have prioritised quality over everything else as this has meant that the business has grown through no advertising because the product is so good. We do pay a lot for materials and labour, but we find we don’t have to pay for marketing. If you look at the process, we import beans from small manufacturers and make the chocolate in small batches and can showcase how amazing flavours you can extract from each bean.
Sustainability models and eco-credentials are increasingly at the core of modern business. How does Bare Bones Chocolate ensure that the raw cacao beans used in the ‘bean to bar’ process are sourced responsibly?
Sourcing is extremely important as exploitation is common in the industry. We work with two experienced sourcing experts who have the time and knowledge to travel to different farms to make sure they are farming sustainably and can taste the product. They then buy containers of the beans, and we buy pallets from the sourcers who also provide sustainability reports. We find this works better than trying to buy small amounts from farmers which can be challenging for them. They can also find farms with good farming practices and can help people to transition from selling to the bulk market to the speciality market and double the amount they can sell for creating real value for the farmers.
It is evident that environmental consciousness is at the heart of your business, how does Bare Bones Chocolate ensure its packaging reduces its impact on the planet and how can fellow business’ in the industry follow in your footsteps?
All the packaging we use is from recyclable sources and is recyclable or compostable after use.Our inside wrapper is made from plants and our external wrapper from recycled coffee cups. We also ship in recyclable cardboard boxes with paper packaging. This is more expensive but resonates with our customers. We feel it is easier for the producer to make a sustainable product than the customer having to make that choice so all chocolate producers should look at their packaging.
It’s a shame when a business does one thing good (like paying farmers well) and then puts the product in plastic packaging. I think businesses should aim to be doing all things sustainably and with respect to the environment.
Q&A with Bare Bones Chocolate (cont'd)
What separates Bare Bones Chocolate from other confectionary businesses?
Bare Bones Chocolate is trying to showcase how incredible cacao can taste naturally. We are fanatical about our processing methods and sourcing to make chocolate with beans from different origins and minimal other ingredients.
As the summer months are upon us, what sweet, cold treats could be made using Bare Bones chocolate?
We are about to release chocolate shavings to enable people to make iced chocolate milk. This can be made in cafes and at home and tastes fantastic.
Do you have any tips for storing the chocolate in the warmer months?
The ideal temperature for chocolate is 18 to 20 degrees but that’s difficult so our key advice is just to keep it out of direct sunlight. If necessary, store in your fridge but if you keep it in the fridge, it changes the cocoa butter crystal structure and that can change how it tastes.
When we think of places that are famous for chocolate, often Switzerland and Belgium come to mind. How does Bare Bones Chocolate hope to associate Glasgow and Scotland with the chocolate and food scene?
We’re so proud to be manufacturing in Glasgow city centre, and we reflect that on the label. There are lots of cool businesses in Glasgow such as Rapscallion and Juno Jam as well as great coffee shops and restaurants and we’re proud to be part of an amazing group of businesses. We mainly sell in London, Manchester, Glasgow and Edinburgh and they all love the Glasgow connection.
Using designs to protect typefaces for trade marks
The design of product packaging is of considerable importance for many products, particularly those in the FMCG (fast-moving consumer goods) market. Businesses typically invest heavily in the design of eye-catching logos, labels and packaging materials, with a view to attracting the attention of consumers who are frequently presented with a myriad of product choices in retail outlets.
Very often, businesses will design new typefaces in which to present their brand, and these typefaces themselves can ultimately serve to identify the commercial origin of the product, irrespective of the brand name presented in this typeface. By way of example, see the below image generated by Mars Wrigley to promote their carbon neutral plans:
As may be seen, the word “Earth” is presented in the same typeface in which the brand name “Mars” is typically presented on Mars Bar packaging and advertising materials, thereby reinforcing the brand identity of Mars.
Source: UK Trade Mark Registration No. UK00902152825
Many companies overlook the possibility of protecting the original and distinctive typeface itself, and only seek to protect their brand name as presented in that typeface. However, in the UK and Europe, registered designs can be used to secure valuable protection for such new and original typefaces.
Registered design protection for the typeface provides an additional layer of IP protection for a product’s brand identity, since protection of a typeface through a registered design provides the owner with the right to control use of the typeface, irrespective of the text presented and irrespective of the product concerned. Hence, the design can be a basis to prevent others from using an entirely different brand name or piece of text in that same typeface, even on a completely different product.
However, registered design protection is only available if the typeface is new and has not previously been made available to the public; accordingly, if registered design protection is required, an application should be made as early as possible and before the launch of any new packaging or promotional materials.
Using designs to protect typefaces for trade marks (cont'd)
Mars Wrigley provide an interesting example of how registered designs can be used to supplement trade marks in relation to typefaces. Mars Incorporated is the proprietor of several registered designs protecting the typefaces used for their confectionery products, as shown below:
Through these registrations, Mars Incorporated enjoy the right to control use of the typefaces by third parties, irrespective of whether they use wholly different brands. In turn, Mars are able to use these typefaces in marketing campaigns to reinforce the brand identity of each product, as illustrated by the carbon neutral campaign referred to above.
Whilst the maximum duration of a registered design is limited to 25 years, within that 25 year period the registered design owner will enjoy exclusivity in the typeface. If the typeface is used consistently in marketing and promotional activities, it may ultimately become distinctive of the brand owner, with Coca Cola and Kellogg's being well known examples of this.
Businesses who are developing new typefaces for their brands are therefore encouraged to consider securing registered design protection, alongside trade mark protection. With a team of attorneys having extensive experience in design law and registered design protection, Marks & Clerk is ideally placed to advise further in relation to securing registered design protection for such branding and product packaging.
Circular wind turbine economy - from blades to gummy bears
Wind power has been hailed as one of the key energy sources to lead the way to the net zero goals being set around the world. Beyond the investment uncertainties, operating costs are often cited as challenges in scaling up this power source to meet increasing energy demand globally. However, another important challenge is coming into focus as first-generation turbines reach the end of their projected lifecycle. Landfill sites are starting to fill with turbine blades from early generation blades presenting an environmental hurdle to overcome.
Solutions to this problem have been developed and are already being adopted. For example, Siemens Gamesa's RecyclableBlades were installed in the German North Sea in July 2022. According to the company's press release, these turbine blades are made of, "a combination of materials embedded in resin to form a strong, stiff structure". Furthermore, at the end of a turbine lifecycle, the resin, fiberglass, and wood, are separated, "using a mild acid solution". These materials can then go into the circular economy, creating new products like, "suitcases or flat-screen casings" without the need for new raw materials.
Another new resin could offer a tastier solution. Researchers at Michigan State University have made a composite resin for the blades by combining glass fibers with a plant-derived polymer and a synthetic one. Digesting the resin in an alkaline solution produces potassium lactate, which can be purified to make sweets and sports drinks. In fact, one of the researchers even ate a gummy bear made from the process; literally putting their money where his mouth is.
The innovation on display in both these solutions is remarkable and really highlights the potential possibilities when brilliant minds apply themselves to the challenging problems in the renewables sector.
On eating gummy bears that are derived from a wind turbine, Dorgan says “a carbon atom derived from a plant, like corn or grass, is no different from a carbon atom that came from a fossil fuel. It’s all part of the global carbon cycle, and we’ve shown that we can go from biomass in the field to durable plastic materials and back to foodstuffs.”
The impact of innovations in machine learning and artificial intelligence is making waves across many fields of business and technology at the moment, and now there’s an early sign that the food sector could become one of them. Researchers in Fumiya Iida’s group at Cambridge University’s Engineering Department demonstrated a robot chef that uses machine learning to recognise simple recipes by watching humans prepare them, and even to deduce new recipes that it didn’t previously know.
In the study, the robot was initially programmed with eight salad recipes, and the researchers filmed themselves preparing each one. The robot was then trained to watch one of these videos, analyse what the human does and to which vegetables, and check whether the inferred steps were similar to any of the eight known recipes. If so, the robot was programmed to use its arm to then prepare the same recipe. The recognition process was successful 93% of the time for the simple recipes used in the study; even when the robot didn’t recognise all the individual steps, it could frequently make a correct guess at which of the recipes it was seeing.
Even more impressively, the robot was able to successfully recognise when it was shown a new salad recipe that it hadn’t been programmed with, add this recipe to its cookbook and prepare it following the human example.
While this study is only an early foray into artificially intelligent robot chefs, providing more of a proof of concept rather than a production-ready model, it certainly provides an interesting hint of the impact AI may one day have on food preparation. The researchers note that they used “off-the-shelf neural networks” to train their robot, showing how this kind of technology is no longer behind closed doors in computer science research labs, but increasingly available for all sorts of applications. It’s easy to imagine that it might not be long until AI chefs can make up their own recipes, or at least innovate on existing ones, perhaps after simply watching a recipe being performed once as in this study. The idea certainly has merit -- I’m sure many of us wouldn’t mind the idea of a robot chef that handles the cooking when we just don’t feel like it.
Trainee Patent Attorney
Q&A with Clodagh Sherrard
Managing Director at Levercliff
Levercliff has a strong affection for the Scottish food and drink scene, and have partnered with Scotland’s Food & Drink on their acclaimed Academy Programme. The Academy aims to assist Scottish food and drink producers in developing the skills necessary for Scotland to double its food and drink output to £30 billion by 2024. Levercliff was selected to deliver the Academy’s commercially focused training programme, through providing skills training, theory and practical solutions via workshops and one-to-one input from professionals who are high-performers in the industry. So far, 80 Scottish food and drink businesses have participated in the courses that focus on taking businesses to the next level.
Hi Clodagh, thank you so much for joining us today. It would be great to start with an overview of Levercliff for our readers who are yet to hear about you.
At Levercliff we focus on working with food and drink companies to help them buildbetter businesses by becoming more insight-led in their operations. This can range from helping them develop new products with a clear consumer demand, to helping in their category management activities, but it can also be as all-encompassing as us taking an active role in shaping their business plans and strategies to become more commercially focused and insight-based. Our work is focused on the UK and Irish markets but inevitably sees us working both with domestic and international clients. This year marks our 30th birthday and we’re incredibly proud to have started our ‘new decade’ with a B Corp certification that we believe speaks to our clients and potential partners about the Levercliff ethos of doing better business for the benefit of the society.
As a category consultant business with a legacy of over 30 years in the food and drink industry, what is your favourite Levercliff success story?
As a business we have many success stories, but I think my own personal favourite is Keoghs Crisps based in Dublin. The Keogh family have been farming the land around north county Dublin for over 200 years and back in 2008 I started to work with the family on the positioning and branding of their potatoes, as well as possible diversification avenues. Fast forward to 2011 and Keogh’s Crisps were launched. Tom Keogh is the true embodiment of what it means to be an entrepreneur, deeply passionate and driven, he set about finding out how to make the best tasting crisps, researching everything from the right potato through to seasonings. All Keogh’s flavours contain only natural ingredients, sourced from other high quality artisan Irish food producers. Tom then works closely with their flavouring house to perfect the seasoning. The crisp (and now popcorn) business turns over close to €20m. As a brand, it continues to be the fastest growing premium crisp in the Republic of Ireland but is also now exported to countries such as the USA and UK, as well as supplying airlines such as Emirates and Singapore. I’m pleased to say that both myself and now, the wider Levercliff team continue to work with Keoghs.
At Marks & Clerk, we work with numerous SMEs – helping them to identify, protect, enforce and maximise the value of their intellectual property which in turn helps to solidify the SME market share. What other actions can be taken by SMEs in order to grow market share?
As mentioned, our work in innovation and product development is centred around identifying opportunities for clients through understanding the unmet consumer needs in a category.
Q&A with Clodagh Sherrard (cont'd)
Of course there is a time and a place for ‘me too’ product development, but this rarely is a path to sustainable growth, even if it can lead to short term market share gains. Our approach is based on a framework that takes into account the observable tensions in consumers lives. Most product interactions include a dissatisfaction of sorts, and it’s through the act of observation that these subtle tensions can be identified. The reality is that consumers can’t tell you want they want! Our team has developed strong expertise in using this framework to unearth those needs that have sufficient scale behind them to innovate a solution that helps eradicate some of the dissatisfaction
If an SME is failing to capture its target consumer’s attention, what research does Levercliff implement in order to ensure brand innovation?
For a broad problem such as this, there are a plethora of solutions and as such, the first piece of work we would look to undertake is an assessment of the drivers that explain the current poor performance. There are many marketing frameworks that dissect the key growth levers, but irrespective of the one that you use, in most cases the causes can be explained by investigating issues in availability (physical and mental), pricing, promotion and more fundamentally the proposition of the product i.e. the problem it aims to resolve. It sounds very daunting to be exposed with as broad a range of potential questions to try to answer, but we often find that the main driver for a performance issue is relatively easy to identify, and the bulk of our work would then be specifically tailored to address the particular challenge in more detail.
What kind of commercial skill training does Levercliff offer to food & drink businesses?
In June 1995 Sainsbury’s announced their intention to move into Northern Ireland, and not long after they did, Levercliff in conjunction with Sainsbury’s developed the first Supplier Development Programme, designed to assist local NI suppliers upskill their Commercial abilities in order to understand how to trade and ideally thrive supplying into a large multiple retailer. The rest they say is history! Almost 30 years later we still undertake commercial development programmes, most recently with Scotland Food and Drink. Levercliff are the delivery partners of SF&D’s acclaimed Academy Programme, working with companies such as Mrs. Tilly’s, Scottish Salmon, Bruce Farms and many others. While individual businesses often manage upskilling and training requirements with in-house programmes or on-the-job coaching, we do find some clients wanting to work with us more as business mentors or coaches, which tends to focus on senior management positions. This is how our relationship with Keoghs for example has evolved.
Q&A with Clodagh Sherrard (cont'd)
As inflation continues to challenge us, what steps can businesses’ take to avoid scrimping on quality whilst trying to ensure product affordability?
This is a difficult question to provide specific guidance on as much depends on the category the business is in. Changes that are relative to the overriding category trend are ones that are easier to manage, as consumers are often left with fewer choices but to change their existing patterns of behaviour. The nature of the category and how much of an essential item we are talking about also has an impact in price elasticity. But with all these caveats in mind, we do find that consumers have become more tolerant of portion size changes in the current economic climate, so this would be one option for brands that results in no change to intrinsic product quality. There may even be options where better overall value can be offered with a revision of things like product packaging, shelf-life and even cooking method changes. Iceland have recently been in the press due to launching a whole range of air fryer ready products! Key thing to review is whether you are communicating to consumers the holistic value your product offers them. Finally, there may be some lessons brands can take from Private Label, who can afford to create value tiers in their offerings, ranging from cut-priced essentials to premium quality.
Health and wellness is increasingly at the core of society and is arguably shaped by the rise and fall of different well-being trends seen in the media. In terms of the Scottish food and drink scene, what advice would you give to businesses’ that are aiming to predict, and monetise off the ever-changing consumer health and wellness habits?
Health is clearly a growing topic for consumers in food drink and this is true for all parts of the UK. We see little significant differences between Sottish and English consumers in terms of health and instead the main differentiator is consumer life stage. Age in particular has a significant impact on how consumers approach health in food & drink. Some of this is to do with age-related health concerns, but we do also find that younger consumers are much more interested in new and novel approaches to health, and would certainly be the prime prospect for any products that offer brain and mental agility-related benefits. Food & Drink companies need to understand what constitutes a viable long-term need versus just a short-term fad when they consider developing solutions for health.
Ireland has a thriving Food & Drink industry and it is well established in export around the world. As you are Irish born and bred, what inspiration can other businesses take from Ireland’s food and drink scene, in the hope that their own nation will become associated with their very own food and drink products?
Smaller countries have to punch well above their weight to ensure success on the global stage, particularly in a competitive and somewhat localised food and drink sector. This means that companies must recognise that they need to be outward looking to drive growth, and help from industry bodies acts as a great enabler for constructive collaboration. Ireland has benefitted from significant investment by the Irish Government who, early on, identified the importance of the sector and agriculture to the economy. Investment in insight by Bord Bia (The Irish Food Board) on behalf of the Irish food & drink sector, through its Thinking House, has helped Irish companies not only to respond to domestic opportunities but also to tap into global food trends. Increasingly, we are seeing insight such as this being made available to Scottish companies through SF&D’s Knowledge Bank.
The more I learn about mushrooms, the more I am amazed as to what these marvellous structures are capable of.
For a few years now, easily compostable packaging material such as Mushroom® Packaging, which uses MycoComposite™ biomaterial, has been available to create sustainable alternatives to plastic foams, such as expanded polystyrene (EPS), polyethylene (PE), and extruded polystyrene (XPS) foams. Mycelium (the root-like structure of fungi) is combined with agricultural waste products, such as hemp, cork, sawdust and corn husks, to grow the desired 'green' packaging products.
More recently, I learnt about the power of mushrooms in creating a bio-based leather alternative: Mylo™. Such is the beauty of the material that it has been used by designer Stella McCartney in her range of Frayme bags.
And now, I discover that these magical little things are being used to grow lightweight and relatively eco-friendly construction materials, cleverly using 'knitted moulds'.
It seems the possibilities are potentially endless in terms of technical developments in the underlying technology as well as its applications (and accompanying brand strategy).
The drive towards protecting innovation and brands using Intellectual Property (IP) rights, and on the flip-side ensuring any commercial activity under consideration is free from third party IP rights, must also keep pace to ensure we all continue to benefit from the magic in the mycelium.
And, yes, I am rather partial to a mushroom risotto too!
Using the knitted moulds as a flexible framework or ‘formwork’, the scientists created a composite called ‘mycocrete’ which is stronger and more versatile in terms of shape and form, allowing the scientists to grow lightweight and relatively eco-friendly construction materials.
While trade with Jamaica in Q1-2022 to Q1-2023 amounted to £478 million (ranking 109th of UK’s trading partners), the trade balance being primarily dominated by Jamaican exports to the UK, it is nevertheless an important territory from the perspective of IP protection.
Jamaica is one of the few countries in the world which is a member of the Paris Convention (since 24 December 1999) and the Madrid Protocol (since 27 March 2022), but does not provide facilities for easy online searching of its trade mark database. This peculiarity has allowed Jamaica to become a first-filing destination for companies looking to “secretly” file their applications while retaining the benefit of the six-month priority period for claiming back the original filing date in further overseas filings.
The benefits of this system are clear for companies who wish to keep the launch of their new brands secret as long as possible, while ensuring that they are able to secure trade mark protection and engage with their marketing strategy without interference from squatters. Companies like Apple with their Dynamic Island trade mark have used the Jamaican trade mark system to keep their plans under wraps from the many fans and tech monitors, but also from competitors who often monitor trade mark registries for any newsworthy applications.
In this country in focus piece we will take a closer look at the Jamaican trade mark system.
Jamaican trade mark law is governed by the Trade Marks Act no. 32 of 1999, which came into force on 3 September 2001, and Act No. 25 of 2001, which introduced further amendments. The Trade Marks Rules of 2001 replaced the old Trade Marks Rules of 1958. Further changes to the Act and Rules were introduced via the Trade Marks (Amendment) Act of 2013.
With Jamaica being part of the British Commonwealth, and Jamaican law having been influenced by common law, the Jamaican Trade Marks Act now too bears some similarities with the UK Trade Marks Act 1994.
Unregistered and registered trade marks
Jamaican trade mark law allows for protection of trade marks via registration.
Unregistered rights can be acquired via use and the establishment of goodwill in the mark. Common law rights in passing off are available to unregistered marks.
Any sign that is capable of being graphically represented and capable of distinguishing the goods or services of one undertaking from those of another can be eligible for protection as a trade mark. A registration will last for 10 years, whereupon it can be renewed for further 10-year periods. Where a trade mark might not be registrable outright, it may become registered when an acquired distinctive character can be demonstrated.
In addition to standard trade marks, Jamaica allows for the registration of collective and certification marks.
A trade mark application in Jamaica can take approximately twelve to eighteen months to mature to registration.
The Jamaican trade mark register allows multi-class applications. Power of Attorneys are not required for filing, they would only need to be provided when there is a change of agent during the application process.
Electronic filing is not available, i.e. applications have to be physically made to the trade marks registry by the Jamaican agent. The only exception to this are designations of International Registrations, which are communicated to the Jamaican registry by WIPO.
The registration process entails the payment of fees at two stages: firstly upon application, and secondly upon the acceptance of the trade mark for registration.
As noted above, searches of the trade mark registry for earlier rights which might potentially operate as barriers to the registration of the mark can only be carried out in-person at the local registry, against the payment of an official fee.
Country in focus - Jamaica (cont'd)
This means that it is possible for applicants to file first applications in Jamaica without the details of the marks being made available to the wider public. This allows applicants to obtain a valid first filing priority date under the Paris Convention while maintaining their new brand secret.
During the examination process, the Jamaican Examiner will carry out a search of conflicting earlier marks which may be cited as barriers to registration. If an objection is raised, the applicant will be given the opportunity to make representations or to amend the application.
For rejected applications, it is possible to file an appeal via the Jamaican court system.
Acceptance, publication, and oppositions
If the application is accepted, it will be published for opposition purposes. Third parties may file an opposition within two months of the publication of the mark, stating the grounds of opposition.
If the opposition is deemed admissible, the applicant will be given two months to respond, unless the parties jointly agree to a two-month cooling-off period. The cooling-off period can be further extended via joint request up to a maximum of six months.
Final opposition decisions may also be appealed to the Jamaican courts.
Use requirements and revocation
It is required that trade marks be put to bona fide commercial use in Jamaica. If a trade mark has not been suspended for a period of five years prior to the filing of the revocation action, and the proprietor is not able to put forward proper reasons for non-use, the trade mark registration may be revoked.
If there has been a continuous period of five years of non-use but the proprietor of the mark has resumed use prior to the filing of a revocation action, this may serve as a defence.
In addition to non-use revocation, Jamaican trade mark law also allows for revocation in instances where the trade mark has become generic (common name) or misleading.
It is also possible to seek the invalidity of a trade mark where it can be demonstrated that, at the time of filing, either a) it was disqualified from registration under absolute grounds, or b) a conflicting and still valid earlier right existed and that its owner did not consent to the registration. In the latter case, if the owner of the earlier mark has not taken action after becoming aware of the later trade mark and the later trade mark has since been used for a continuous period of three years, acquiescence may be raised as a defence. Acquiescence will not apply, however, if the later trade mark was filed in bad faith.
Assignment and licensing of trade marks, security interests
Assignments and trade mark licences may be filed with the registry. Suitable documentary evidence must be submitted with each application, i.e. a certified copy of the deed of assignment or a confirmatory assignment, or evidence of a licence agreement.
It is important to note that if an assignment or licence is not recorded within six months of the date of the transaction, the new owner or licensee will not be entitled to damages or an account of profits in respect of any infringement of the registered trade mark which occurs after the effective date of the assignment/licence and before the transaction is recorded.
Security interests can also be recorded at the registry. If appropriate representations are made and the application is accepted, the details of the grantee and basic details of the security interest will be entered in the register.
Scotland is world-renowned for its whisky, but did you know that rum has been produced in Scotland since the 17th century? Although the rum produced is certainly not in the same quantities as whisky, Scottish rum is now a growing market. However, what is the rum like in terms of its quality? Well, it would appear that Scottish produced or finished rum is considered amongst the best in the world, at least by this year’s International wine and Spirit Competition (IWSC).
The IWSC is recognised as one of the most prestigious and renowned global competitions, and winning a medal is highly regarded. In order to receive their highest award (Gold outstanding), a submission must receive a score of at least 98 out of 100. This year entries were received from 48 different countries and the awards included 8 Gold outstanding, 29 Gold, 84 Silver, and 164 Bronze medal winners.
Out of the 8 Gold outstanding, no less than 3 were awarded to Scottish distillers. Two of these awards were given to the Holyrood Distillery in Edinburgh and one to Matugga, based in Livingston.
The Holyrood Distillery when opened in 2019 became the first malt whisky distillery in the Scottish capital in almost a century. However, as well as producing whisky, they also produce gins and rums. The two IWSC2023 Gold outstanding award-winning rums from the Holyrood Distillery are derived from rums sourced from the Diamond Distillery in Guyana. The Holyrood Distillery takes this rum, blends and ages it in spent sherry or red wine casks to impart unique finishes which were clearly loved by the judges.
Matugga produce rum in their distillery in Livingston, situated between Glasgow and Edinburgh, and their motto is “Scottish Craft African Soul”. It is very much a family affair at Matugga, with Paul Rutasikwa (the head distiller) and his wife Jacine (leading marketing). Although neither are originally from Scotland, they have made Scotland their home, along with their young family. Their Gold outstanding award-winning rum was made with East African sugarcane and is a limited edition 3 year aged single cask rum which has been matured in ex-bourbon casks, which had subsequently held cognac for three years. As well as this award, Matugga also won a Silver for their Liv rum and a Bronze for their Liv navy strength white rum.
Many congratulations to both the Holyrood and Matugga distilleries and hopefully this will lead to many more rum awards coming Scotland’s way.
Finally, the success of Matugga had not gone unnoticed by some of us here at Marks & Clerk and when the opportunity arose to be able to purchase their own cask of Matugga rum, Paul Chapman, Richard Gibbs, Tim Hargreaves and Andrew Docherty (aka “The four amigos”), clubbed together to purchase one. Earlier this summer, Paul had the opportunity to visit the Matugga Distillery and got to sample their range of rums, before proceeding to fill “The four amigos” cask, which will be aged for at least three years. Good things come to those who wait, as they say.
Marks & Spencer lights up Aldi design infringement
Earlier this year Marks & Spencer successfully enforced several UK registered designs against Aldi’s copycat products in a decision that should provide welcome reassurance for designers seeking to use registered designs to protect their products.
The products in question are Christmas-themed gin bottles. As early as 2019 M&S had been selling Christmas-themed gin bottles containing suspended gold flakes which can be shaken to create a snow-globe like effect under the name “Snow Globe”. Proving to be a popular product, the following summer M&S copied the formula and added a summer twist with the 2020 “Glitter Globe”.
2019 Snow Globe
2020 Glitter Globe
Having established a market for gold flake gins, in September 2020, M&S updated the Snow Globe design to include new artwork and a light incorporated within the base of the bottle to illuminate the flakes. Wishing to protect itself, in December 2020 M&S filed a series of design registrations protecting the updated Snow Globe. The first registration claims the bottle simply having the winter artwork applied to its exterior.
The second registration additionally claims the suspended gold flakes.
The third and fourth registrations claim the bottle with and without the gold flakes taken against a dark background, in which it can be seen that the bottle itself is illuminated from a light source placed in its base.
The following Christmas (2021), Aldi launched a range of equivalent products, sold under the name “Infusionist”. Aldi’s products included the same bottle shape, suspended gold flakes and base illumination similar to that used by M&S.
M&S vs Aldi (cont'd)
Unsurprisingly, and having had some well documented disputes with Aldi in the past, M&S brought proceedings against Aldi for infringement of its registered designs for the 2020 Snow Globe.
In reaching the Court’s decision, the Judge (HH Judge Hacon) construed the scope of protection provided by each of M&S’s design registrations. All four registrations were filed with descriptions stating that the claimed bottles were illuminated, and the Court accepted that such descriptions can in principle be used to construct the scope of protection of the designs. However, interestingly, despite apparently taking the descriptions into consideration, the Court found that only the third and fourth registrations should be considered to claim the illumination, and that the first and second registrations should effectively be considered non-illuminated. Nevertheless, in the end such a distinction did not matter. The Court found that the similarities between M&S’ registrations and Aldi’s Infusionist products were more striking than their differences, and concluded that all four M&S registrations were infringed by the Aldi products complained of.
However, it is notable that the case does not fully consider the effect of the 2019 version of the Snow Globe as prior art against the 2020 registrations. Given that the scope of protection construed by the Court in relation to the first and second registrations excluded the feature of illumination, it is difficult to understand why the Court felt that these two registrations produced a different overall impression from that of the 2019 version of the Snow Globe, particularly where the only differences appear to lie in the specific nature of the applied artwork. It appears that there is a case to be made that at least the first and second registrations may not be valid, and are therefore not infringed.
However, this situation could have been avoided entirely if M&S had registered its designs before launching the 2019 Snow Globe, or within 12 months of the launch date, since in such circumstances the 2019 Snow Globe would not be citable prior art.
Moreover, whilst the case in the end did not turn on the presence of illumination sources, M&S’ reliance on the descriptions for establishing the existence of illumination clearly failed with respect to the first and second registrations. This situation might have been avoided if M&S had secured additional registered design protection comprising representations showing the bottle in both illuminated and non-illuminated states, thereby expressly claiming internal lighting as an element of the design. M&S could have complimented this by using a written disclaimer to make clear that the scope of protection claimed did not extend to non-illuminated bottles.
Finally, it is notable that M&S’ representations are based on colour photographs. Whilst the decision did not turn on any elements of colour, had Aldi taken a more cautious approach it may have been possible to avoid infringement by using different coloured artwork, flakes and illumination to that claimed by M&S. Likewise, M&S could have mitigated against this risk by including black and white representations, in which colour is disclaimed. Alternatively, M&S could have included a written disclaimer, disclaiming the colours shown in the representations.
The above notwithstanding, the decision should provide welcome reassurance for designers seeking to use registered designs to protect their products. Product design is, like many creative processes, based upon a series of incremental developments, such as in the case of the Snow Globe. However, this decision shows that it is not necessary to create a brand-new product category to obtain enforceable protection, and that protection can successfully be obtained for providing a creative new look and feel to an old product. Nevertheless, the decision also shows the value of obtaining expert advice at an early stage to avoid your own prior disclosures, and the downsides of relying on description elements to address inadequacies in the available representations.
Alcohol-free and low alcohol drinks are here to stay
I have previously written about my love of whole grain beer-making and how BrewDog is happy for home brewers, such as myself, to copy their recipes (Scran and sIPs Issue 8). Now I certainly would not want you to think that all I dream about is making and drinking beer - I only do that 50% of the time! More seriously, I am actually someone who drinks many alcohol-free and low alcohol beers, as I like the taste of beer and the alcohol-free (actually up to 0.5% alcohol) and low alcohol versions taste pretty good. I would go as far to say that some are now exceptional. I drink these both at home and when out socially, especially when driving, as I recognise the importance of limiting one’s weekly alcohol consumption and the health benefits associated with this.
I am not alone when it comes to such a transition, or hybrid drinking approach, as sales of alcohol-free beer in the UK have more than tripled in the last 5 years (Financial Times, 6 June 2022). However, in spite of my scientific background, I must admit that I did not really know how alcohol-free/low alcohol beers were made. As it happens, there are two principal ways for controlling or reducing the alcohol content of drinks, such as beer, lager, ale or cider. The first is by way of adapting the brewing process, by employing non-fermenting ingredients, which acts to stop the amount of alcohol from reaching significant levels. The second way is to remove the alcohol after making the beer in a conventional manner. This is generally achieved by heating the drink until the alcohol evaporates, as this occurs much faster than the water, which is present in the drink; or passing the drink through a special filter, by a process known as reverse osmosis, to remove the alcohol, but leaving other ingredients behind.
A quick patent search using a publicly available database returned over 380 hits when searching for the term “alcohol-free beer”, so there has certainly been a great deal of innovation surrounding the making of alcohol free beer, and interested parties are looking to protect their inventions. Interestingly, the idea of alcohol-free beer is not a new one, as I found a patent dating from 1898, which relates to the removal of alcohol from beer to make it less intoxicating (GB189819859).
Drinks producers in Scotland have actively taken up the baton to produce low/alcohol-free beverages. Exemplary brewers include the aforementioned BrewDog, who make Nanny State and Punk AF beers; Tennent’s, who make Tennent’s Zero; Jump/Ship brewing who make Yardarm Lager; and Harviestoun Brewery who make Wheesht (although I am not sure if this is still available). The trade names of beers are often amusing, as you can see from some of the above. I heard someone suggest that “T-total” would have been a good name for Tennent’s alcohol-free beer and I certainly feel that would have caught the eye. Perhaps my trade mark colleagues will follow up this article with a piece on branding and the importance of protecting your beer trade marks.
As well as the expansion of alcohol-free beers, there has been an explosion of alcohol-free distilled spirits and there are a number of Scottish producers.
Alcohol-free and low alcohol drinks are here to stay (cont)
Feragaia (fer-a-guy-a), for example, is handcrafted by distilling 14 land and sea botanicals – including seaweed, bay leaf and chamomile – to produce an alcohol- and sugar-free “spirit”. Another producer is Glen Dochus who make a variety of distilled alcohol-free spirits. I am sure many others will soon follow. Whilst I have not yet tried these particular drinks, I have had other alcohol-free distilled spirits and have found some to be pleasing. However, these are often designed to be prepared with a mixer, which adds to the overall flavour profile and hence appreciation
Whilst I am more than happy to drink alcohol-free/low alcohol beer and spirits, I have shied away from drinking the wine equivalent. Why? Because their taste is sometimes questionable! However, when making this statement, I must admit to having not sampled any alcohol-free, or low alcohol wine for a very long time. When reviewing for this article, I read of the greater difficulties of simply removing alcohol from wine, as it often leads to removal of other flavour producing components at the same time. Alternatively, a high level of sugar remains in the wine and I am not that keen on medium sweet wines. Moreover, until recently, it seems that not much thought or development went into improving alcohol-free or low alcohol wines. Many wine producers simply viewed such wine as an afterthought or inconvenience. However, given the expansion of other alcohol-free or low alcohol drinks, it seems that times have changed and some producers have put a lot of effort into making these wines taste better. It seems perhaps the time has come for me to try these again and who knows, maybe I will like them.
I have over 20 years of experience as a Patent & Design Attorney and cover a wide range of technologies including electrical, mechanical, optical and software-related inventions.
What are your career highlights to date?
I spent three years working in our Singapore office, which was a great experience all-round, although a highlight was providing designs training to the staff of the Intellectual Property Office of Singapore. I have also successfully attended hearings at the European Patent Office and the US Patent and Trademark Office but, unfortunately, I have yet to find a reason to visit the UK Intellectual Property Office in Newport, South Wales!
What is your favourite dish?
I love Asian cuisine and especially the fresh flavours of Vietnamese food so Cao Lau noodles from Hoi An would probably be my favourite.
What is your signature meal to cook at home?
I generally try to avoid cooking if I can! I do, however, enjoy baking and my spiced pumpkin cake is my daughter’s absolute favourite.
What is your top tipple?
When the sun is shining I like a refreshing fruity cider but otherwise I’ll usually opt for Prosecco.
What are your favourite restaurants?
I’ve just discovered SEN Vietnamese Dining in Edinburgh and highly recommend it for its authentic dishes.
Who are your dream dinner guests?
I think Sandi Toksvig and Bill Gates would be good for an interesting and fun conversation.
What is the most adventurous food/drink you’ve ever tried?
Deep fried silk worms in Thailand.
What are your favourite hobbies?
I am a keen photographer and enjoy travelling and a good pub quiz.
Working within the MBD team, I support our Scottish offices in all areas of Marketing and Business Development, from research to event organisation, profile raising, content production and relationship building. I also look after the company Instagram - never a dull moment.
What are your career highlights to date?
I decided to go back to university to get my Masters after travelling for a few years, and landed the job with Marks & Clerk as I was finishing up. I feel like I've landed on my feet here: I've been given the responsibility of a number of projects really quickly and it's been very fulfilling to see how much I've grown professionally in the first year of my career.
What is your favourite dish?
I don't think I could ever choose just one… I'm a big mac 'n' cheese fan, anything buffalo chicken related. Also love a good fish taco.
What is your signature meal to cook at home?
Admittedly my partner does most of the cooking: he's a fantastic chef! But when I'm left to fend for myself I make a really good chicken teriyaki with veg fried rice.
What is your top tipple?
Day-to-day you'll find me with a coffee in my hand at any given moment: Glasgow's coffee scene is smashing it right now. On the weekends either an Aperol Spritz, or dark/spiced rum - really enjoying Dark Matter rum at the moment; made right here in Scotland.
What are your favourite restaurants?
This list could be quite extensive! A few of my top rated are: Ziques for small plates; Rafa's for Mexican food; and Crabshakk for seafood.
Who are your dream dinner guests?
I know they tell you not to meet your heroes, but I've heard enough times that Dave Grohl is a nice human so he'd be my top pick, along with Grace Beverley. Then David Attenborough and Robin Williams.
What is the most adventurous food/drink you’ve ever tried?
I had some kangaroo when I lived in Australia.
Do you have any hobbies?
If eating out counts, then that and travel! I like getting into the Scottish mountains for a hike, and I've started stand-up paddleboarding. I play badminton, and I've also gone back to gymnastics for the first time since I was about 12 - that has been a humbling experience!
Marks & Clerk set up its first office in the UK in 1887. Today, we’re a leading global intellectual property firm, working in partnership with businesses of all shapes and sizes all over the world. Providing them with people whose legal, technical and commercial expertise exactly meets their needs. Shaping our services around them. Protecting, enforcing and maximising the value of their intellectual property to support them in achieving their business ambitions.
We have a passion for the world of food and drink
The world of food and drink is subject to constant change. Gaining and retaining the competitive edge and preventing competitors from reaping the rewards of your research and investment is a constant battle. We make sure your IP is properly protected as you expand into new product lines or territories. No other IP firm has the in-house capability of Marks & Clerk in technological knowledge and legal expertise.
With Marks & Clerk, you’ll work with people with a passion for the world of food and drink – people who are immersed in the changes taking place in the sector and able to anticipate potential IP opportunities and problems.