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From Katfriend and occasional contributorEmma
Perot comes a fascinating look beneath the crust of a pie-based
dispute that has intrigued a number of our readers. It hasn't got to court and
almost certainly won't. But it does raise issues. In fact, were it not for the
fact that it really happened, it could be the basis for a typical law school
exam question. This is what the fuss is all about:
Pie-maker Square
Pie, of Spitalfields
Market fame, has taken legal action against recently established
rival pie maker, Eat Square.
The dispute concerns Eat Square’s name as well as use of the word ‘square’ to
refer to their savoury filled pastry pies. Square Pie has filed opposition
proceedings at the Intellectual Property Office against the registration of the
words ‘Eat Square’ as a United Kingdom word mark. Eat Square, established in
2014 in Wiltshire, has removed all references of ‘square pies’ from its website
but continues to trade under the name Eat Square.
Square Pie trade mark
Square Pie Ltd is the owner of a registered trade marks for
the words ‘Square Pie’ contained in a red square logo as well as in black and
red rectangular logos. On the basis of these trade marks, Square Pie has
asserted its right to prevent Eat Square from using the word ‘square’ to refer
to their pies. Should Square Pie have received these trade marks in the first
place? The trade marks are literally descriptive of the goods being produced by
the company, but Square Pie first secured registration two years after
establishing its business and it is likely that it acquired distinctiveness
during the period leading to its successful registration.
The trade
mark does not give the owner a monopoly on the phrase ‘square pies’. Nor does
it prevent other pie makers from producing square pies, an act which Square Pie
is not contesting. Rather, the company can object to uses of the trade mark
that fall within the grounds of infringement under s.10 Trade Marks Act 1994
(TMA 1994). In Case
C-291/00 Diffusion SA v Sadas Vertbaudet SA the Court
of Justice of the European Union (CJEU) set out strict criteria for identity
between marks:
“a sign is
identical with the trade mark where it reproduces, without any modification or
addition, all the elements constituting the trade mark or where, viewed as a
whole, it contains differences so insignificant that they may go unnoticed by
an average consumer.”
On this
basis, a product that is a square pie is not identical to the words ‘Square
Pie’. However, it is clear that the marks are similar, in that they both
contain the word ‘Square’ and the coloured background and stylized text used in
the parties’ respective logos are unlikely to go unnoticed. Based on similarity of the marks and identity of the goods,
there is a possible infringement under s.10(2) TMA 1994. There needs to be a
likelihood of confusion for a finding of infringement under this section.
Square Pie is known for making square pies, in contrast to the traditional
round shape, and has been selling these products for the past 15 years. Square
Pie products sell in London in shops and through online sales via Tesco and
Ocado, whereas Eat Square currently sells its goods in markets many miles away
in Wiltshire and Somerset. The average consumer of pies may think that the Eat
Square’s pies originate from Square Pies if the mark if used at the point of
sale, as customers may think that Square Pies has expanded their distribution.
There is, however, a defence to the use of the phrase
‘square pies’. Under s.11 TMA 1994, a registered trade mark is not infringed if
the mark is used to describe the characteristics of the goods, provided that
the use is accordance with honest practice in commercial matters. The use is
descriptive as the pies are indeed square. To put this in to context, if the
mark in question was ‘triangular pies’ and Eat Square was using this mark to
advertise its pies, there would be no defence since its pies were not
triangular in shape. Similarly, if the mark in question was ‘chicken pies’, Eat
Square would not be infringing the mark (assuming honest practice) by
advertising its chicken pies under this phrase, but would probably be
infringing if they sold pork pies under that same phrase.
Less clear cut is the qualification of honest practice. In
Case C-228/03Gillette
Co v LA-Laboratories Ltd Oy, the CJEU stated that use that does not create
an impression of commercial connection or take unfair advantage of the earlier
mark’s distinctive character or repute will be considered honest practice.
Eat Square’s owner had claimed that this name and choice of shape was
based on the idea of a ‘square meal’. Honest practice is difficult to assess as
the owner may have chosen to use the phrase as part of his ‘square meal’ theme,
but the use of the word isn’t necessary to convey the shape of the pies. If Eat
Square had made round pies instead, would they have advertised them as such?
The author welcomes opinions on whether readers think this is a simple case of
descriptive use or if Eat Square was trying to benefit from Square Pie’s
reputation.
Eat Square trade mark
Square Pie has filed opposition proceedings against the
registration of ‘Eat Square’. ‘Eat Square’ appears to satisfy the criteria for
registration since it is not prima facie barred under the absolute grounds for
refusal under s. 3 TMA 1994. The name alludes to a square meal, but is not
descriptive as such. However, in terms of relative grounds, Eat Square is
similar to Square Pie due to the use of the dominant word ‘square’ as well as
the food theme of the names. Both names also have the same number of syllables
and consist of two words comprising of 9 letters. The identical nature of the
goods which is to be taken into account in making a global assessment of
similarity of the marks is also a contributory factor. The similarities are
such that the average consumer is likely to be confused into thinking that Eat
Square’s pies are made by Square Pie. Square Pie are likely to be successful in
this opposition under the relative grounds as refusal.
Square off
As the pie makers prepare to square off, the inhibiting cost
of this issue could negatively affect Eat Square’s cash flow. Founder Alex Joll
has stated that, even without litigation, the dispute will cost him between
£2,000 and £10,000 to resolve. On the other hand, Square Pie is currently
crowdfunding a bond to finance expansion and has raised over £602,000.
According to its Crowdcube profile, its turnover was £2.6m last year, putting
the established business in a better position to fight a trade mark battle.
The case details for the opposition proceedings indicate
that a defence has not yet been filed. With financial restrictions in mind, it
would be more prudent for Eat Square to change its name. It would be
strategically useful to make the change while the issue is still hot, to take
advantage of the press attention so that customers are notified of the change.
With regard to the descriptive use issue, Eat Square has removed all references
to the word ‘square’ on its website except when referring to its company name.
It seems that Square Pie will bring a claim for infringement if East Square
recommences use of the phrase. Since litigation should always be the last
resort, both parties should get together and attempt to come to a settlement
that is literally fair and square.
Those conducting or litigating square food litigation may be interested in an Israeli decision relating to the likelihood of confusion (or otherwise) between square felafel and square hummus plates:
Public record shows the SQUARE PIE logo dates back to 2003 / 2004 : it's one of those where there's "just enough" added matter to carry the word-element over the "distinctiveness" hurdle. The Application for EAT SQUARE (word) was filed in 2015 and there's no Representative on record. Another of those cases where an Applicant ought - in advance of filing - to have checked records for each of "EAT" and "SQUARE" and anticipated problems. Would have been much more interesting if the registrations had (say) dated from 2013 and carried a lot of graphics to support the text SQUARE PIE .....
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Those conducting or litigating square food litigation may be interested in an Israeli decision relating to the likelihood of confusion (or otherwise) between square felafel and square hummus plates:
ReplyDeletehttp://blog.ipfactor.co.il/2015/02/22/humus-squared/
How about crowd funding a revocation action against the square pie mark for lack of use?
ReplyDeleteKant
Public record shows the SQUARE PIE logo dates back to 2003 / 2004 : it's one of those where there's "just enough" added matter to carry the word-element over the "distinctiveness" hurdle. The Application for EAT SQUARE (word) was filed in 2015 and there's no Representative on record. Another of those cases where an Applicant ought - in advance of filing - to have checked records for each of "EAT" and "SQUARE" and anticipated problems. Would have been much more interesting if the registrations had (say) dated from 2013 and carried a lot of graphics to support the text SQUARE PIE .....
ReplyDelete