Food and drink companies face a multitude of challenges in their quest to attract and retain customers. In the search for a competitive edge, companies invest heavily in research and innovation in order to produce items with the requisite taste, mouthfeel, appearance and nutritional value whilst simultaneously controlling production costs. In addition, there is the added pressure of changing consumer trends, such as the rise in vegetarianism and veganism, alcohol-free drinks, and healthier versions of comfort foods, whilst meeting new governmental policies and requirements: quite the raw deal. 

The ability to meet such requirements can provide companies with a competitive advantage. The question then is how can they maintain this advantage, and how can they prevent competitors reaping the rewards of their research and investment?

There are typically two methods used within the food and drink industry to protect intellectual property: trade secrets and patents. Trade secrets can be useful where it is difficult (if not impossible) to derive the ingredients or process used to produce the food or drink product.

However, trade secrets provide no protection if another company legitimately produces the same product, manufacturing process or simply reverse engineers the product produced.

Patents may therefore provide a better form of protection where it is possible to derive the recipe (or method of manufacture) from the food or drink product itself e.g. where a recipe or composition could be determined by simply analysing the end product.

So, what can be protected within the food and drink industry; and what steps can you take to protect the IP on your plate?

What Can Be Protected Within the Food and Drink Industry?

Suitable food and drink products may include those with an improved taste, texture or appearance whilst reducing fat or sugar content; combinations of ingredients producing a synergistic effect; a non-obvious substitution for a commonly used ingredient (e.g. a reduction in E-numbers); and methods of altering the flavour profile of food and drink products, to name just a few examples of eligible contenders.

Processing methods within the food and drink industry can also be protected, whether these relate to more cost-effective manufacturing methods; methods of providing improved mixing of ingredients; or new process steps which provide an unexpected result in the product. Given the increased desire to produce environmentally friendly products, new environmentally friendly or biodegradable packaging may also be patentable. 

How Can Patents Help?

A patent is an intellectual property right granted by a specific country’s government for a limited time period, typically 20 years from the filing date. A patent enables the owner to prevent third parties from making; using; offering for sale; selling; keeping; or importing the patented invention within the territory for which the patent has been granted. For a specific process, the owner has the right to prevent third parties from using or offering for use that process within the relevant territory without the patent owner’s consent.

In a recent High Court decision (Eli Lilly & Company vs Genentech, Inc), Mr Justice Arnold referred the following question to the CJEU: “Does the SPC Regulation preclude the grant of an SPC to the proprietor of a basic patent in respect of a product which is the subject of a marketing authorisation held by a third party without that party’s consent?”

The referral arises in the context of Genentech’s European Patent EP1641822 B1 and Lilly’s marketing authorisation (MA) EU1/15/1085 for Taltz® (ixekizumab) – Genentech pursued a supplementary protection certificate (SPC) based on its EP patent and with reference to Lilly’s MA.

The referral in this case may come as a surprise to many, since the practice of applying for ‘third party SPCs’ is now relatively common, and is usually accepted by national patent offices. This practice follows an earlier CJEU decision (C-181/95 – Biogen) which indicated that the SPC Regulation did not require there to be a relationship between the holder of the basic patent and the holder of a related MA.

However, the practice of applying for ‘third party SPCs’ without the consent of the MA holder can be problematic – the MA holder must then either take a licence under the SPC, or seek to invalidate the SPC, in order to commercialise the product for which they have obtained the MA. In view of this, the practice is not without criticism and, moreover, comments from both the CJEU and the Advocate General (in C-493/12 – Lilly and Teva v Gilead, respectively) have implied that an SPC should only be granted to a party investing in research relating to the authorised product.

Parties will now discuss the wording of the question before a final referral is made to the CJEU.

The outcome of this referral will be of significant interest to the biotech community and may have an impact on patent proprietors seeking ‘third party SPCs’, particularly if no legal relationship between the parties exists and/or if consent from the MA holder has not been obtained. We also note that the referral question has interesting parallels to the paediatric extension provisions recently enacted in Switzerland, which appear to suggest that the documentation required in order to apply for a paediatric extension of a Swiss SPC may only be requested from Swissmedic by the MA holder.

If you have any questions about this article, please contact Jonathan Israel for more information.

Beyond trademarks, protectable intellectual property (IP) is not necessarily the first thing that comes to mind when one has developed a new food or beverage product. However, novel and non-obvious technical aspects of food products, packaging and manufacturing methods/recipes can be patented, while registered design protection can be sought for striking visual features. 

Some very familiar products, such as rice cakes (Quaker Oats – EP1025764), granola bars (Quaker Oats – US4451488), and orange juice (Tropicana – WO 2004/060083) have been the subject of patent protection.

Moreover, recipes, such as those that produce bread with improved texture or size (Warbutons – GB2545647) have attracted patent protection. This effectively debunks the common misconception that recipes are not patentable, in reality they are so long as they solve a technical problem.

Obtaining a patent allows the proprietor to stop a competitor from directly or indirectly copying their products/process as well as importing such products. Put simply, a patent allows the proprietor to enjoy the just rewards of its R&D labour and to be the exclusive provider of the product/process, thereby providing a competitive edge in the market.

The team at Mathys & Squire has a wealth of experience in protecting its clients’ food and beverage innovations, including those of many household names, such as Warbutons, PepsiCo, Quaker Oats, and Müller.

This article first appeared in Food And Drink Matters in March 2019.

Mathys & Squire is celebrating World IP Day in April and hosting a party on Thursday, April 25th 2019.

Faster, stronger, higher – this year’s theme is ‘Reach For Gold: IP and Sports‘, celebrating the ingenuity, creativity, drive and performance of athletes, and all those working in the world of sports. We look at how sports businesses use patents and designs to foster the development of new sports technologies, materials, training, and equipment to help improve athletic performance and engage fans worldwide. We find out how trademarks and branding maximize commercial revenue from sponsorship, merchandising and licensing agreements. We look at how sports personalities are able to generate earnings from sponsorship deals with brand owners and by leveraging their own brands as athletes.

The 2019 theme is an opportunity to celebrate our sporting heroes and all the people around the world who are innovating behind the scenes to boost sports’ performance and its global appeal. Join us in celebrating the power of sports to engage and inspire, to innovate and unite us all in pushing the boundaries of human achievement.

When: Thursday, April 25th 2019

Time: 18:00 – 21:00

Where: Mathys & Squire, The Shard, 32 London Bridge Street, SE1 9SG.

Click here to RSVP by Friday, April 19th or email our marketing assistant, Juli Woi on [email protected] for more information.

We hope to see you there!

Mathys & Squire is delighted to announce a number of recent exam successes.

Technical assistants Michael Charlton, Sally Gao, Lionel Newton and Daniel Goldberg are also on their way to becoming qualified attorneys after passing some of their UK exams.

Technical assistants Dylan Morgan, Oliver Parish, Alex Elder, Peter Humby and Leo Wright all passed their Queen Mary Post Graduate Certificate exams, which cover modules in trade marks, copyright and designs, plus a brief introduction to the fundamentals of law and professional ethics. The next step for these candidates will now be to take their UK Finals exams to become qualified patent attorneys.

Caroline Warren, a Mathys & Squire partner who leads on training and development, commented: “We are very proud to announce such excellent exam results, which are testament to these individuals’ hard work and dedication to their studies. As a firm, we offer an extensive training programme and professional development opportunities, with a focus on nurturing the talent of each of our trainees, so it is rewarding to see these results which will help these individuals progress to the next step in their career paths. Congratulations to all!”

Further congratulations go to Mathys & Squire secretaries Danielle Hanson, Donna Egan and Yiemun Ng, as well as patent administrator Liddy Chen, who all passed the Patent Administrators Course.

Many companies in the food and beverage industry will not fully understand how nonconventional trade marks such as colours, shapes and smells can be protected by law. However, a large number would undoubtedly strive to obtain monopoly rights for such things in the hope of protecting customary characteristics, while also preventing competitors from doing so. But, whether this is legally and commercially viable is a complex question.

This was undoubtedly Cadbury’s aim when it protected its well-used colour purple as a trade mark in 1995. However, in December 2018 the Court of Appeal rejected Cadbury owner Mondelez International’s attempt to widen the scope of that protection. It said an application seeking protection for the colour as the ‘predominant colour’ on product packaging was imprecise and could include a whole range of different marks within one application. In contrast, it was implied that an application requesting protection for the colour applied to the whole surface of product packaging might be acceptable. Arguably however, this would have limited commercial use to Cadbury as its packaging is never just purple.

Businesses striving for such protection should not only consider whether protection is likely, but also question whether that protection would provide the commercial advantage they desire, having considered the associated cost of obtaining it.

The Court of Appeal decision makes it clear that aspirational ‘one fits all’ protection will not be granted. So, multiple narrower applications would probably be required for packaging that would undoubtedly be redesigned and reinvigorated on a regular basis.

This article first appeared in Food Manufacture in March 2019.

Top tier intellectual property firm, Mathys & Squire is proud to act for Orb Factory Limited (“Orb”), a well-known, innovative and highly successful toy and children’s products manufacturer based in Canada. Orb operates worldwide, including in the UK and the rest of Europe and has had considerable commercial success with its Soft ‘n Slo Squishies toys.

Late last year, Orb asked us to advise them concerning several grossly misleading and inaccurate articles published on the websites of The Sun and The Mirror. These articles featured Orb’s registered UK trade mark Soft ‘n Slo Squishies, as well as Orb’s images and video content for which Orb owns the copyright.

Two of the tabloid publications referred to a European Commission report issuing a recall of a cake-shaped squishy toy product which had no connection with Orb’s products, whilst a third article referred to a ban on the sale of certain toy products in Denmark, which again were entirely unrelated to Orb’s products. The articles were written in such a way as to give the impression that Orb was associated with all of the “squishies” referred to, that its Soft ‘n Slo Squishies toys had been banned in Denmark, and that its Soft ‘n Slo Squishies toys had been the subject of a recall by the European Commission. This was entirely false as the products to which the articles referred were all different products from unrelated suppliers.

Given the extensive readership of both The Mirror and The Sun, it was of the utmost importance to Orb that the inaccurate articles were removed/rectified swiftly. This was to prevent the misleading publications from causing significant commercial damage to Orb and its business and to preserve the right for Orb to seek interim injunctions from the courts, if necessary.

Our team acted quickly and sent robust letters to The Sun and The Mirror requiring the immediate removal of all references to Orb’s brand and its products from the articles.

The letters sent by our team were forcefully followed up and were successful in securing the removal from the articles of all references to Orb’s trade mark, as well as of its copyright-protected images and video content – all references to Orb’s brand and products were removed from the websites/articles by the respective newspapers within three days of writing to them.

Through its swift action, our team assisted Orb in ensuring that the supreme reputation of its products was maintained and was not besmirched by inadequately researched and wholly inaccurate publications, and without the need for litigation. The team at Orb were delighted with this result.

Our team’s actions serve as a great example of our enviable experience of enforcing our clients’ trade marks and other IP rights, as well as our effective and robust approach to dealing with issues that arise in order to achieve a commercial result.

Our team is always on hand to take quick and direct action in cases where our clients’ intellectual property rights are at risk, whilst also ensuring that our clients’ commercial interests are prioritised.

The development of the reputation of a brand requires a significant investment, both financially and in terms of the considerable time which it can take to build. Unauthorised trade mark use undermines this investment, as it can not only be damaging to brand owners’ commercial efforts, but it can also dilute the value of a brand and its reputation – potentially resulting in irrevocable damage. It is therefore of paramount importance that brand owners take proactive steps to protect their trade mark rights.

If you are concerned about the misuse of your trade mark/branding, or you would like advice on trade marks/branding more generally, please get in touch with Margaret Arnott, Harry Rowe or Daniel Ramos today.

With over 100 years of offering the highest level of IP services to clients, this Tier 1 Legal 500 intellectual property firm, Mathys & Squire has an enviable position as one of the leading IP firms in Europe.  With offices in London, Cambridge, Manchester, York, Brighton, Oxford, Midlands, Paris, Luxembourg and Munich as well as a team in China; the firm offers a full range of services dedicated to identifying, protecting and maximising the value of clients’ innovations, technologies, brands and designs. The firm’s patent, trade mark and design attorneys are qualified at both a UK and European level, with legal expertise across a full spectrum of technical proficiencies and sectors.

Rotolight, a pioneering British technology company specialising in creating award winning LED lighting products for photographers and filmmakers, has just secured £5m in growth capital funding from Octopus Investments. 

The funding will enable Rotolight to realise its plan to develop 15 new products over the next five years. It will also help to expand the business to nearly five times its current size.

Richard Court, Head of Development Capital at Octopus Investments, commented: “The company has developed a range of market-leading products backed by substantial IP, and our growth capital will be used to further develop the product range as well as capitalising on extensive international expansion opportunities.”

Rod Aaron Gammons, CEO of Rotolight, said: “We are delighted to secure Octopus as part of our team for what will be a very exciting time ahead; delivering on our ambitious plans for growth and developing products that change the way photographers and filmmakers work with light, enabling them to be more creative and efficient in their work than ever before.” 

Elton John with Rotolight equipment.

Mathys & Squire partner Dani Kramer commented: “We have been working with Rotolight almost since its inception to protect its intellectual property. It is incredibly satisfying to see the success of the company, and the team being recognised for their product innovation.”  Rod added that Mathys & Squire has “an impeccable understanding of IP law, and draft claims to maximise value from patents.”

About Rotolight
Rotolight is known for constantly pushing the boundaries in its field and striving to create products that provide unique tools to image creators. Its lighting has been used by the likes of ITV’s Dancing on Ice, the BBC, Formula 1, CNN and Disney, and in the production of major feature films including Skyfall and Captain Phillips. Leading where others follow, Rotolight has developed industry-first features for which it has won numerous awards, including over 30 for innovation and technical excellence.

For more information about how Mathys & Squire can help your business, contact Dani Kramer [email protected]

The difficulties in obtaining protection for artificial intelligence (AI) and machine learning (ML)-related inventions, and the differences between the various approaches adopted by the national and regional offices, has been the focus of much discussion in recent years. However, as a European patent attorney sharing a stage with attorneys from around the world in a recent seminar series on the topic in Japan, what struck me was that despite the differences in legal framework, the resulting approaches to patent examination in this area are more aligned than we often think.

Focusing for example on the US where, unlike Europe, there is no statutory provision listing what is not considered to be an invention, the examination of AI and ML inventions is, nevertheless, rooted in subject matter eligibility requirements and what is, and is not, considered ‘abstract’. What is important for demonstrating that an AI or ML invention is significantly more than an abstract idea is the nature of the technological ‘improvement’ that the invention provides. However, it is not sufficient simply to explain the ‘improvement’ in the description – to obtain protection the technological ‘improvement’ should be recited in the claims.

In Europe, November 2018 saw the introduction of a new section to the EPO’s Guidelines for examination, providing guidance on when inventions related to AI and ML may be considered to have sufficient ‘technical effect’ to avoid being considered ‘abstract’. The new section treats AI- and ML-based computational models and algorithms as being per se of an abstract mathematical nature and hence as a sub-class of the statutory exclusion ‘mathematical methods’. Nevertheless, the application of these models to various fields of technology, such as image recognition or medical monitoring, can provide sufficient technical effect to avoid the exclusion. In essence the guidelines extend existing guidance that the fact that a ‘mathematical method’ serves a technical purpose is not, in itself, sufficient – to obtain protection the claim must be functionally limited to a specific technical purpose.

What was evident from the comments of the US contributors was that reciting the specific technical purpose in the European sense would, in general, meet these requirements in the US. It was also apparent that a similar approach could be applied in Japan and China. Accordingly, when preparing claims suitable for protecting AI and ML inventions throughout the world, while it is of course, important to take account of specific national differences in claim drafting practice, the overall approach to avoiding subject matter eligibility type issues is, nevertheless, similar.

What was also apparent, was that drafting AI- and ML-related applications with an eye for which part of the relevant patent office will likely be examining the application is a strategy that is common to both sides of the Atlantic.

From discussions with my US colleagues, for example, it is clear that the ‘Technology Center’ at the USPTO that is allocated a particular AI or ML-related patent application for examination, can have a significant impact both on the likelihood of receiving rejections of the claimed subject matter as being patent ineligible and on the overall allowance rate. The way in which a patent claim is drafted – even for the same subject matter – can affect the probability of being allocated to a particular Technology Center and hence the chances of having to respond to unfavourable patent eligibility rejections. For example, the rate of patent eligibility rejections could vary from less than 3% (with an 83% allowance rate) for one Technical Center to a patent eligibility rejection rate of around 25% (with a 68% allowance rate) for another.

Ironically, some US attorneys use a specialist AI tool to analyse prospective AI- or ML-related claim language before filing to provide a comparative indication of the relative probabilities of that claim language resulting in an application being allocated to different USPTO Technology Centers. The language can then be adjusted iteratively to maximise the probability of being allocated to the more favourable Technology Centers. This also has resonance for attorneys involved with protecting inventions at the borders of the statutory exclusions before the EPO where the subject matter classification attributed to a patent application can, anecdotally, also affect the prospects for successful grant. For patent applications falling in one particular subject matter classification, for example, an allowance rate of less than 10% has been reported.

Notwithstanding the care that is always necessary when drafting patent applications related to AI and ML, with the rapid growth of AI and ML technologies and their importance to society it seems likely that, over time, patent offices and legislators will develop a pragmatic approach to ensuring that those developing AI and ML-related innovations will be able to obtain fair protection for their efforts with a view to encouraging investment.

This article first appeared in the March 2019 edition of Intellectual Property Magazine. To read the full article, click here.

The Christian Louboutin (“CL”) brand is no stranger to a trade mark conflict. In the US, CL successfully appealed a decision that its red-coloured shoe sole was incapable of trade mark protection, with the US Court of Appeals deciding that the mark had acquired a secondary meaning in instances where “the red outsole contrasts with the color of the remainder of the shoe” in 2012.

The red-soled heel dates back to 1992, when a designer borrowed red nail varnish from a store assistant to lather the bottom of the shoe. Since then, the red sole has become associated with CL.

CL had registered the above Benelux mark with the mark described as consisting “…of the colour red (Pantone 18‑1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)”.

Following the (partial) success in the US, CL was also successful in the EU. A dispute had arisen between CL and the Dutch retailer Van Haren (“VH”), which had been selling red-soled footwear. CL sued VH for trade mark infringement and so began a legal battle which would span more than half a decade.

The District Court in the Hague initially issued a default judgment upholding part of CL’s claims, which VH challenged on the basis that CL’s Benelux registration was invalid under the Benelux equivalent of Article 3(1(e)(iii) of the EU Trade Mark Directive 2008/95; VH argued that the mark consisted exclusively of a shape which gives substantial value to the goods.

The Dutch Court referred the matter to the CJEU (Court of Justice of the European Union) and requested clarification as to whether the “shape” to which Article 3(1)(e)(iii) refers is limited to the three-dimensional properties of the goods, or whether it extends to other non-three dimensional characteristics, such as colour.

The CJEU found in June 2018, in a widely reported decision, that the limitation of the registration was key as it noted “while it is true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product”. Given that the CJEU determined that the mark did not constitute a shape, the registration did not fall foul of Article 3(1)(e)(iii) and was therefore validly registered.

On account of the CJEU’s decision, the Dutch Court also found that CL’s registration was valid and that VH had infringed it. As a result, CL has been able to stop the further sale of red-soled shoes by VH, whilst a decision regarding any award of costs and damages will be issued in the future.

This case highlights that registered trade mark protection can be a useful tool when seeking to protect less conventional marks. The finding of the CJEU emphasises the level of care which must be taken when seeking to register a mark to ensure that the resulting registration will be valid and enforceable.

Mathys and Squire is well-placed to advise on trade mark protection and enforcement with its specialist trade mark and litigation practitioners. Contact us today for friendly expert advice.