An apple a day is said to keep the dentist away. But apparently it doesn’t keep the trade mark attorneys away, as we discover in this article about the importance of branding for fresh produce.
Everyone knows that Pink Lady® is the name of a particular variety of apples. What is much less well-known is how it came in to being. This famous variety was created in 1973 by John Cripps, the plant-breeder who crossed a ‘Golden Delicious’ apple and a ‘Lady Williams’ apple. The new variety was named ‘Cripps Pink’, and only the very best ‘Cripps Pink’ apples were deemed good enough to be sold under the brand name Pink Lady®.
Because plant-breeders are always looking for ways to improve the quality of their produce, new varieties were created over time, linked to the original ‘Cripps Pink’ variety. The best of which were also marketed under the brand name Pink Lady®.
What makes this example so juicy? The fact that Pink Lady® is a registered trade mark, while other well-known apple names such as ‘Golden Delicious’, ‘Jonagold’ and ‘Elstar’ are, instead, plant variety names, or denominations. Although used in relation to the same products, the function of each is quite different.
A registered trade mark is a guarantee of origin, providing the owner with exclusive rights to a specific name, logo, or symbol in relation to specific goods or services. It helps the owner of the trade mark prevent others from using the same or similar marks in a way that could confuse consumers. A plant variety denomination on the other hand is the generic name for a specific plant variety, representing a unique genetic makeup, which may (and in some cases must) be used by everyone who produces or sells that specific variety: the name is a unique identifier for that particular plant variety. As such, it denotes a quality or qualities of but not the origin of the product, unlike a trade mark. A natural result of this is that an existing plant variety denomination effectively blocks trade mark protection in relation to the same goods. ‘Cripps Pink’ cannot be registered as a trade mark for apples because it is an existing plant variety denomination and it would not be fair for one party to prevent the fair use of this descriptive name by everyone else. It also means that you cannot use the identical plant variety denomination twice for the same goods. For example, an improved version of ‘Cripps Pink’ would need a new name.
Although in some cases plant variety names are used commercially, many plant-breeders nowadays choose to register a commercially less attractive name or even a code as a generic name for a new variety. They can then select and register a fanciful, distinctive name as a trade mark for the goods, helping consumers remember and identify the brand – hopefully choosing the trade mark owner’s products over those of competitors. The advantages of using a trade mark registration over just the plant variety denomination are obvious:
Brand owners can prevent others from using identical or similar names, even if the goods themselves are essentially identical (eg being of the same apple variety). This helps them protect and control their brand identity, reputation and investment. It also enables them to promote just their own product, versus the whole variety.
Brand owners can use the same trade mark for multiple plant varieties, thus improving the goods whilst keeping the goodwill connected to the brand.
Brand owners can create a series of marks for goods that share certain qualities, for instance, colour, a specific taste, a production method, extended shelf life etc.
A registered trade mark adds value to a business, being an intangible asset that can be promoted, licensed, franchised, or sold, providing opportunities for expansion and revenue.
The trend for branding in fresh produce looks set only to increase, which means that the market (and trade mark register) will only get more crowded over time. When choosing a trade mark for fresh produce, therefore, it is important not only to check the trade mark register for any earlier conflicting marks (as with any new product or service) but also to check that there are no existing plant variety names that may block your trade mark application. We recommend seeking brand protection advice at any early stage to make sure any investment goes in to a brand name which is clear for use and registration and which will stand out in the market to drive future growth.
If you have any questions or for more information, please contact Claudia Festen or your usual Kilburn & Strode advisor.