Scran sIPs
&
™
Your definitive guide to intellectual property for the Food & Drink industry in Scotland
SCRAN
/skran/
Noun. Food.
"We canny go out on an empty belly — any chance of some scran?"
Issue 7 - Autumn 2022
Contents
A message from the editors
Welcome to the seventh instalment of Scran & sIPs™ - the autumn edition of the quarterly publication by Marks & Clerk that focuses on Intellectual Property and the Scottish Food and Drink sector.
In this edition of Scran & sIPs™, Erik Rõuk takes a look at the trade mark regime in Australia; Eve Brown discusses the Advertising Standards Authority and plant-based burger ads; Julie Canet talks about Royal Warrants; Pam Bryer discusses design protection for the shape of food and drink products; Eve Brown and Claire Keating look at the regulation and trade mark protection available for CBD foods.
Claire Chalmers also summarises the EUIPO Board of Appeal decision on the inherent registrability of the shape of the Absolut bottle and provides some takeaway points for registering 3D marks.
We are joined by the City of Aberdeen Distillery for a Q&A, and we speak to Vault City Brewery and Savora Drinks who both won category awards at the Scotland Food & Drink Excellence Awards 2022, in September. We meet Meena Murrin and Louise Mansion in our Meet the Team section, and our cross-office challenge theme is pumpkin carving.
Jason Chester & Julie Canet
Scran & sIPs dips into
some M&C news
TM
The emphasis at M&C this autumn is less on trick and more on treat as we have had a lot to celebrate.
We are also delighted to share the news that Julie Canet recently qualified as a Registered and Chartered Trade Mark Attorney (UK), and was promoted to an Associate. This follows Julie being awarded a distinction in her final set of exams. Julie joined Marks & Clerk in 2019 after completing a Masters Degree in Intellectual Property Law at Panthéon-Assas University (Paris) and a Bachelors degree in Law, which included a year studying at the University of Rotterdam. She has also passed the French Bar Examination. Julie is certainly one to watch for the future and we wish her all the very best in what we are sure will be a very successful career!
In September, we were delighted to announce the appointment of Esther Gottschalk as our new Head of Trade Marks (Europe). Esther has been with the firm since joining as a trainee in 2001 and became a partner in 2011; she will oversee M&Cs trade mark offering across a 9 strong office network including teams in Edinburgh, Glasgow and Aberdeen.
Commenting on her appointment, Esther said: “It is a privilege to take on this role for Marks & Clerk. I have been with the firm for nearly 22 years and I am proud of its talented and committed trade mark team, where we work with fantastic brand holders both in the UK and globally. As a management team and as a firm, we are aware that the role of the trade mark attorney is constantly evolving and there are opportunities but also challenging times ahead. I want to support the team and add value to our clients as Marks & Clerk continues to support the IP industry at large.” Congratulations Esther!
Also in September, Marks & Clerk was once again recognised by The Legal 500 as a Top Tier Firm in their annual rankings.
The Legal 500 is one of the most well respected guides to law firms and solicitors in the UK, and these rankings reflect the results of detailed analysis of law firm submissions and thousands of interviews with GCs and private practice lawyers, conducted by a team of experienced researchers.
A total of 35 lawyers and attorneys from Marks & Clerk have been mentioned by name in the latest Legal 500 UK commentary for their standout contribution to their respective practices, but here at Scran & sIPs™ Towers, we were especially thrilled to see Jason Chester and Noëlle Pearson’s names riding high in the rankings!
As ever, we would like to take this opportunity to thank our clients for their recognition of the firm’s continued efforts and extend our warmest congratulations to Jason and Noëlle for their achievements.
Hot on the heels of our success in The Legal 500, our Editor Jason was also recognised by Managing IP as a Rising Star in their rankings! The special edition of the publication, which is produced by the IP STARS research team, recognises some of the best up-and-coming intellectual property practitioners who have contributed to the success of their firms and clients.
And finally, just as we were going to 'press', we have just been notified of our recognition by The Times as one of the UK's Best Law Firms in their 2023 guide! The annual report, produced in co-operation with Statista, recognises the the best lawyers for business, public and private-client law in this list of the top 250 legal practices in England and Wales plus Scotland's top 20 — all chosen by lawyers.
To learn more about Jason, Noëlle and the award winning expertise we are able to offer the Food & Drink industry, click here.
Country in focus: Australia
As part of the Commonwealth, Australia has been an important export destination for British goods. British exports to Australia have amounted to £4.1 billion per year and are expected to grow with a new free trade deal having been struck following Brexit. The UK-Australia free trade agreement concluded in December 2021 is expected to boost British exports with many food and drinks products having been subjected to up to 20% tariffs previously.
In particular, the British government has been hopeful that a further £10.4 billion worth of additional trade could be unlocked as a result of the new deal. UK chocolate and biscuits, cheese, gin, and whisky in particular are some of the food and drink products that are expected to be treated to a warmer welcome (and now, increased volumes of export) in Australia given the historic ties between the two countries, the popularity of British brands among Australians as well as British expats in Australia, and many cross-cultural contacts.
Trade mark law in Australia - basics
The national register of trade marks in Australia was established in 1906 and was based on the Commonwealth Trade Marks Act 1905.
Prior to that, each colony or state had passed their own legislation to regulate trade marks. The Commonwealth Trade Marks Act 1905 largely mirrored contemporary UK legislation, which, like Australian laws, had its roots in the common law i.e. law established through precedent. The Trade Marks Act 1955 (Cth) followed and again largely mirrored the UK’s Trade Marks Act 1938, although some key differences had begun to emerge.
The contemporary Australian trade mark system is governed by the Trade Marks Act 1995 (Cth) and Trade Marks Regulations 1995 (Cth). The latest Act was necessary to address a number of issues, including Australia’s compliance with its obligations under the the TRIPS Agreement. At the same time, UK trade marks law was increasingly becoming more harmonised with European trade mark law. As a result, current Australian legislation has evolved in a way that makes it unique and distinct from current UK legislation and the legislation of other Commonwealth states, although many similarities remain.
The application, registration and administration of trade marks in Australia is overseen by the Australian Registrar of Trade Marks. In practice, this role is carried out by the Registrar’s delegates at IP Australia, an agency that falls within the Department of Industry, Science and Resources.
Top 10 trade marks in Australia. In 2014, IP Australia asked a panel of Australian personalities to rank top national trade marks and the Australian public were asked to vote for the top 10 favourite Australian trade marks
Country in focus: Australia (cont'd)
Appeals against decisions, directions or orders of the Registrar fall within the jurisdiction of the Federal Court of Australia, the Federal Circuit and Family Court of Australia, and the High Court. Other prescribed courts, such as the Supreme Courts of a State, of the Australian Capital Territory, of the Northern Territory, and of Norfolk Island have cross-vested jurisdiction over actions dealing with the infringement of a trade mark, or applications for relief from unjustified threats.
Registered and unregistered rights
In Australia, like in the UK, legal protection is provided to registered trade marks, as well as unregistered rights under the common law tort of “passing off” and under the Competition and Consumer Act 2010 (Cth). As such, Australia technically operates as a first-to-use jurisdiction. There are, however, many reasons why a registered trade mark is preferable to relying on unregistered rights.
Although unregistered rights can be enforced, the owner of such rights will need to demonstrate the presence of three vital elements a) a misrepresentation on the part of the offending party, b) that the owner of brand being enforced possesses a reputation in that brand in the same geographical area and an ongoing market presence (this can be particularly difficult for international companies), and c) damage to that reputation i.e. a tarnishment of the brand, or that damage to reputation is likely to occur, due to the passing off.
On the other hand, the registration of a trade mark provides the owner with an exclusive right. For registry proceedings, the subsistence of the trade mark does not have to be proven – evidence of the existence of a registration is sufficient - and it can be enforced against third party uses which are likely to cause confusion or take advantage of the mark’s reputation even if there has been no misrepresentation on the part of the offender.
A registered trade mark can also provide protection before it is actually used in commerce. If the trade mark has been registered for more than three years, it may, however, be necessary to provide evidence of use and the registration could be vulnerable to cancellation on the grounds of non-use. The exception is for any marks filed before 24 February 2019 – for such applications, the trade mark needs to have been registered for at least 5 years before it becomes vulnerable to cancellation on grounds of non-use.
Notwithstanding third party attacks e.g. due to non-use, Australian trade marks can potentially “live” forever – they simply have to be renewed every 10 years as calculated from the filing date.
Furthermore, having a trade mark registration is a requirement to file a Notice of Objection with the Australian Border Force to seize infringing goods – although, in principle, copyright can also be relied upon.
Examination
Examination of trade mark applications is carried out by IP Australia. Examination is carried out in respect of both:
- absolute grounds - i.e. that the sign applied for is capable of functioning as a trade mark to distinguish the commercial origin of goods and/or services for which protection is sought from other undertakings, and ensuring that the other legislative requirements in Australia are met; and
- relative grounds – i.e. that the trade mark would not be liable to cause confusion with any earlier registered trade marks.
If absolute or relative grounds objections are raised, the applicant will be given 15 months from the date of the adverse report to address any problems with the application and to place the application in order for acceptance. Where the Australian trade mark practice differs from that of the UK and the EU practice is that the 15 month deadline is intended to give the applicant
Country in focus: Australia (cont'd)
sufficient time to set the application in good order for registration by filing a response, AND for the examiner to have sufficient time to consider the response. Therefore, the deadline is an acceptance deadline, not a response deadline. Extensions are available, if required, but must be requested separately.
If an objection is raised on either absolute or relative grounds, it can potentially be possible to overcome it by filing evidence of use demonstrating that the mark applied for is registrable and/or predates an earlier registration.
In scenarios involving third party rights, IP Australia can also accept evidence of honest concurrent use, prior continuous use, or written consent from the owner of the earlier trade mark. Furthermore, deferment can be requested when cited third party rights are either pending applications, potentially subject to removal (e.g. due to non-renewal or a pending court action), or if the applicant intends to demonstrate honest concurrent or prior use of their trade mark.
Publication and oppositions
Once the trade mark application is accepted by IP Australia, it will be published for opposition purposes in the Australian Official Journal of Trade Marks. If a party intends to oppose an application, they must file an opposition within two months of the date of publication. A Notice of Intention to Oppose has to be filed and the relevant opposition fee has to be paid (currently AUD 250 or roughly £140). Within one month of filing the Notice of Intention to Oppose, a Statement of Grounds and Particulars must be filed to complete the Notice of Opposition.
If the Statement of Grounds and Particulars is not filed, the application will proceed to registration.
In certain exceptional circumstances, an extension to file a Notice of Intention to Oppose or the Statement of Grounds and Particulars can be obtained.
If a trade mark is opposed, a Notice of Intention to Defend has to be filed by the applicant within one month of being served with the Statement of Grounds and Particulars. If a Notice of Intention to Defend is filed, the parties to the opposition will be given the opportunity to file Evidence in Support of their respective positions.
An opposition can be temporarily suspended, if both parties agree to a cooling-off period of six months. The cooling-off period can be jointly extended for a further six months. Either party may unilaterally request the cooling-off period to be discontinued.
Registration
According to current information from IP Australia, it will take at least 7 months from application to registration, provided that no objections are raised. The overall process can take closer to 8.5 months – with about 6 months before acceptance, a two-month opposition period, and approximately two weeks to issue the certificate of registration.
Once the trade mark has successfully completed the registration process, IP Australia will issue a registration certificate.
Country in focus: Australia (cont'd)
Additional types of marks
In addition to word and figurative trade marks, IP Australia allows for the registration of various other types of trade marks.
Special rules exist for protecting certification marks (which confirm certain qualities of products sold), trade marks for plants, and trade marks for wine.
Certification trade marks, in particular, could be of interest to Scottish food and drink manufacturers in order to ensure the quality of goods.
Furthermore, IP Australia allows for the protection of Geographical Indications via the certification trade mark system. An application for a certification mark needs to be supported by a set of rules that clearly set out the standards governing the goods and, or, services in question. The rules can specify the quality, content, or production methods of the goods in question. In the case of GIs, the rules will relate to at least the geographical origin of the goods and may contain additional quality or processing standards.
Like standard trade marks, certification marks need to be renewed every ten years. Certification marks can be enforced similarly to standard trade marks and the Australian Trade Marks Act provides for civil remedies against infringements, including injunctions or damages. Furthermore, GIs registered as certification marks can also be notified to the Australian Broder Force for unauthorised and non-compliant products to be seized.
Like the UK, Australia allows for the registration of series trade marks which overlap in their distinctive elements but differ only in negligible non-distinctive elements. Specific requirements exist to ensure a series is registrable.
Defensive registrations
Unlike many other jurisdictions (including the UK and the EU), Australian trade mark law allows for the registration of “defensive trade marks”. A defensive trade mark registration is available for “well-known” or “famous” trade marks and offers a wide scope of protection. Unlike standard trade marks, defensive trade marks can be registered without requiring any intention from the applicant to use the mark for the goods or services specified in the application. Even if the defensive registration is never used, it will not become vulnerable to cancellation for non-use.
Defensive registrations aid owners of well-known marks in the enforcement and licensing of their trade marks in Australia. Furthermore, due to relative grounds examination, defensive registrations will be cited against conflicting trade mark applications.
Given the broad rights granted by the defensive registration, IP Australia needs to ensure, prior to granting that a) the mark is well-known or famous in Australia, and b) that it has been used to such an extent on the previously registered goods that its use in relation to the broader goods/services specified in the defensive application would be likely to be taken as indicating a connection with the owner of the defensive registration.
Country in focus: Australia (cont'd)
Although famous trade marks are afforded an enhanced level of protection under the Paris Convention, defensive registrations can be a powerful asset for owners of well-known brands. Compared to standard trade marks, or relying on an enhanced level of protection via the Paris Convention, defensive registrations provide a comparatively cheaper and more readily available means of protection.
No power of attorney requirement
A power of attorney is not required by IP Australia for the filing of intellectual property rights. IP Australia works under the assumption that the applicant and attorney filing the application have the necessary authorisation to do so.
Cancellations of trade marks
There are multiple procedures in Australia for post-registration actions involving the scope and validity of trade marks:
Amendment
Generally, an amendment to a trade mark application or registration may be requested by the owner (or the owner’s attorneys).
These can include a voluntary amendment to the goods and/or services specifications to limit or delete certain terms. This may be requested for a number of reasons, including to overcome objections during examination, to avoid actions for removal for non-use after registration, as part of a co-existence agreement, or to reduce the official fees for maintaining a trade mark registration.
Cancellation
Cancellation of a registration may be requested by the owner. This has the effect of removing the trade mark registration from the Register.
Revocation
Acceptance of an application may be revoked if information is received after acceptance that satisfies the Registrar that the trade mark should not have been accepted. If an application is revoked, the application re-enters the examination stage and the owner is typically granted a free 15-month extension of time within which to overcome the objection(s).
Removal
Removal may be requested by a third party on the basis that the registration has not be used. The request may be for some, or all, of the goods and services covered by the registration.
The Advertising Standards Authority’s beef: plant-based burger ads
In 2021 Tesco released a series of ads to promote its plant-based burger with the following statements:
- “a little swap can make a difference to the planet”
- “even better for the planet”
- “a little swap is […] even better for the planet”
A complaint was made to the Advertising Standards Authority (‘ASA’), the UK’s advertising regulator who ensures that all advertisements comply with a set of Advertising Codes. The ASA’s remit includes conventional advertising on radio, TV, cinema, posters and billboards but also any advertisements on the internet, i.e. on companies own websites as well as commercial emails and text messages.
The meat of the matter was that some of Tesco’s plant-based products, particularly processed ones, may contain ingredients sourced globally, or produced and transported in ways that had a negative environmental impact. This impact could be the same as or worse than meat products. It was alleged that Tesco’s statements could be misleading without evidence that shows that their plant-based burger is more sustainable than a meat burger.
In response, Tesco alleged that they were making general statements in their ads that plant-based diets could have environmental benefits for the planet, not that their plant-based burger is more sustainable than a meat burger.
The ASA banned Tesco’s ads. They found that consumers would understand them to mean that switching to Tesco’s plant-based burger would make a positive environmental impact compared to a meat equivalent. Tesco could not provide any evidence in relation to the full lifecycle of the product. The ads were therefore found to be misleading.
This isn’t the first time that the ASA has banned misleading plant-based burger ads. In 2020, the ASA banned three of Burger King’s advertisements promoting its “Rebel Whopper” burger.
Burger King had promoted the product on its social media platforms as “100% whopper. No beef”. The plant-based burger was supplied by ‘The Vegetarian Butcher’ and was 100% plant-based. The ads included a visual of the product with The Vegetarian Butcher’s logo or reference to The Vegetarian Butcher.
Earlier this year, Burger King’s plant-based nuggets received the stamp of approval from the Vegan Society. This follows on from the approval of, among other products, the ‘Vegan Bean Burger’ and ‘Katsu Vegan Royale Sandwich’. Burger King has permission to use the trusted “Vegan Society” certification trade mark on these products. Gaining the Vegan Society’s endorsement will help to reassure vegan and vegetarian customers that Burger King has met a stringent set of criteria to make the plant-based nuggets and burgers suitable for consumption.
For example, aside from the plant based nuggets and burgers containing no animal ingredients, Burger King would have been required, among other things, to demonstrate that it strives diligently to minimize cross-contamination from animal substances as far as reasonably practicable and possible.
Burger King has set out its aims of a 50% meat-free menu by 2030. Backing from the Vegan Society demonstrates the fast-food giant’s attempt to regain trust among vegan and vegetarian customers following the negative publicity surrounding Burger King’s plant-based ads.
All advertisements in the UK are required to comply with the Advertising Codes. The central principle is that all marketing communications should be legal, decent, honest and truthful. Marks & Clerk LLP has expertise in advising businesses on these Codes and has successfully defended and filed complaints on behalf of their clients.
Royal Warrants and Scottish F&D products
What are Royal Warrants?
A “Royal Warrant of Appointment” is an official document which allows a business to display the coat of arms of the Royal Household, “Royal Arms”, on its products or in relation to services. It is granted in recognition for an ongoing supply to the Royal Household (the immediate family, principal courtiers and servants of the monarch). It is a way of showing they are a “preferred” product or service. The Warrant is granted to a named individual within a company, known as the “Grantee”.
There are currently approximately 850 Royal Warrants, held by around 750 holders. They represent a large variety of industry, ranging from dry cleaners to fishmongers, and from agricultural machinery to computer software.
Their origin
Royal Warrants date back to medieval times and were preceded by Royal Charters, the first of which was granted by Henry II in 1155 to the Weavers’ Company. In 1684, royal purveyors included a Haberdasher of Hats, a Watchmaker in Reversion, an Operator for the Teeth and a Goffe-Club Maker. In 1789, they had a Pin Maker, a Mole Taker, a Card Maker and a Rat Catcher.
The Royal Arms started being displayed on the premises and stationery of those to whom Royal Warrants were granted during 18th century.
In 1840, the Royal Warrant Holders Association was formed to assist with the administration of Warrants and to advise Royal Warrant holders.
Who grants them?
The Monarch decides who may grant Royal Warrants, called the “Grantors”. Royal Warrants were, until the death of Queen Elizabeth II, granted in the name of HM The Queen and (the former) HRH The Prince of Wales. HRH The Duke of Edinburgh was also formally a Grantor of Warrants.
During her reign, Elizabeth II granted a total of 686 Royal Warrants. By comparison, almost 2,000 Royal Warrants were granted during the reign of Queen Victoria. Royal Warrants granted by “HM The Queen” became void on the Queen’s death. However, holders can continue to use the Royal Arms in connection with their business for up to 2 years. The Royal Household reviews Royal Warrant Grants on a change of sovereign, and it is expected that current holders of Royal Warrants will have to reapply.
There is the question of whether Warrants granted in the name of the former “HRH The Prince of Wales”, now King Charles III, will continue. If they do, the Grantees will likely be required to update their branding to reflect the Grantor’s new title “HM The King”.
In practice, the Lord Chamberlain formally grants Royal Warrants as head of the Royal Household.
Royal warrant by appointment to HM The Queen
Royal warrant by appointment to HRH The Prince of Wales
Royal warrant by appointment to HRH The Duke of Edinburgh
Royal Warrants (cont'd)
Their duration
Royal Warrants are initially granted for up to 5 years and are reviewed by the Royal Household Warrants Committee in the year before they are due to expire. Warrants may not be renewed if the quality or supply for the product or service is insufficient.
A Warrant is automatically reviewed if the Grantee dies or leaves the business, or if the company goes bankrupt or is sold. A Royal Warrant can be cancelled at any time if the holder:
- Conducts itself in a way likely to bring the Royal Household into disrepute;
- Breaches (or is suspected to have breached) the rules on using the Royal Warrant; or
- No longer supplies a product or service of a quality sufficient to justify continuation.
Around 20 to 40 Royal Warrants are cancelled each year. The holder is normally allowed up to 12 months to alter their packaging, stationery, advertising, buildings and vehicles. A similar amount of new Warrants are granted each year.
Rights and correct use
When a company displays the Royal Arms in relation to their business, the Coat of Arms must always be accompanied by a “Legend”.
This Legend provides the details of which Member of the Royal Family has granted the Royal Warrant, the company name, the nature of the goods or services provided and the head office address of the company.
The Lord Chamberlain's Rules govern how the Royal Warrant may be displayed on a company's products, stationery, advertisements and other printed material, in their premises and on delivery vehicles.
According to the Rules, the grant gives the Warrant Holder nothing more than “a right to display the Royal Arms and the associated Legend(s) purely as an indication and mark of recognition that the Warrant Holder is a regular supplier of goods or services to the relevant Grantor”.
They are not entitled to claim or imply any exclusivity of supply; nor indicate that there is any form of Royal patronage or authorisation when there is not.
The Holders are not entitled to allow any third party, including related / affiliated companies (whether by way of a franchise, joint venture, licence agreement or any other arrangement), to use the Royal Arms unless use by such third party is expressly approved in advance by the Lord Chamberlain’s Office.
Advance written approval will also need to be sought in order to display the Royal Arms on good or services produced in collaboration with a third party (i.e. whenever another entity's name is involved).
Royal Warrants (cont'd)
Relationship with trade marks
Whilst Royal Warrants are used alongside trade marks, they are completely different and do not have the same function. Trade marks indicate commercial origin whereas the use of the Royal Arms indicate an approval, or “preference” from the Royal Household.
The Rules state that the Royal Arms should not in any way be used as a trade or service mark (i.e. a logo device, whether accompanied by words or not), or as part of such a mark. They should not be used in any way as, or as part of, a brand device that indicates, or is likely to lead persons to think on seeing the mark, that the goods or services being produced / offered under such brand device in some way originate from (or are connected with) the Royal Household or a member of the Royal Family.
The use and display of the Royal Arms as a Royal Warrant must be separate from, and not form part of, the Warrant Holder's brand(s).
How to apply
To apply for a Royal Warrant, a business must have supplied products or services on a regular basis to the Royal Household of the Grantor for not less than 5 out of the 7 past years. Royal Warrants are not granted for professional services – e.g. bankers, brokers or agents, solicitors, employment agencies, government agencies – or to newspapers, magazines, journals, periodicals or similar publications.
Amongst other things, applicants are required to show that they have an appropriate environmental and sustainability policy and action plan. It is not essential for the company to be British owned or UK-based, hence, around 10 Champagne houses hold Royal Warrants.
Scottish Grantees
The rules are slightly different for Warrant Holders incorporated in Scotland, or whose principal place of business is Scotland.
They must display the Scottish version of the Royal Arms, even where goods or services are sold or provided outside of Scotland.
Royal warrant by appointment to HM The Queen (Scotland)
Whilst there is no Scottish version of The Prince of Wales's Badge, the Legend beneath should read 'By Appointment to HRH The Prince of Wales, Duke of Rothesay…etc'.
According to the Royal Warrant Holders Association’s Members’ Directory, there are currently seventeen Scotland-based holders of Royal Grants:
Bread and Biscuits
- Byron Bakery (Aberdeen)
- Fisher & Donaldson (Fife)
- Walker’s Shortbread (Aberlour On Spey)
Scotch Whisky
- Laphroaig Distillery (Isle of Islay)
- Matthew Gloag & Son (Glasgow)
- Royal Lochnagar (Cairngorm)
Fruit and Vegetables
- Deeside Deli (Ballater)
- Mark Murphy (Edinburgh)
Meat
- Donald Russell (Inverurie)
- H.M. Sheridan (Ballater)
- Wark Farm (Alford)
General Merchant
- George Strachan (Aboyne)
Fish & Shellfish
- Inverawe Smokehouses (Argyll)
- John Ross Jr (Aberdeen)
- Keltic Seafare (Dingwall)
- Mowi (Rosyth)
Cheese
- Valvona & Crolla (Edinburgh)
Q&A with Matthew Walker
Co-Founder of Savora Drinks
Hi Matthew, thanks for taking the time to tell us more about Savora today. Please can you start by telling us a bit about the brand for some of our readers who are yet to hear about you?
Hi, no worries at all, I'm really excited to be part of this. Savora Drinks is an Edinburgh based start-up and we make premium mixers crafted specifically for pairing with tequila - think Gin & Tonic but instead Tequila & Savora. I started the business with my Co-Founder Dani because we realised that all other spirits had their set mixers. You've got Rum and Coke, and Gin and Tonic, but what about tequila? That's where Savora comes in.
Since launching in April 2021 we've been named as Scotland's Food and Drink Start-up of the Year, Scotland's Confectionary & Soft Drink Product of the Year for our Zesty Lime and Sweet Agave flavour and a finalist for the Great British Food Awards mixer category for our Vibrant Orange & Fiery Ginger flavour.
Part of your purpose is to help drinkers re-write their tequila story – can you explain what you mean by this?
Currently tequila has a harsh reputation as a shot to be slammed back at the end of the night. We want to change people’s perception around tequila from slamming back those shots to enjoying it as a premium long serve drink to sip instead. If you bought the cheapest gin and only ever had shots of it, I'm sure most people would say they don't like gin, but with a good quality tonic water it's a different experience. Tequila is exactly the same - pick a good tequila (hint: look for 100% agave on the label), serve over ice with your preferred mixer and you can have a very enjoyable tequila long serve experience. So it's all about looking at tequila serves in a different way.
Still on the subject of your purpose, how is this reflected in your unusual name?
Savora was created by combining two words: Savour & Aurora.
We want customers to sip and savour their tequila drinks as a long serve, whilst also creating unique experiences like no other, inspired by the Aurora Borealis or more commonly known as the Northern Lights. Savora also naturally has quite a Spanish feel to it, which works well for making mixers to pair with tequila!
At Marks & Clerk, we are fortunate to work with some of the most innovative drinks brands in Scotland, nearly all of whom have an increased focus on sustainability. How important is the impact of our consumption habits to you?
For me personally, doing my best for the planet is really important. I wholeheartedly believe that 21st century businesses should only exist if they can have a net positive impact, so we work hard to take steps towards a more sustainable future - ensuring responsible farming of ingredients, offsetting our carbon emissions, repurposing our waste where possible. Sustainability is a journey and no company can be expected to have all the answers from day one, but if sustainability isn't high on the agenda, I firmly believe you shouldn't be in business.
We have also noticed more products emerging from Scotland that wouldn’t traditionally be associated with the country. The gin market is also booming for example. How are you hoping to help consumers associate products around tequila, with Scotland?
Tequila consumption is already on the rise in Scotland. Hot off its success in the US, premium 100% agave tequila is now finding its place in the UK market and people are seeing the potential in this beautiful spirit. For us, it’s all about getting our products into people's hands for the first time. Once people try Tequila & Savora the response is overwhelmingly positive, we just have to get them to try it in the first place! As a start-up it’s all about doing this in the most economical way - attending local farmers’ markets, giving out samples and generally just getting involved in events in and around the Scotland bar scene. Word spreads fast and our awards are certainly starting to draw a crowd.
Q&A (cont'd)
In the US, tequila and mezcal was the second-fastest growing spirits segment in 2021, trailing only pre-mixed cocktails – what are you working on with Savora to help create a similar success story this side of the pond? Are there any new flavours we can look forward to?
The US is probably 5-10 years ahead of the UK in terms of tequila, mainly because of its proximity to Mexico (the home of tequila) and therefore the ease of accessing the best quality tequila. Now that we're seeing this enter the UK, there are a whole host of spirit brands singing the praise of tequila. But as we know from successes in the past with the likes of premium tonic waters, spirits in the UK are most commonly consumed with a mixer and Savora has first mover advantage and a real chance of becoming the recognised mixer for pairing with tequila.
Since the success of launching Zesty Lime & Sweet Agave in April 2021 we doubled down with the launch of Vibrant Orange & Fiery Ginger in January 2022. Now, after a busy season of events we've got a good idea of what's coming next to the range. Without giving too much away, the two best sellers at our last event were a watermelon margarita and a chilli margarita, we may just have the perfect combination of the two coming to market in early 2023.
As we close in on funding to take our business to the next level, we may just be bringing out some pre-mixed cocktails of our own, combining the two leading trends in the US. So watch this space, lots of exciting developments going on behind the scenes at the moment!
You clearly distinguish yourself as a premium mixer – why did you choose to take this approach as opposed to mass market?
I think it’s really important to find a niche and make the perfect product for that market.
Consumption is moving towards 'less but better', so premium made sense to us and to be honest, I didn't like the thought of an ingredients list where I couldn't understand the ingredients, so I just stuck to what I knew - fresh juices and agave syrup!
Agave is the sole ingredient of premium tequila which
makes Savora the perfect pairing and also means we don't need to add sugar to make our products taste great. Our juices are freshly squeezed in Glasgow and bottled within 48 hours, you can't get much fresher than that.
And finally, a question we’ve been asking other friends of Scran & sIPs™ – as well as each other: What would be your festive tipple of choice from your own collection?
Given the season, my current go-to would be our festive Halloween cocktail. We use 50ml of 100% Agave Reposado Tequila, 200ml of our Orange and Ginger Savora Mixer, and a trickle of grenadine down the sides for that fake blood effect along with some ghoulie Halloween sweets as a garnish. Experimenting with a whole host of tequila cocktails is certainly one of the perks of the job!
Regulation and trade mark protection for CBD novel foods: has it gone to pot?
The BBC’s ‘Good Food’ publication reported earlier this year that Cannabidiol (CBD) is becoming increasingly popular in the health world. It is sourced from the cannabis plant but derived from the non-intoxicating hemp plant, and some believe it may have potential health and wellness benefits. The BBC’s ‘Good Food’ publication reports that some supporters of CBD oil, which can by consumed as a food supplement, believe it may help refractory epilepsy, chronic pain, depression, anxiety and acne.
In January 2019, Cannabidiol or CBD was confirmed as a novel food product by the UK Food Standards Agency (‘FSA’). The FSA have a set of regulations for novel food products. The regulations apply to England, Wales and Northern Ireland. The rules specify that where the novel food product does not have a history of consumption before May 1997, the products should be evaluated and authorised before they are put on the market.
Despite the volume of CBD-containing novel food products on the market in England, Wales and Northern Ireland, none have been authorised for sale so far. Products which were on the market before the FSA-imposed deadline of 13 February 2020 may remain on sale, provided they have a valid novel food application for authorisation and have met certain criteria. Products that were not on sale before 13 February 2020, cannot legally be put on sale now until they receive authorisation. The first authorisations are currently expected to be granted in 2023. Applications currently pending the FSA’s consideration include CBD-containing beer, spirits, coffee, carbonated beverages and peanut butter.
So where does this leave brands hoping to secure trade mark protection for their CBD based food and drink products?
To date, the practice of the UK Trade Mark Registry has been to accept trade mark applications for food and drink products with the words ‘cannabidiol’, ‘cannabigerol’ or ‘CBD oil’ in the specification in classes 29, 30, 31, 32 and 33. However, brands seeking to expand their trade mark protection into other territories may face additional requirements.
In the US, trade mark applications covering products containing CBD derived from marijuana will be refused registration, since these goods are not legal under federal law (even though they are legal in certain States).
Regulation for CBD (cont'd)
For products containing CBD derived from hemp, such applications may potentially be lawful depending on, among other things, the percentage of the tetrahydrocannabinol (THC) – the substance that produces the ‘high’ associated with CBD. Another factor is whether use in food and drink has been approved by the U.S. Food and Drug Administration.
In contrast, other territories, such as Thailand, will refuse trade mark applications covering signs containing a cannabis leaf, or any reference to CBD, on the ground that the mark is contrary to public order, morality or public policy.
It remains to be seen whether the UK Trade Mark Registry will adopt stricter examination practices for CBD-containing food and drink products going forward, and whether future trade mark applications may require authorisation of the product by the UK’s FSA as a prerequisite to acceptance. For those who already hold registered rights for CBD-based products, there will also be potential non-use concerns if a product without FSA authorisation has to be withdrawn from the market or awaits authorisation before launch.
Q&A with Richard Wardrop
Head of Marketing at Vault City
Hi Richard, thanks for taking the time to give us an insight into Vault City and congratulations on winning Brewing Product of the Year at the Scotland Food & Drink Awards 2022, in September. To start, please can you tell us a bit about the brand and the history of Vault City?
Thank you! We were absolutely delighted with the award. We’re Vault City, an independent craft brewery and Scotland’s largest sour beer producer. We make heavily fruited, modern sour beers in (sometimes) sunny Portobello, Edinburgh. Since 2018, we’ve focused on relentless exploration when it comes to brewing. Our house culture and mixed fermentation base pair perfectly with real fruit ingredients, and we use literally tonnes of the stuff in our recipes to help push the boundaries of what people would typically expect from a beer.
What started in the basement of Steve, our founder’s Edinburgh flat, has quickly grown to a craft brewery producing well over 300,000 litres of beer a year with two taprooms and a smokehouse in Portobello. We certainly don’t take ourselves too seriously, but we are serious about beer. Every two weeks we release new beers focusing on sessions, mid, and high vault-age sours. For us, that means bright colours, bold new flavours, and a production team that aren’t afraid of a challenge.
You were up against some tough competition for the award (from household names such as Aldi and one of my favourite local taprooms, Bellfield Brewery). Please tell us a bit about your winning product, the Bruichladdich X Brewgooder Barrel Aged Whisky Sour Beer, and what makes it special?
It’s amazing to stand shoulder to shoulder with some seriously talented and established breweries like Bellfield and Drygate. To come home with the award was absolutely unreal, and a true testament to our production team’s hard work.
Together with Islay’s masterful distillers, Bruichladdich, and social enterprise, Brewgooder, we created an 11% ABV wild honey and lemon balm infused sour beer, barrel aged in Bruichladdich single malt barrels for nine months.
Bruichladdich casks had previously never left Islay to be used by a brewery, making the sweet oak and barley flavour they’ve imparted on the beer incredibly special. Finally, wild lemon balm was added, hand-picked by Bruichladdich’s resident forager, delivering a perfect lip-puckering tartness. Each bottle unlocks 1000x its volume in clean water projects globally, creating one of the most impactful beers ever brewed for a good cause.
Vault City produce some interesting – super exciting - flavours of sour beer such as blackcurrant choc chip waffle, pineapple habanero and dark fruits cookie dough. Where does the brewery get inspiration for the flavours?
We take inspiration from lots of different places, but our main source for recipe generation comes from our team. Each quarter we’ll have a team meeting, sample some of the highest rated beers from Untappd, check in with our Vault City communities on social for their feedback and together come up with a release schedule for the months ahead. Sometimes people’s ideas come from flavours they think would work well together, and we’ve even created beers based on recipes from MasterChef.
The Scottish craft beer industry seems to be booming with over 100 breweries operating nationwide. How do you tackle this for local and international markets?
We’re very lucky to have such a niche product. People laughed when Steve started a dedicated sour beer brewery but it’s a style that’s grown massively in popularity over the last 4 years, and not just in the UK. Our fruit forward sweet/tart beers are very accessible and in many ways become a gateway for people getting into craft beer, which helps us cut through the noise of an already saturated market.
Our beers are especially popular in places like Singapore where the hot weather calls for refreshing fruity drinks.
Q&A (cont'd)
Are there any special features that make Scottish craft beer different from craft beer produced outside of Scotland?
Scotland has a great craft beer community, with fantastic breweries doing amazing things, but I guess the same could be said for many other countries. Where Scotland has a great advantage in my opinion, is our sheer number of distilleries, which gives ample opportunity for barrel aged beers and collaborations like our Bruichladdich/Brewgooder partnership.
Vault City have distributors throughout Europe and some in Asia. What are the main challenges and benefits to setting up a reliable distribution network?
Covid has presented significant challenges, with some countries still facing varying levels of lockdown. Brexit also meant shifting our export strategy when during times of uncertainty we began looking further afield for places to sell our beer. One huge benefit we have is that our beer is suitable for ambient storage. It doesn’t typically have hops so we don’t need to refrigerate the beer when exporting it, which has opened up a lot of export markets. It also doesn’t fade in flavour the way hoppy beers often can, so our beer has a long shelf life which is another thing that makes Vault City ideal for export markets.
And which flavours appeal in different geographies?
Big fruity flavours go down a treat in most countries, but especially so in Asian countries where the weather is hot
and humid. We find that the flavours appeal more seasonally than geographically. Our pastry and dessert sours are great in colder months, and our straight up fruit sours are extremely popular during summer.
Any exciting plans for the future for Vault City that you can share with us?
We’ve just added 8 new tanks and a brand new canning line to the brewery so that’s been extremely exciting! We also opened our new taproom & smokehouse back in July so we’ll be hosting more events there. 2023 for us will be all about export, which hopefully means more beer festivals and international collaborations!
And finally, a question we’ve been asking other friends of Scran & sIPs™ – as well as each other: What would be your festive tipple of choice from your own collection?
From our current releases, I’d have to say Double Cinnamon Cherry Caramel Biscuit, but we also have a big chocolatey stout coming this Christmas which will be the perfect fireside tipple for the festive season!
Registering 3D shape marks: how is it possible to be ‘ABSOLUT-ly’ distinctive?
Absolut Vodka was first launched in New York in 1979. The brand takes sustainable packaging seriously and claim that today every Absolut Vodka bottle is made with more than 40% recycled glass.
The brand uses a production philosophy called ‘one source’ whereby every aspect of production takes place in and around the small village of Åhus, Sweden. All ingredients for Absolut Vodka are sourced from Southern Sweden; every drop of water and every seed of wheat comes from one water source, one village and one community.
Absolut’s one source story informs consumers that the entire manufacturing process is controlled from seed to bottle, tracing the product that is in the consumer’s hand all the way back to Absolut’s farmers. But what happens when Absolut seeks to obtain IP protection for the shape of its bottle, alleging that the distinctive bottle alone enables consumers to trace the product back to Absolut?
Registering 3D shapes as trade marks can be difficult. Registration depends on a number of factors, including whether the mark in question can be sufficiently differentiated from other shapes present in the relevant market.
The EU Intellectual Property Office (EUIPO) Fifth Board of Appeal (BOA) recently considered these factors in a decision concerning The Absolut Company Aktiebolag’s (Absolut) application to register the 3D shape of a bottle for alcoholic beverages, in particular vodka.
Background
In 2019, Absolut applied to register the following shape of a vodka bottle as a 3D mark in Class 33 for vodka.
The EUIPO Examiner refused the application under Article 7(1)(b) of the EU Trade Mark Regulation, finding that the relevant consumers would perceive the sign applied for (as a whole) as non-distinctive and not as the trade mark of a particular undertaking.
The Examiner found that the elements of the bottle were not outstanding or eye-catching so as to create an overall impression which would significantly depart from the customs and norms of the market.
Absolut appealed, arguing that its mark was highly distinctive given the combination of various fanciful features that, when viewed and judged together, were more than the mere sum of individual constituent parts.
BOA Decision
In reaching its decision, the board considered that the relevant public would be EU consumers, who would perceive the mark applied for with a low to average level of attention.
3D shape marks (cont'd)
Absolut argued that the distinctiveness of their mark should be assessed by reference to the vodka sector. However, the board considered that the mark consists of the 3D shape of the packaging of the goods in question. Vodka, because of its very nature, must be packaged in order to be marketed, so that the packaging chosen imposes its shape on the goods.
In light of this, the board considered that the relevant norm or customs may be those which apply in the sector of the packaging of goods which are of the same type and intended for the same consumers. In this case, the board found the mark should be assessed by reference to the broader alcoholic beverages sector.
The discussion in the decision focused on six features in particular:
1 - Closure of the bottle – Absolut argued that the unusual copper colour stood out in the relevant market environment;
2 - Rectangular body structure including a short neck, conical bottle shoulder – Absolut argued that the unusual ‘square shape’ of the bottom of the bottle departed from the norms and customs in the relevant trade (bottles in the vodka sector are generally cylindrical or oval and do not contain a square-shaped bottom);
3 - An innovative and exceptional maze-like surface structure applied to the bottle’s sides, which Absolut said was nowhere to be seen on the entire market;
4 - The design of the back of the bottle being entirely ‘copper’ in colour – this consisted of two rectangular shapes that extend from the shoulder of the bottle to the bottom part, occupying almost the entire back part of the bottle. Absolut stated that those rectangular shapes were visible from all sides and would not go unnoticed by consumers.
5 - The front label, which was white colour and showed different shades or nuances ranging from copper to brown or gold with some ornamental patterns; and
6 - The wrapper that appeared on the neck of the bottle, which also showed different shades or nuances ranging from copper to brown or gold.
3D shape marks (cont'd)
In their overall assessment, the BOA considered that the first three elements did not depart significantly from the available norms and customs on the market; however, elements 4, 5 and 6 would not go unnoticed by consumers. Those elements have a strong impact on the perception of the whole shape of the bottle. As a result, consumers would be in a position to recall especially the design of the back of the bottle.
The colour scheme would not be perceived as a purely aesthetic ‘decoration’ of the goods: instead, due to its size and predominance, the colour scheme would be eye-catching and striking.
Despite the consideration that a single colour in itself is not distinctive, the fact that shades or nuances ranging from copper to brown or gold that covered a significant part of the shape of the bottle, precluded a finding of non-distinctiveness.
On this basis, the board concluded that the shape of the bottle departed sufficiently from those available on the relevant market so that the sign applied for was distinctive enough to be a trade mark.
Takeaway points
The decision confirms the test that, only a shape mark which departs significantly from the norm or customs of the sector fulfils the essential function of a trade mark and can be registered.
In this case, the fact that shades ranging from copper to brown or gold covered a significant portion of the bottle’s design was sufficient to preclude a finding of non-distinctiveness.
This ruling suggests that prospective shape marks ought to incorporate more than one colour, to be more readily seen as eye-catching and striking, and not too complex, in order to be remembered by consumers.
It also reinforces the fact that the shape applied for should depart sufficiently from those available on the relevant market in order to avoid being found devoid of any distinctive character.
Q&A with Alan Milne
Co-Founder of City of Aberdeen Distillery
Welcome to Scran & sIPs™, thank you for taking the time to participate. To kick things off, please can you tell us a bit about how you and Dan came to start the City of Aberdeen Distillery?
Dan and I had been brewing beer and wine (respectively) for a number of years. In 2009 we heard about the guys at Sipsmith down in London and their battle to get a licence for a small 300 litre still. Up until that point stills under 1,800 litres in size had been banned which has been the case since the 1700s and we were inspired by their story and their gin. We realised that we already knew a lot about botanicals as we were using them in our alcoholic drinks already. That’s how we made the switch. It took a couple of years for everything to come together into a viable business and the rest, as they say, is history.
Arguably, when you think of gin, Aberdeen isn’t the first place that comes to mind. How have you gone about shifting consumers’ mind-sets?
Curiously, Aberdeen was one of the main export ports for Juniper berries which were used by the Dutch to make jenever – an ancestor of modern gin.
The North East of Scotland is well renowned for its food and drink.
Perhaps Aberdeen & the shire requires more marketing – for example, our Scottish Bramble Gin is made with locally farmed brambles (known as blackberries further south) and a lot of soft fruit is grown in the region. If you visit Aberdeen by road or rail, you’ll see polytunnels, as we have the perfect climate for growing soft fruit. You’ll often find soft fruit in the supermarket which is grown in the region around Aberdeen.
The region is well known for its whisky, shortbread, and now Brewdog! – who are based just down the road from us – and we participate in festivals that promote the region's great food and drink. There are lots of whisky distilleries just outside of the city, and we also now have eco-friendly wineries and breweries in the city. In Huntly you can find the famous Scottish Dean's Shortbread and Mackie's of Scotland are also based in Aberdeenshire. The list goes on... Aberdeen is the gateway of the whisky country but also to a whole manner of other great food and drink companies.
You have said that you are not just proud to be based in Aberdeen but “to be of Aberdeen” – can you tell us more about what you mean by this?
This is about authentic and true authentic. Many products claim to be authentic while actually being quite the opposite.
Q&A (cont'd)
It would have been easy to setup a pastiche of a distillery and just buy in our gin. Our gin is distilled right here in the city by people who live and work right here in the city. Our distillery was constructed by local tradesmen and we have “gone local” everywhere we can. We also get involved in the local community so that Aberdeen can be proud to have her own distillery.
Consumers know that the claims made on gin bottles don’t always stand up to scrutiny, some gins simply brand their gin with association to a locale then make dubious claims in association with the region – for example, there are gins associated with Aberdeen that are actually distilled in Warrington or London i.e. are actually English Gins.
Visitors at the City of Aberdeen Distillery soon discover that we actually do what we say – all of our gins are actually distilled in a historic railway arch in Aberdeen. When people leave us they have a knowledge of what gin is and a new found understanding of what goes into the bottle.
Our gin really is of Aberdeen!
You have a unique offering compared to other UK based gin manufacturers in that you offer on-site distillation, a gin school, genuine small batch demi-
john sampling and sales – why was it so important to you to be able to give consumers such a broad offering from the outset?
We wanted our customers to be able to experience the full process: from gin being distilled (by us or them) to sampling and learning about different flavours, to taking that experience home and being able to re-create it there.
We felt that having this breadth would give us a unique customer offering that is unique in the area and rare across the country.
To have the distillation, activities and retail elements in the same building, this is something we absolutely knew we wanted, however we did struggle to get permission. We eventually attained permission and we are able to offer something really special to anyone who visits Aberdeen…all under one roof (or railway in this case).
Q&A (cont'd)
It’s great to be able to serve samples direct from the demi-johns to those visiting the region – it really helps to form a lasting memory of their time in Aberdeen, whether popping into the shop or attending one of our three experiences, the memory will then serve to encourage word of mouth and encourages more adventurers to the region.
Marks & Clerk is also a firm with a proud Scottish heritage so it’s really exciting to hear about other innovative organisations taking inspiration from their history. Looking ahead however, how do ensure you remain innovative and able to keep up with – or set - gin trends?
That’s a challenging question, if there was a single easy answer I think everyone would be doing it. The truth is that one has to keep up with what is going on in the market and anticipate what customers will be looking for next. That could be new flavours to new experiences.
In this ever changing climate, considering diversity is a way to provide both more choice to the consumer and ensure business resilience. For example, we have a range of 4 bottle sizes to choose from – go big on one flavour or sample a range with smaller bottles or even our tasting box. You can even build your own tasting box right down to the gins and the tissue colours.
During the pandemic we even launched an online prototype of the Gin School (design a gin online, it is then distilled and sent out) – MakeYourOwnGin.co.uk .
In 2023 we will be looking to develop this further as to
capture a wider UK audience, especially those currently considering a visit to the Silver City with the Golden Sands and might want to know where their gin was distilled.
Speaking of which – some of your flavours are quite unusual for gin, such as chamomile, how do you go about choosing these?
We experiment with a wide range of flavouring botanicals and combinations of botanicals in order to learn what works (and what doesn’t). Chamomile is an interesting botanical to choose as we found a definite regional preference for this flavour. We eventually realised that Brits see Chamomile in a very particular role (calming tea) so we ended up changing the name but not the flavour of this gin. Its popularity increased overnight!
We pack a punch of flavour in all of our gins and like to ensure we have a wide range of flavours to choose from. Both fruit gins (true gins at around 40%!) and London Dry. Even the London Dry gins have lots of flavour – our Lemon & Lime Gin is incredibly zesty and our Fresh Gin has flavours of fresh orange/grapefruit.
It’s also fresh because we make the gin every 2 weeks to ensure the best possible flavour (because…secret…gin doesn’t last!). From fruit gins to sweet floral, from fresh gins to chocolate gins, the possibilities of flavour, when it comes to gin, is most impressive and endless.
Q&A (cont'd)
The national and international gin market is flourishing and quite crowded, what steps are you taking to ensure your brand stands apart from the crowd?
The gin market has moved beyond the stage where a single new brand can expect to command a large part of the market without a correspondingly large marketing spend. We’re also past the stage where including a weird ingredient can sell bottles. It’s about quality and experience now.
On quality – apart from locally sourced / premium botanicals, we also use organic alcohol in all of our gins. This comes at twice the cost to us, but it makes for higher quality drinking experience – far smoother than most gins.
Story also plays a big part, when visiting the City of Aberdeen Distillery you’ll learn about the story of Aberdeen’s rich distilling heritage, where previous distilleries were around the city and interesting facts, for example, Aberdeen used to have the largest pot still in the country. You can learn about the history of gin – how was gin invented, who invented it, who makes the most London Dry Gin etc.
One chap who visited the distillery remembered when the arches were used to store and process fish. As a young lad he used to come into the arch to buy a bag of prawns in the morning.
We also encourage visitors to make their own gin at home, you’ll learn about the different ways to make gins and you can even take home the Scottish Gin Jar so you can macerate your own gin at home – this is a great way to explore gin flavours. You can make the gin and then gift your gin at Christmas … and it’s legal!
It’s been great to see you shortlisted by everyone from Trip Advisor to the Scottish Gin Awards, if you had to give any advice to budding entrepreneurs in the Scottish food and drink industry, what would you say?
Aim to do something focused well, rather than trying to do everything (not so well). Entrepreneurs tend not to have bags of cash lying around so while you have to make good use of your resources, you also have to be judicious on where you expend them.
And finally, as the nights are definitely getting colder - what would be your festive gin tipple of choice to recommend to our readers?
We’ve just released a Winter Warmer gin – it’s the festive season in a gin. Scottish Bramble Gin also has an embracing warmth with its use of peppers and cassia – for a warm long lasting finish. Close to Christmas we are going to be re-releasing our Mince Pie gin which is rich and sold out very quickly when we last released it.
As told to:
Name
Title
email@marks-clerk.com
Design Protection for Food and Drink products
Registered designs are an often over-looked but relatively inexpensive form of intellectual property. In this article, we provide an overview of what might be protectable by registered designs in the food and drink industry, as well as how such designs can be protected and why this may be useful.
What can be protected?
Registered designs effectively protect new and distinctive visual aspects (including shape, colour, texture and material) of a product.
They may protect three-dimensional products and packaging as well as two-dimensional images, such as labels, logos and other graphical features.
Some example registrations from the food and drinks industry can be seen in this article and include the following:
- The shape, colour, texture and material of a cake (RCD000024641-0001)
- The colour, graphics and two-dimensional design of a label (RCD001380067-0003)
- The shape of a bottle (D065717)
- The colour and two-dimensional design of a logo (RCD000687736-0002)
- The colour, graphics and two-dimensional layout of the front of a package (RCD000688858-0001)
- The shape of a chocolate bar (D081027)
How is registered design protection obtained?
An application for a registered design contains one or more views of the design for which protection is sought.
Black and white drawings are recommended to protect shapes alone, thereby covering any colour, texture or material variants. However, it can be useful to include such features, for example, when they contribute to the distinctiveness of the design.
In the UK and EU it is possible to include multiple related designs in a so-called multiple design application. This is a cost-effective option for covering design variants for minimal additional cost.
It is also possible to disclaim portions of the design illustrated so as to not limit the design protection with unnecessary details. Disclaimed features are usually depicted using broken lines such as those used to show the concave base of the bottle above (D065717).
Design protection (cont'd)
Although a brief description of the product can be included, it is not required in the UK or EU, as the protection is based solely on the submitted figures.
National (e.g. UK, US etc.), regional (e.g. EU) and international design protection can be applied for.
The international design system is based on the Hague Agreement for Industrial Designs and currently includes 77 member states. Whilst membership by key countries is gradually increasing with the likes of Japan, China and the USA joining in recent years, there is still a lack of harmonisation in what can be protected and how it should be shown in different jurisdictions and therefore the use of the international design system may not provide optimal protection in each designated state. As such we generally recommend filing national or regional applications in key markets.
As there is no substantive examination of registered design applications in the UK and EU, most applications proceed to registration within a matter of days or weeks, with minimal cost being incurred after filing the application.
Why should registered design protection be considered?
Owners of registered designs have an exclusive right to use the design and any design which does not produce a different overall impression on an informed user. Accordingly, they can be used to prevent others from using the same designs or similar designs.
Interestingly, the scope of protection of a registered design is not limited by the title of the product. Consequently, design protection for the chocolate bar depicted in D081027 would cover any product that has the same (or at least a very similar) shape as that depicted in the figures.
In the UK and EU, initial protection lasts for 5 years and this can be extended for further 5 year periods to provide a total of up to 25 years of protection.
Comparison with other rights
In some territories, such as the UK and EU, unregistered design protection may arise automatically (in a manner akin to copyright) when a new design is created. However, such unregistered design rights are generally short-lived and infringement requires proof that actual copying of the design (as opposed to independent conception) has taken place.
Registered designs may only protect the look of a product or graphic and not its function or method of manufacture, which may be protected by patents. Moreover, unlike for patents, a 12 month grace period is provided in the UK and EU (but not worldwide) in which the disclosure of a new design before a registered design application is filed, will not be immediately fatal to the validity of the resulting registered design.
Although there is an overlap with trade mark protection in terms of what can be protected by registered designs (e.g. for the case of logos and shape marks), one form of intellectual property should not be deemed to be a substitute for the other because there are significant differences in what is actually being protected in each case. For example, registered designs protect any products that look like the item depicted, whereas trade mark protection is generally limited by the classes of goods and services applied for.
In addition, a trade mark serves as a badge of origin giving consumers confidence as to who is responsible for the product in question. This leads to a higher bar for obtaining valid trade mark protection when compared to registered design protection and therefore it may be possible to protect a logo that is refused for trade mark protection with a registered design.
In light of the above, we recommend that registered design protection be considered as an additional IP right to supplement the rights afforded by trade mark and patent protection, particularly where visual aspects of a product or graphic are important to your business.
Meet the Team
Areas of expertise
As a Chartered Trade Mark Attorney I specialise in brand protection across all sectors, but my particular area of interest and expertise is in the spirits industry.
Client overview
Over the years I have worked with clients of all shapes and sizes, from multinational corporations to SMEs and start-ups.
Career highlights
I have recently re-joined Marks & Clerk after nearly five years as head of the Trade Mark department at a boutique IP firm. In that role I advised a small Scottish gin producer in a particularly complex, acrimonious trade mark opposition, in which I was delighted to secure a positive result. Calling my client to break the good news and hearing his very emotional and joyful response, was a real highlight which will certainly stay with me for the rest of my career.
Beyond that, it has been a pleasure to be welcomed so warmly back to M&C by colleagues and former clients alike. I first started out here in 2008 as a summer temp, returned as a trainee attorney in 2011, and now that I am back again as a Principal I am very pleased to bring my experience and fresh perspective to work with fantastic clients and an excellent team.
Favourite dish
I’m a big fan of shawarma.
Signature meal to cook at home
Slow cooked sausage casserole. It always goes down a treat with the family.
Top tipple
Gin and tonic. I’ve been lucky to work with some excellent gin brands over the years and have a collection comprising many of those, plus a few unusual bottlings.
Favourite restaurants
Saffron, an Indian restaurant in the village where I live outside Glasgow. It’s tiny, just a few tables, and the food is excellent.
Dream dinner guests
My four late grandparents. I never really knew any of them so would love the opportunity to chat over dinner and ask lots of questions about their lives.
Most adventurous food/drink you’ve ever tried
Yak cheese in Nepal was a particularly memorable experience, although not one which I’m keen to repeat.
Hobbies
I’ve recently started playing the drums again after being really into drumming as a teenager. It’s a great stress reliever!
Meet the Team
Areas of expertise
Mechanical engineering, with a particular focus on the energy and transport sectors.
Client overview
I am lucky enough to work with a wide range of clients, between sole inventors, SMEs, universities and multi-nationals.
Career highlights
Winning my first opposition.
Favourite dish
I love getting a platter of fresh caught langoustines or smoked salmon when I go out, but really you can’t beat the home comforts of a cosy dish like spaghetti bolognaise.
Signature meal to cook at home
Sausage and cider casserole topped with dauphinoise potatoes – a recipe which my partner and I have worked on together over the years and perfected.
Top tipple
There are a lot of really good red ales from microbreweries all over Scotland, so that is generally my go-to, especially if there is one on tap that I haven’t tried before. A particular favourite of mine is Red Rocker from Cromarty Brewing Co.
Favourite restaurants
I keep a google maps list with notes on all my favourite restaurants I’ve visited around the world, but you can’t beat Scottish seafood.
My favourite Scottish seafood restaurant has to be Gille Brighde in Diabaig – but as it says on the website, booking is essential because it’s a wee place at the end of a long road which can be a recipe for disaster if you’re hungry and they are full!
Dream dinner guests
My family
Most adventurous food/drink you’ve ever tried
Crocodile poutine whilst skiing at Mont-Tremblant, Canada.
Hobbies
Climbing, kayaking, sailing, skiing, etc. Really anything that justifies a good pub meal and a pint and the end.
Pumpkin carving challenge
To fully embrace the season, we chose pumpkin carving as this edition's challenge. The results range from sweet to spooky but are all guaranteed to have you feeling the Halloween spirit!
Pam Bryer
Partner
Edinburgh
Sam Mailer
Associate
Aberdeen
Kiera Cloete
Trade Mark Administrator
Edinburgh
Pumpkin carving challenge (cont'd)
Noëlle Pearson
Associate
Edinburgh
Monique Urganus
IP Administrator
Glasgow
Jason Chester
Senior Associate
Edinburgh
Meena Murrin
Principal
Glasgow
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.
Industry focus
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.
To find out more, visit www.marks-clerk.com or email info@marks-clerk.com