It’s been widely reported in the press recently that Asda and Waitrose are in the midst of a ‘brand war’. Asda has announced plans to launch a cut-price range (“Just Essentials by Asda”) with a similar name to Waitrose’s budget own-brand range (‘Essential Waitrose’). Waitrose launched its brand in 2009 and registered it as a trademark.
Waitrose is considering challenging Asda on the basis that Asda’s new name is too close to their own. However, Asda is saying that “essential” is a descriptive or generic term that many retailers use to describe their value ranges.
Earlier this year there was another high-profile supermarket dispute between Marks & Spencer and Aldi which centred on claims that Aldi’s chocolate caterpillar-themed cake, Cuthbert the Caterpillar, infringed trademarks protecting M&S’s own chocolate caterpillar cake called Colin.
This has highlighted the value of trademark protection for your brands, and how infringing a trademark can have significant consequences for your business.
Why is registering trademarks important?
Registering a trademark gives you the exclusive right to use that trademark for the registered goods/services in the defined territory.
If you register your trademark, you will be able to:
• Take legal action against anyone who uses your brand without your permission.
• Put the ® symbol next to your brand - to show that it is yours and warn others against using it.
• Sell and license your brand.
What’s involved in registering a trademark?
Trademarks cover a particular territory (e.g. the UK) and cover a particular class of goods or services. You decide which class is most appropriate at the time of registration.
The process generally takes about 4 months if no one opposes it. Registered trademarks last 10 years and can be renewed.
Trademarks have to be unique and can include words, sounds, logos, colours, or any combination. There are other criteria that must be met, such as the trademark cannot be too common and non-distinctive.
Trademark law does not allow anyone to monopolise a generic or descriptive term. This would be considered anti-competitive and generally damaging to the economic success of businesses. This is potentially the case in the Waitrose and Asda dispute. ‘Essential’ is partly descriptive, but it is also the first word of Waitrose’s trademark. This is important as the first word is usually considered to be dominant.
Do I have to register a trademark?
No. However, unregistered trademark rights are only gained after they have been used for a period of time and once the trademark has gained sufficient goodwill or reputation. So this means you don’t have the same level of statutory protection.
In this case, you would have to bring an action for “passing off” to stop someone else from using your brand. The party concerned has to show that shoppers would be confused or deceived by the use of the brand by someone else. This is quite difficult for supermarkets as it’s unlikely that Asda shoppers will see the Just Essentials range and think that they’re buying goods from Waitrose, for example.
If your trademark is registered, it will be much easier and quicker to take legal action.
Are there other benefits to registering a trademark?
In addition to protecting you and your trademark, the most obvious other benefit is in attracting investment from third parties. This could be by way of equity investment, where a new shareholder will want comfort that your business has the best legal protection in place for its key IP assets, or debt investment where your IP could be used as collateral for a loan. Further, the value of your business, and the sale price you could achieve if you wish to exit, are likely to be enhanced by having your IP registered.
3CS is here to help
If you need help reviewing your need for brand protection we are here to support you. Please get in touch with your usual 3CS contact for more information.