For the love of food - trade mark considerations in the food tech industry

The food and food technologies industry is one of the fastest growing industries in Australia and around the world. This is partly because it is an industry that is highly diverse with various players at each level of the supply chain. Equally, the consumer base is uniquely diverse with customers in government, non-profit organisations, business to business and end-user consumers.

We explore some of the trade mark considerations and issues faced by businesses operating in food and food technologies, namely:

• Scope and coverage
• Geographical indications
• Food and the digital space

What is your trade mark and what should you cover

The diversity of the food and food technologies industry means that businesses will often deal with consumers at various levels in the supply chain. As a result, trade marks are often used across the business in various ways, some of which go beyond the original intended scope. For example, the name of a new packaging material may be used at the manufacturing, shipping and end-user stages. This will bring into play considerations around what the trade mark should be, so that it appeals at all of these stages and avoids adverse action by third parties - as well as considerations around the scope of goods and services which the trade mark should cover.

In the example presented, the business may need to consider covering packaging and may also want to include distribution and logistic services, promotion and advertising services - to name a few. In certain circumstances, it may therefore be appropriate to take a more holistic approach and think beyond the goods and services the business would traditionally seek to cover. This will ensure the trade mark will provide the appropriate scope of rights and protection.

Geographical indications

It is fairly common in the food industry to use geographical indications such as the name of a town or region to name a product or create a brand. Understandably, many businesses like to associate themselves with an area which perhaps has a significance and reputation which ascribes to the quality of certain products within that geographical region.

From a trade mark registrability perspective, the use of Geographical Indications (GI) is less than ideal. These names tend not to be registrable as a trade mark and are often faced with strong objection and opposition - see A decision likely to sting - a win for Australian Manuka honey producers regarding the Manuka honey decision in Europe.

The Australian government is presently in negotiations with the European Union regarding the use of GI in Australia. The outcome of these discussions may mean that once protected, that name may not be used by producers other than those who meet the rules protecting the GI. Originally, the EU submitted a list of 236 spirit names and 172 agricultural and other foodstuff names which it hopes to see protected as GI in Australia. That list reduced slightly after the United Kingdom left the EU. A list of the names that the EU is seeking protection for can be viewed here.

At this stage, a decision has not been reached, however it brings to light some important considerations for businesses in the food and food technologies sector as far as their trade mark portfolio is concerned and the names used for products, including:

1. Do you have any names and trade marks you are currently using that might be affected by any decision regarding GI? Now is an appropriate time to conduct a review of your trade mark portfolio and consider whether you need to make any adjustment.
2. Think about how you are using your marks including on advertisements, packaging and other business materials and consider whether adjustments might be required.
3. Think about your branding strategy moving forward. While there may have been some benefit in the past to using GI, there is likely more to gain from contemplating a unique and distinctive trade mark or trade marks alternative.
4. Will the above GI proposed regime have a big impact on you and your business? If so, consider making a submission to the Australian Department of Foreign Affairs and Trade. The official consultation period with the public has closed but you can still watch progress closely and participate if the opportunity arises.

Notwithstanding the negotiations with the EU, trying to register and indeed enforce a trade mark that is for, or contains a GI, can be problematic. Strong trade marks are unique and distinctive and while this may not necessarily form the type of connection with a region, town or the like, distinctive trade marks are usually the most memorable and grant the owners with the most valuable and easily enforceable rights.

Food technologies in the digital space

The food industry is not immune to the evolving nature of commerce and the fast growth of the digital era. Food products are used by everybody and therefore most brands are recognised and used by every consumer.

The digital world is increasingly replicating real life and new and innovative augmented reality products are allowing interaction in the digital space with consumers.

It is now possible to make transactions online for food products through NFTs and even attend a restaurant and enjoy a gastronomic experience - or attend a cooking class through the metaverse. This leaves open the possibility that your trade mark will be used in this space without your knowledge or consent.

As this technology increases, businesses in the food industry should review their trade mark portfolio and consider whether they should expand it to include downloadable virtual goods to ensure they are in a position to enforce unauthorised use in the digital world.

Key takeaways

The food and food technologies industry is broad and diverse and there are a number of considerations to take into account regarding your trade mark rights and enforceability. Some of these include:

• Who are the consumers in the supply chain who will interact with your trade mark?
• What should your trade mark cover?
• Are you using a geographical indication and does that need to be reconsidered?
• Is your trade mark being used or likely to be used in the digital world and if so, should you consider expanding your portfolio?

As one of the fastest growing industries in Australia and around the world, it is important to keep your portfolio up to date and be aware of the changes effecting your industry.