Trademarks On Product Descriptions

[BusterBloodvessel]

Hi All,

Disclaimer first - if this project progresses we would take paid legal advice on this, but as we are at the "idea bouncing" stage I wondered if maybe some of the minds on here could give me a steer.

We are looking at launching a product into the UK which is very similar to one that exists in the USA. There it's traded under basically the overarching brand name (this brand has many sub product lines) and very simply the product description. I think the best example I could give might be to say it's like "Cadburys Fruit & Nut". On their packaging in the US they show it with a TM after the name.

Now my understanding is that since fruit & nuts are essentially the main features of the product, that in itself can't be protected/trademarked. However by adding either something unique or the brand name, the whole thing can be protected i.e. "Cadburys Fruit & Nut" or "Dairy Milk Fruit & Nut". However does that still only protect that full phrase, or does that then give them protection over the individual elements too? So for example, could I or could I not launch "Busters Fruit & Nut"? Could a registration for Busters Fruit & Nut be granted alongside Cadburys Fruit & Nut, Green & Black Fruit & Nut, Thorntons Fruit & Nut, etc etc?

My understanding from my very limited experience in the past is that only the whole element including the brand name is protected. In a previous role we had something called <Brand Name> Perfect Fit. Someone launched <Competitor Brand> Perfect Fit and our legal team advised that as that was basically a description of how the product worked, we could try and "frighten" them into stopping using it but if they refused and it went legal we probably wouldn't win.

I understand that we could call it something completely different "NuttyWuttyFruBar" or whatever and protect that but in this instance we want a very clear statement of what the product is as it's completely new and unique to market.

Any advise welcome.

 

[Gyumri]

You are right - you can't trademark an expression or word which is descriptive of the product as that would be granting a monopoly on descriptive content which would prevent others from competing in the market place.

"Kellogg's Corn Flakes” is a trademark for the Kellogg North America Company's corn flakes, while “Golden Foods Corn Flakes” is a trademark for Cereales Y Pastas' corn flakes, and “Country Corn Flakes” is a trademark of General Mills, Inc.'s corn flakesKellogg's cornflakes.

So you are right there is no protection over the descriptive element of a mark.

There may however be registered marks which have acquired a descriptive element due to widespread use but in that case I think the descriptive element is protected as well, because it wasn't considered descriptive when it was registered.

it's interesting that Cadburys succeeded in registering the colour purple as a trademark!

https://www.ipo.gov.uk/t-challenge-decision-results/o35811.pdf

 

[BusterBloodvessel]

Thanks Gyumri, that is as I had hoped/thought. I suppose one question then though is why bother trademarking "kelloggs corn flakes". If "Kelloggs" itself is trademarked, and anybody else can attach "corn flakes" to their own trademarked name, why bother trademarking the whole expression. Am I missing something there?

Very interesting about the Cadburys colour! It's a little bit like the whole "easyGroup" one where they seemingly manage to stop anybody from using one of the most common words in the English language in their business name!