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RPC Bites #54 – Aldi infringes M&S's design rights, ban on single use plastics and BrewDog pays for "solid gold" ad

Published on 10 February 2023

Welcome to RPC Bites. Our aim in the next 2 minutes is to provide you with a flavour of some key legal, regulatory and commercial developments in the Food & Drink sector over the last fortnight… with the occasional bit of industry gossip thrown in for good measure. Enjoy!!

We're back! – After a Merry (food-filled) Christmas and a Happy (fizz-fuelled) New Year, RPC Bites is back for 2023!

Breaking news: M&S v Aldi (round 2) – battle of the light-up gins

In last year's New Year Bumper Issue (here), we reported that, hot on the heels of the Colin v Cuthbert saga, M&S had, once again, commenced proceedings against Aldi. This time, the retailer claimed Aldi's 'Infusionist' gin liqueur bottle, which incorporates edible gold flakes and a festive light-up bottle, infringed 5 of its UK registered designs. The designs in question protect a light-up gin bottle, which M&S alleged was "strikingly similar" to the Aldi product.

Last week the Intellectual Property Enterprise Court ruled that Aldi's Infusionist gin bottle does indeed infringe M&S's registered designs. This was found on the basis that Aldi's bottle did not create a 'sufficiently different overall impression' to M&S's registered designs. Despite Aldi's attempts to argue that the inclusion of the words "The Infusionist Small Batch", on the front of its bottle (M&S's designs did not include any words), sufficiently distanced the products, the Judge found that any differences were of "relatively minor detail".

The design rights basis of these proceedings have landed more favourably with the Court than the trade mark infringement approach taken in various other recent copycat product cases, including Colin v Cuthbert. The legal test for design right infringement focuses on the impression created by the designs and lookalike product, with no need to show customer confusion or that the registration has a reputation. For brand owners, the case highlights the utility of registered design rights in circumstances where other IPR are unable to provide protection. At £150 for one application covering up to 50 designs, they are also a real bargain!

Single-use plastic cutlery, plates and trays to be banned

The war against plastic continues as Defra has announced that legislation will be introduced in October 2023 to ban a range of single-use plastics including plastic plates, trays, bowls, cutlery, balloon sticks and certain types of polystyrene cups and food containers.

Government estimates show that 2.7 billion items of single-use cutlery and 721 million single-use plates are used in England per year, only 10% of which are recycled. However, the ban will not apply to plates, trays and bowls for pre-packaged, shelf-ready products (such as food for sale in supermarkets or even bowls pre-filled with food at a takeaway counter). Those items are instead set to be covered by a planned 'Extended Producer Responsibility Scheme'.

This development comes after single-use plastic straws, stirrers and plastic stemmed cotton buds were banned in England in 2020. A similar ban was put in place in Scotland in 2021 and Wales is due to enact similar changes in late 2023.

The Government is also looking at further measures to combat the use of popular single-use plastics, such as banning wet wipes and plastic sachets. This follows research into the impact of these products on sewage system blockages and the conclusion of a call for evidence on this topic earlier this month.

BrewDog's CEO pays out nearly £500,000 to 'gold can' winners

In Issue 39 of RPC Bites, we reported on BrewDog's "24 carat faux pas" after it ran an ill-fated social media marketing campaign in late 2020. This offered consumers the opportunity to win "solid gold', 24-carat" cans of BrewDog worth £15,000 each. However, winners were sorely disappointed to find that the cans were, in fact, only gold plated, and therefore not worth the advertised £15,000. 25 individuals complained to the ASA. All complaints were upheld in October 2021, with the ASA concluding that the ads were misleading.

Now, in a LinkedIn post, BrewDog's CEO, James Watt has described the episode as a "costly mistake" and revealed that the business had contacted all 50 of the "solid gold" can winners to offer them the full cash prize of £15,000. Mr Watt is reportedly personally funding the pay out, to leave the company's finances unaffected.

Cibo restaurant trade mark dispute hits the High Court

The owners of Italian restaurants, Cibo Hale and Cibo Wilmslow (CH and CW) located in the affluent suburbs of Cheshire (and frequented by a number of footballers over the years) have initiated passing off proceedings against 3 Manchester based restaurants, donning the same name: Cibo Manchester; Cibo Liverpool Road; and Cibo Great Northern. The directors of those restaurants have also been personally joined to the proceedings.

Although CH and CW do not own registered trade marks for the 'Cibo' signs, citing their substantial revenue, celebrity clientele and media presence (including being used as a location for the reality TV show, The Real Housewives of Cheshire), the restaurants claim to own substantial goodwill in the sign 'Cibo', for restaurant and bar services. As a result, CH and CW allege that the Manchester based restaurants' adoption of a name containing 'Cibo' (following a rebrand in 2018) is likely to, and already has, caused confusion to the public. Specifically, CH and CW allege that the public will consider there to be an association between the Cheshire and Manchester based establishments. It seems their concerns have some grounding, with some customers having allegedly sought to dine at CH and CW, using vouchers for the Manchester restaurants.

According to CH and CW, this association is diluting their goodwill and lessening the customer traction to their restaurant as the Manchester based restaurants have attracted less favourable reviews. CH and CW are therefore seeking an injunction to prevent the newcomers from continuing to 'pass off' their services as those of CH and CW. An inquiry into damages is also being pursued.

The case is at an early stage but will no doubt be monitored by lawyers, foodies and celebrity clients alike! We will provide updates in subsequent issues of RPC Bites.

Pret rows back on "Veggie Pret" stores

Pret A Manger has announced that it is closing the majority of its 10 'Veggie Pret' sites, six years after they first launched. It is thought that only the sites in Shoreditch and Soho will remain, with the rest either closing permanently or being converted into regular stores. The Veggie Pret in Canary Wharf has already been converted into a regular Pret, and the sites in London's Exmouth Market and Manchester's Deansgate are to be monitored for demand.

In explaining the move, a Pret spokesperson did not point to any reduction in demand for vegetarian food, but instead highlighted that regular Pret branches now contain a wide variety of vegetarian and vegan options anyway, seemingly reducing the need for a solely vegetarian store. The spokesperson also said that the remaining Veggie Pret branches were to become 'innovation hubs' to develop new vegan and vegetarian items to be rolled out across the wider Pret estate, so it seems like Veggie Pret is definitely not off the menu entirely.

BAO "game-ifies" the restaurant experience with new app

Popular Taiwanese restaurant group, BAO has added an "interactive digital layer" to its real world dining-in experience with the launch of its BAOverse app. Developed by hospitality tech platform, Not in Game, the app allows users to explore the 'BAOverse' and earn BAOcoin (the app's digital currency) to acquire digital items which translate into real world food and drink at future restaurant visits. Customers can also build up their BAOverse 'passport' and be awarded BAOverse Citizenship by visiting BAO's six different London locations.

Food friction on the French border

The French authorities have introduced new requirements which some British food and drink exporters fear could cause serious disruption to their businesses. As of 13 January 2023, French border control authorities require UK exporters to produce French versions of sanitary and phytosanitary (SPS) documents for certain products, or risk their goods being rejected at the border.

The goods in question are composite shelf-stable goods. These are tinned or packaged goods which contain processed products of animal and plant origin (excluding processed meat) but do not require chilling or freezing and can be transported at a controlled temperature of 0 degrees Celsius or above, for example canned custard and other confectionary products.

While some larger businesses already use French forms, this additional burden may disrupt smaller UK exporters who, according to the Cold Chain Federation, are already weary of continuing trade with the EU due to uncertainty and red tape. In a bid to ease the burden, Defra has made translated versions of the forms available online.