Does use of a trade mark within the UK constitute valid use within the EU to evidence enhanced distinctiveness of an EU trade mark?
The judgement of the Shopify vs Shoppi case has important implications for UK trade mark owners.
The European Court of Justice (CJEU) has ruled that plant based products, which do not contain any milk, cannot use terms such as milk, butter, cheese or yoghurt in their marketing or advertising.
This means that food and drink companies selling products such as ‘soy milk’ and ‘tofu butter’ may have to rebrand their products.
The preliminary ruling from the ECJ was in response to three questions referred from a German Court in the proceedings between the VSW, a consumer protection group which combats unfair competition, and TofuTown, a vegetarian/vegan food manufacturer selling plant-based products including ‘Soyatoo tofu butter’ and ‘Veggie Cheese’.
VSW claimed that TofuTown was infringing EU competition rules by promoting plant-based products, whilst TofuTown argued that they were not infringing EU law because they did not use words such as ‘butter’ in isolation, but in association with words referring to the plant-based origin of the plant concerned e.g. ‘tofu butter’.
The three questions referred to the ECJ essentially asked whether the laws (Article 78(2) and Annex VII, Part III of Regulation No 1308/2013) must be interpreted as meaning that the term ‘milk’ and terms the law designates for ‘milk products’ cannot be used to describe a purely plant-based product in marketing and advertising, even if the terms are expanded upon by clarifying or descriptive terms which indicate the plant-based origin of the product.
The ECJ found that the term ‘milk’ or any of the terms used for ‘milk products’ (listed in Annex VII, Part III of Regulation No 1308/2013, point 2, second subparagraph (a)) cannot be used by products which do not consist of milk or contain its constituents. By definition, purely plant-based products could therefore not use these terms.
Similarly, the law specifies that although the terms for ‘milk’ and ‘milk products’ may be used in association with words to designate composite products, the words can only be used if the products contain milk. Therefore, purely plant-based products do not meet this requirement.
The Court highlighted that there are some products which these rules do not apply to because ‘the exact nature of which is clear from traditional usage and/or when the designations are clearly used to describe a characteristic quality of the product’. Products such as coconut milk, nut butters, cocoa butter, salad cream, ice cream, and cream or creamed soup are included on the list of exemptions. However, soya and tofu are not exempted.
The case will now return to the German court where they will rule upon the case between VSW and TofuTown in light of this judgement.
Similar complaints could be brought in the UK or elsewhere in the EU so food and drink companies in the plant based industry may want to consider now, and particularly during the development of future products, whether their branding and trademarks are in line with this ruling.
If you have any questions, please get in touch with one of our trade mark attorneys