Before Colin v Cuthbert there was…

June 15, 2021

4 min read

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By now we have probably all heard of the Colin v Cuthbert debacle, but for the uninitiated, Marks & Spencer is suing Aldi for copying its famous caterpillar cake. While there may be legal merit in the facts of the case, people couldn’t help but see the lighter side of the story. With that in mind, we take a look back at some previous food industry rivalries.  

  1. Big Mac v Big Jack: In August 2020 fast-food giant, McDonald’s, issued proceedings against Australian burger chain Hungry Jack’s for trademark infringement allegedly arising from Hungry Jack’s “Big Jack” and “Mega Jack” burgers. McDonald’s claimed that “Big Jack” and “Mega Jack” were deceptively similar to “Big Mac” and were therefore likely to confuse and deceive consumers. However, Hungry Jack’s didn’t go down without a fight and hit back with a provocative new advertisement. The ad, which aired on Australian TV, states Someone’s suing Hungry Jack’s, they reckon Aussie’s are confusing the Big Jack with some American burger… but the Big Jack’s clearly bigger, with 25% more Aussie beef, flame-grilled, with a barbecue taste, and you can only get the Big Jack at Hungry Jack’s”, and claimed that it was “clearly bigger” than “some American burger”. The ad was followed up by an amusing defence statement, which claimed that the burgers were completely different (comical when you consider the burgers looked more closely related than Colin and Cuthbert). What does this mean? The case is still ongoing so watch this space… 

  2. Nestle v Cadbury: Nestle and Cadbury (now Mondelez) had an almost 20 year-long battle over the KitKat. Nestle sought to register the four-fingered shape of the KitKat bar as a trademark, and therefore prevent other brands from using the shape. Cadbury however used a similar four-fingered shape in their Norwegian chocolate bar: the “kvikk Lunsj”. Nestle argued that the KitKat shape was iconic, and well known by consumers. Therefore, it had an acquired distinctiveness that would allow it to be registered as a trademark. The case went back and forth for years, and in a twist, the Court of Justice of the European Union (CJEU) concluded that the KitKat shape was distinctive in the UK, while the UK courts found that it was not distinctive in the UK. Ultimately, Nestle lost its battle to register the shape, but this was not the only battle waged between the pair. Nestle had previously, and successfully, objected to Cadbury’s attempt to register their iconic shade of purple for use on their packaging. What does this mean? The two companies have done quite a lot for trademark law – they have together contributed towards the clarification of the rules regarding shape marks, acquired distinctiveness, and colour marks. Aside from this, what the rivalry makes clear is the lengths that businesses will go to protect their brand and market share.

  3. In court cheese tasting: In 2015, Dutch cheese producer HEKS’NKAAS, which is well known for its garlic and leek cheese, brought action against competitor Witte Wievenkaas for infringing its flavour. HEKS’NKAAS had for years reportedly sought to stop competitors copying the flavour of its cheese. The judge hearing the case in court requested a sample of both types of cheese, and following the tasting, announced that the taste was similar enough to warrant further investigation. The case relied on an earlier decision, Lancôme v Kefoca, in which scent was protected by copyright, however, the CJEU in 2018 clarified that taste could not be protected in the same way. This is in contrast to trademark law, whereby scent marks are unable to be protected because they cannot be represented graphically. What does this mean? The case highlights the fact that the taste of food is not able to meet the EU originality requirement needed for copyright protection (that it is the author’s own “intellectual creation”), and this is in part due to the subjective nature of tastes, and also due to taste not meeting the requirements for an authorial work under section 9 of the Copyright, Designs and Patents Act 1988.

  4. Iceland v Iceland: Back in 2014, the EU Intellectual Property Office (EUIPO) granted Iceland (the supermarket) a trademark for its name. This triggered a five year battle with Iceland the country, as the trademark prevented Icelandic goods (from the country) having their country of origin stated. Iceland (the country) subsequently sued Iceland (the supermarket), and the trademark was invalidated. What does this mean? The ruling underlines the reasons why place names cannot be registered as trademarks.

  5. Zam Zam v Victory: This case shows that not all rivalries are fun. These two well known Singaporean restaurants had been feuding for nearly 100 years, and in 2015 the feud reached new heights when the owner of the restaurant “Zam Zam” hired a hitman to slash the manager of their rival, “Victory”. In 2021, the owner of Zam Zam was found guilty of the charges against him and was sentenced to 6 years in jail and 6 lashes from the cane. Earlier, Zam Zam had accused Victory of using black magic to curse its premises. In doing so, they posted CCTV footage to their Facebook page which allegedly showed a Victory employee performing a ritual in front of the premises. What does this mean? While many of our other examples here have shown the lengths that companies will go to protect themselves and their markets, these rivalries have generally been in the good spirit of business. Zam Zam v Victory however goes outside the boundaries of good business and shows what can happen when a rivalry is taken too far.  

Whether or not these cases can provide us with an insight into the outcome of Colin v Cuthbert, what is clear is that intellectual property law plays a huge role in the food and beverage industry. Whatever the outcome, we just hope that Colin v Cuthbert doesn’t end the same way as Zam Zam v Victory…  

Report written by Julie Lawford

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