Recent news stories (like this one from BBC) say employee-owned supermarket Waitrose has sent a letter to competitor Asda raising branding concerns.
The letter apparently takes issue with Asda’s recent release of its new range of value groceries, which it has named “Just Essentials”. Waitrose says it looks too much like its own ‘Essential’ range which was launched in 2009 and is branded ‘ESSENTIAL WAITROSE’.
In the event that Waitrose decides to take legal action against Asda for trademark infringement, what legal issues would be considered by the court?
Section 10 of the Trade Marks Act 1994 states that there is trademark infringement if a sign is similar to the mark and is used in the course of business and either:
- It is used in connection with similar or identical products or services and there is a risk of confusion in the mind of the public; or
- The mark enjoys a reputation in the United Kingdom and the use of the sign unduly takes advantage of or damages the distinctive character or reputation of the mark.
Therefore, it would be for Waitrose to satisfy a court on these points. Waitrose said its brand had “built a strong reputation for value, quality and higher standards of wellbeing”, which would likely be a key point to rely on in any litigation.
An Asda spokesperson said “essentials” is a “generic and commonly used term” for retailers to describe ranges of valuable products.
Trademark law operates on the basis that certain terms should not be registered, on the basis that this would give the holder a monopoly in the market and this would constitute anti-competitive behavior. For this reason, it is not permitted to have a mark that:
- is devoid of any distinctive character (section 3(1)(b) of the 1994 Act); or
- consists exclusively of signs which designate the characteristics of the goods or services, such as their value (Article 3(1)(c))
Therefore, these could be factors that Asda could rely on if it needed to defend itself against legal action.
While the dispute between Waitrose and Asda is currently in its early stages, it will be interesting to see how it unfolds and if there are any ramifications for other retailers.
The dispute reminds us of the importance of brand protection. Intellectual property (IP) is often a company’s most valuable asset. It is crucial that companies take steps to protect and enforce their intellectual property. The first step is to have a strong intellectual property protection and enforcement strategy in place, as mentioned earlier.