BY MARK ARMITAGE
TRADE MARK ATTORNEY, WITHERS & ROGERS
An international legal battle between British and Cypriot cheesemakers over the right to use the term halloumi to market their products is a timely reminder to food entrepreneurs to take extra care if planning to use place names, or otherwise descriptive names, to market their products.
Cypriot farmers have recently submitted an application for Protected Designated Origin (PDO) status for halloumi cheese, claiming that the traditional methods used to make the product in Cyprus define it as unique. For this reason, they believe that cheesemakers in other parts of the world shouldn’t be able to sell similar products using the same name.
Three British manufacturers have so far stepped forward to oppose the application on the grounds that Britain is now the biggest consumer of halloumi cheese outside of Cyprus. Others have until September to follow suit and depending on the outcome of the application, British businesses using the name to market their cheese could be forced to find a new name for their product.
Groups of food and drink producers may not be aware that they can apply for Protected Food Name status to protect produce with unique characteristics that can be linked back to a specific geographical location or defined product characteristics. However, it is best to do this as early as possible rather than waiting until they have spotted some potential misuse of that food name.
“If the misuse is not spotted quickly enough, and there is no food name protection in place, its use could become generic and as such would no longer be eligible for protected status.” Cheddar for cheese would be an example of such a name which has now become generic and no longer capable of such protection.
Applications for EU-wide Protected Food Name status can take some considerable time and they are normally brought by groups of producers such as butchers or milk producers for cheese. A wide range of products can be protected under the scheme including hops, bread, fish, beer, cider, wine, meat, honey, fruit and vegetables.
It is especially important for food and drink entrepreneurs to trawl the relevant lists to check if food names already have protected status before using them.
Obtaining Protected Food Name status can be complex because applicants have a number of potential routes open to them. For this reason, it is often overlooked altogether when checking out new brand names. However, as the current battle over the term halloumi demonstrates, there is a need to tread carefully if a business wants to reference a particular place of origin when marketing their goods.
It would be a potentially-costly mistake for a food or drink manufacturer to invest in the creation of a new brand identity, only to find it infringes a Protected Food Name. In addition, the law of “passing off” means that if produce already has an established reputation under a particular name and a new manufacturer starts attributing the same name to its product, despite the fact that it lacks certain characteristics or is not made using the same traditional methods, then they could face legal action.
When seeking legal protection for a protected food name, there are three routes open to producers. Protected Designation of Origin (PDO) status is available to food and drink manufacturers that use processes and preparations within a certain geographical location. Protected Geographical Indication (PGI) status means that the product must have a specific quality or reputation linking it to an area – examples include Melton Mowbray Pork Pie and Cornish Clotted Cream. Traditional Specialities Guaranteed (TSG) status is attributed to a traditional or customary name and isn’t limited to produce made in a specific location. For example, meat from the Gloucester Old Spot breed of pig is one of only two types of British produce which currently hold TSG status.
Food and drink manufacturers looking to make an application for Protected Food Name protection must apply to the Department for Environment, Food and Rural Affairs (Defra) in the first instance. This application is then subject to national opposition for a period of time, allowing those whom it affects to contest it, if necessary. Once any issues are resolved, the submission is then passed to the European Commission, followed by publication in the EU Official Journal which means the application is then open to further opposition. If there is no opposition, then EU-wide protection is granted.
Although Protected Food Name status is normally sought by groups of producers and can be difficult to obtain, it is not impossible for an independent food or drink producer to seek normal trade mark protection for their brand instead.
After facing some initial official opposition to its application for registration, the name Wigley Water has recently been granted trade mark protection after a claim by the applicant that the name of the spring that provided the source of the product was exclusive to the applicant, as they owned the spring.
This successful registration means the business has obtained protection for use of the Wigley Water name in connection with the sale of food and drink products for at least a decade without the need to go down the much more complex route of Protected Food Name protection.
The Protected Food Name scheme was established in 1993 by the UK government and groups of producers that want to use a geographical place name as part of their product’s brand identity should consider making an application. Although the scheme cannot stop a competitor from producing a similar product, it may help to stop them from marketing it under the same name.
© FoodBev Media Ltd 2020