For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

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Monday, 14 March 2011

Innocent ... until politely requested to be guilty

The IPKat has received various pokes and prompts to write something on the Innocent dispute, which has received some coverage in the British press.  Fortunately, before he could respond to any of them, his friend Fredericka Argent kindly delivered the following note, which pretty well says it all:
"The Daily Mail reports a story about Dawn Reid, a small business owner and vendor of a food supplement called ‘Innocent Vitamins’, who has been asked by Innocent Drinks, the international smoothie company part-owned by Coca Cola, to cease trading under that name. Mrs Reid’s food supplement, in the form of pills, is contained in a tub with the name ‘innocent vitamins’ in lower case letters, followed by the slogan ‘all goodness. no badness’. Since January, the food supplement has been sold for £6.99 per tub in Waitrose supermarkets, but it now faces being taken off the shelves. 
Mrs Reid has argued that the drinks and vitamins markets are separate and non-competing, but Innocent Drinks says that both their drinks and Mrs Reid’s pills are seen as health products and would therefore be competing goods. Innocent Drinks also argues that the lower case typeface of ‘innocent vitamins’, is written in too similar a style to its own logo: “innocent pure fruit smoothie”. The drinks company has claimed that these similarities have led to confusion among their consumers, but Mrs Reid claims that she has: “never had a buyer or customer who’s had any brand confusion.”

Interestingly, Marketing Week reports that Innocent Drinks’ lawyers wrote to Mrs Reid two weeks after they had applied for a Class 5 trade mark classification. Goods within Class 5 fall under the umbrella term ‘pharmaceuticals’, but include anything from antibiotics to hair care preparations and gluten free food. Also within Class 5 are vitamins, minerals and supplements. This makes one wonder whether Innocent Drinks’ fresh application caused them to scour the ‘Health’ aisle of supermarkets for goods which might be in competition with theirs. 
Objectively, Mrs Reid’s argument may seem like a fair observation, and it may even remind readers of another ‘David and Goliath’ battle in the infamous case of GOLDEN BALLS, the mark owned by Gus and Inez Bodur, who faced opposition in their application for a Community trade mark from Intra Presse, the French company which organises the ‘Ballon D’Or’ (Golden Ball), the European Footballer of the Year Award [on which see the IPKat here and in earlier posts]. In that case, quite rightly, the Office for Harmonisation in the Internal Market (OHIM) ruled that the two marks were visually and phonetically different, not least due to the linguistic differences between them. This decision was followed by bullying tactics from the large French company, which proceeded to file a notice of appeal against the OHIM decision which was 600 pages long.  However, in battle of the two ‘innocents’, it looks like Innocent Drinks may be raising a fair complaint: 
First, the reality of the brands market is that commonplace words often become trade marks, for example through acquired distinctiveness. Some obvious examples of this would be ‘Apple’ for computers, ‘Orange’ for telecommunications and the prefix ‘easy’ when applied to certain services. 
Secondly, here it is not just simply the use of the word ‘Innocent’ that has stirred Innocent Drinks into action: comparing the get-up of the two products, there is little doubt that both the typeface as well as style of the Innocent Vitamins packaging are highly similar to those of Innocent Drinks. The unique selling point of Innocent smoothies has always been that they contain all natural ingredients with no added sugar and ‘no funny business’. This idea has been prevalent in the company’s advertising campaigns and slogans. Similarly, Innocent Vitamins is marketing itself as a healthy, sugar-free food supplement that contains ‘no badness’. As such, while Mrs Reid may not have realised it when branding her products, there is certainly a feeling here of a smaller product trying to take unfair advantage of the success of an earlier global product. This is especially so since both companies are in the business of health foods, even if they are likely to be stocked in separate aisles in the supermarket. 
Thirdly, Innocent Drinks appears to have acted quite reasonably here. Defending his position, Innocent Drinks co-founder Richard Reed says: “Using such a distinctive name in a similar category is not an appropriate thing for another company to do... We have given the company a way out by respectfully asking them to stop using the brand name, and doubt that most other companies would be so tolerant. We have to protect our brand.”

So, while any company that has links with the Coca Cola conglomerate is unlikely to be seen by the public as the ‘good guy’, it does appear that on balance, Innocent Drinks is well within its rights to act in the way that it has. 
In terms of legal action, for the moment it does not look as though this trade mark skirmish will turn into a battle: Mrs Reid has said that she wishes to seek an out-of-court settlement with Innocent Drinks, since she does not consider the link with them to be of any benefit to her. Advice to readers is therefore to watch the space in their local Waitrose ..."
The IPKat hopes that the gently-gently approach of Innocent/Coca Cola will work and that it will encourage other big brand portfolio owners to tread equally gently.  He remembers, in his days as an IP kitten back in the 1970s, asking one of the in-house IP heads at Unilever why it was that, with such a large number of registered IP rights, their name, and the names of their brands, were so rarely featured in the published Law Reports.  He was told that the company's softly-softly approach -- sometimes even offering to contribute towards the cost of reprinting the other party's stationery -- paid for itself in terms of cost-effective dispute resolution and generated respect and even some goodwill from third parties.  Does this still happen, he wonders?

11 comments:

Anonymous said...

I started reading this piece expecting to learn that the lesser known 'innocent' (i.e. the vitamin seller) had been in trade for longer than its more famous namesake, and that some interesting issues might arise. Instead it seems they have only been trading since January.

Is that right, or is there a longer history before the Waitrose trade?

If the vitamin business does only have a couple of months of trade under its belt it seems to me to be an unanswerable case of passing off. Can anyone enlighten me as to any viable defence? The claim that Mrs Reid has “never had a buyer or customer who’s had any brand confusion [to the best of her knowledge” does not impress...

Aaron Wood said...

the filing was not done prior to the scour. It was done after locating the problematic product.. given that it is a new product, the little person is unlikely to have passing-off rights (there might be a litte ex turpi in there for good measure) so no rights to oppose Innocent drinks reg of the mark. Very soon we have 10(1) infringement and the ability for summary jment.

Anonymous said...

What I found really surprising is that most DM readers have posted comments in favour of the drinks company. I was expecting to see the usual crap about how the law is an ass and how it's all the fault of NuLab and the immigrant scum and how the BNP will fix everything.

Anonymous said...

Innocent Vitamins' choice of typeface certainly doesn't seem entirely, er, innocent.

Anonymous said...

Anonymous... you are of course forgetting that the Directive is the EU dictating in the face of our sovereign right to regulate our own TM matters : )

Anonymous said...

Quote from a Daily Mail article on the subject (http://www.dailymail.co.uk/news/article-1365443/Innocent-Drinks-set-inot-battle-Dawn-Reid-Innocent-Vitamins.html):

"She [Mrs Reid] said she was aware of the existence of Innocent Drinks, known for its fruit smoothies, when she came up with the name, but never imagined it would see her as a competitor."

As mentioned in the IPKat article, the whole get-up (font, lower case text, nothing bad etc. etc.) is so similar to that of the Innocent smoothies products that I would be shocked if there was not substantial brand association and confusion in the mind of the buyer.

IMHO, *really* not a very clever thing to do Mrs Reid.

David said...

I looked at the image before I read the article and the first thing I thought was "innocent smoothies have started in vitamins".

Doh.

Anonymous said...

lol @ comment about the EU! i wonder if the DM ever covered the ecj's ruling in the arsenal case. had all the makings of a DM classic.

Katrina Burchell said...

As the current head of trade marks at Unilever, and a reader of your blogs, I'm finally drawn to answer your musings as below:

"He remembers, in his days as an IP kitten back in the 1970s, asking one of the in-house IP heads at Unilever why it was that, with such a large number of registered IP rights, their name, and the names of their brands, were so rarely featured in the published Law Reports. He was told that the company's softly-softly approach -- sometimes even offering to contribute towards the cost of reprinting the other party's stationery -- paid for itself in terms of cost-effective dispute resolution and generated respect and even some goodwill from third parties. Does this still happen, he wonders?"

as one of the world's largest trade mark owners, we take our rights seriously and defend them where necessary. It is however always our principle thought to focus on business and pragmatism and to act in the interest of our shareholders and not that of our lawyers pockets. An innocent (excuse the pun) or unwitting infringer may be treated with certain considerations although paying for someone else's mistakes or lack of proper trade mark mark advice is not part of, nor ever will be part of, our strategy. I like to call our approach a sensible, reasoned, pragmatic one and whilst we have certainly evolved since the 1970s we still like to follow our founder's philosophy about both "doing good" and "doing good business".

Anonymous said...

OMG Ms Burchell take it easy! Jeremy just made a casual comment about his own experiences. You don't need to get paranoid about protecting Unilever's reputation and boast that you are "doing good". Besides, how can Unilever claim to be good after harming the poor orang utans to get palm oil?

Anonymous said...

Has anyone seen this before?

http://www.walkermorris.co.uk/ohim-squeezes-fruit-juice-registrations

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