14/11/2023
In a competitive market, where having a well-recognised brand on supermarket shelves is key, it’s no surprise that trade mark filings for plant-based alternatives are going through the roof. Beyond Meat alone has filed 108 trade marks at the USPTO.
With past examples of granted and rejected trademarks, Reddie and Grose outlines what is protectable and what isn’t.
Introduction
Plant-based alternative foodstuff is a growing market in Europe. As more businesses enter this sector, more applications are being made for trade mark protection for their new brands.
It is typical in this industry for the plant-based alternatives products to adopt names which reference either the animal ingredient they are replacing or the plant-based ingredient they are using instead. This practice is useful commercially as it allows consumers to identify the category of products. This can be particularly important for those with ethical or religious motivations behind avoiding animal products.
However, this clarity in identifying the nature of the goods can work against businesses trying to acquire registered trade mark protection for their product names, as Trademark Offices can perceive these names as too simple and obvious to warrant monopoly protection.
Introduction to Distinctiveness
Applications to register a trade mark require a minimum degree of distinctiveness in relation to the goods and services to be registered.
Trade mark office examiners are often tasked with analysing marks outside of their native languages and thus rely on dictionary definitions to create an ‘understood meaning’ on which they base their analysis of distinctive character.
Overcoming these objections will usually involve demonstrating either a) that native speakers of a language would not perceive the Office’s proposed ‘understood meaning’ or b) that the ‘understood meaning’ is, in fact, distinctive in the context of the goods and services.
Beyond Meat Inc
Beyond Meat Inc has been adopting a product naming strategy which uses their house mark + a descriptive noun which is conventionally used for meat-based products, e.g. ‘BEYOND BURGER’ ‘BEYOND MINCE’ and ‘BEYOND SAUSAGE’. Beyond Meat Inc’s filing strategy is extensive. Based in the US, they have filed over 600 applications outside their ‘home’ territory. In recent years, they have seen challenges to applications at EUIPO on the grounds that their product names are not distinctive enough for registration.
Beyond Meat’s first application at the EUIPO was an EU designation of IR 1139253 BEYOND MEAT, filed in late 2012. This application, which covered “Meat substitutes”, was accepted without the Office raising any objections. Following this, Beyond Meat continued applying for marks adopting this naming format, including “BEYOND BEEF”, “BEYOND SAUSAGE”, and “BEYOND MINCE”, which all covered “Meat substitutes” and were all similarly accepted.
However, beginning in 2021, Beyond Meat’s applications began to receive objections from EUIPO examiners. “BEYOND PORK” for “Meat substitutes” and “BEYOND MILK” for “products made of milk substitutes based on vegan substances” received objections because it was found that ‘BEYOND’ would be understood in the sense of ‘better, over, more than’. Combined with the other word element, this gave the descriptive meaning: ‘more than pork/milk’, ‘superior to pork/milk’ or ‘better than pork/milk’.
Beyond Meat appealed these refusals, arguing that combining BEYOND and a noun is an uncommon and distinctive combination of words and that the Office has accepted similar marks in the past (including those previously registered for Beyond Meat). However, the EUIPO Board of Appeal remained unconvinced that the BEYOND element would not be understood as set out above, and confirmed the refusal of these marks.
While the EUIPO insists it is not bound by previous decisions and that each examination is a fact-specific exercise, it is difficult to justify why BEYOND PORK would be understood as a laudatory term but BEYOND BEEF would not.
One of Beyond Meat’s most recent applications at the EUIPO was EM 018807180 BEYOND BACON and was refused for being non-distinctive. When Beyond Meat argued that that the mark would not be perceived as a promotional laudatory message, the EUIPO quoted the negative decision from the Board of Appeal for the BEYOND PEPPERONI application to support refusing the mark.
With this growing backlog of negative decisions, will it be harder in the future for Beyond Meat to register their trade marks at the EUIPO?
In contrast, Beyond Meat has made 39 applications at the UKIPO since 2012. Almost all of these were simple word marks in the format ‘BEYOND’ + [food noun]. All of these applications were accepted by the UKIPO, including the designation for BEYOND PEPPERONI. This suggests that, in this market, the UKIPO is much less stringent than the EUIPO when assessing absolute grounds of refusal for a lack of distinctive character.
Other companies struggling at the EUIPO
This difficulty in securing protection for plant-based alternative brands is not confined to Beyond Meat. One example is the Brazilian company Fazenda Futuro which produces plant-based alternatives under the naming strategy of their house mark FUTURE + a descriptive noun, e.g. ‘FUTURE BURGER’ ‘FUTURE BEEF and ‘FUTURE SAUSAGE’. Like Beyond Meat, Fazenda Futuro has received inconsistent decisions in respect of its word mark applications. For example, FUTURE MILK for “Non-dairy milk” was accepted without issue but FUTURE PORK for “meat substitutes” was refused on the basis that FUTURE would be understood as the improvement of the production of plant-based alternatives to PORK.
Another company in this sector fighting claims of lacking distinctiveness is Impossible Foods Inc, which has faced cancellation actions from Nestle against their IMPOSSIBLE BURGER and IMPOSSIBLE SAUSAGE registrations. The EUIPO Board of Appeal, having reviewed evidence and witness statements filed by both parties, was unconvinced that IMPOSSIBLE + a food noun would be understood as denoting that the ingredient has been left out or replaced by a substitute. Therefore, it concluded that these marks would be perceived as sufficiently distinctive to act as trade marks. However, we note that this decision is currently on appeal to the EU General Court. It is possible that a GC decision could provide some guidance for the EUIPO’s approach to these [house mark] + [food noun] marks and thus eliminate some inconsistency in future.
Deceptive Marks?
In the EUIPO Board of Appeal’s refusal of ‘BEYOND PORK’, they warned that “With regard to all of the goods applied for which are not pork, the sign would be deceptive if it were understood as describing pork. However, applied on the goods at issue, the consumer will understand such an indication not literally, but merely as a laudatory statement, to underline the quality of the designated products”.
We can see the EUIPO’s approach of believing a mark for plant-based alternatives would be taken literally in their refusal to MYBACON of MyForest Foods. The EUIPO Board of Appeal were not convinced that the average consumer would understand the prefix ‘MY’ as referring to ‘mycelium’ or that mycelium can act as a meat substitute. The Board found that, given that vegetarian and non-vegetarian foodstuffs are to be found near one another in the supermarket and are packaged in a similar manner, consumers would be deceived into purchasing the applicant’s products, thinking that they were purchasing bacon. As seen before with Beyond Meat and Fazenda Futuro, the EUIPO’s previous acceptance of MyForest Foods’s similar mark MYJERKY was dismissed as irrelevant.
This raises a dilemma for brand owners of plant-based alternative products who seek to reference the meat product they seek to substitute. If a name is chosen which clearly distinguishes the alternative from a meat product, adding another word element, the mark may be found to be non-distinctive. But if a name is chosen which does not clearly distinguish the alternative from a meat product, the mark may be found to be deceptive.
Conclusion / How to avoid EUIPO’s refusals
As we have seen, the EUIPO has taken an inconsistent approach regarding word mark applications. Every applicant listed above whose marks were refused as non-distinctive or deceptive could point to prior examples of the EUIPO accepting marks filed with the same naming strategy. Therefore, even if you have not received a refusal so far, your next application could result in an objection.
One solution is to claim acquired distinctive character. However, this is difficult to prove at the EUIPO. For example, surveys, particularly those collecting the opinions of consumers across multiple member states, are expensive and time-consuming to pull together. Some of the factors considered for acquired distinctiveness, including significant market share and investment into marketing undertakings, can preclude well-known but commercially smaller brands from defeating objections on these grounds.
An easier solution may be to apply for figurative marks, where the figurative components provide a minimum level of distinctive character even when the word elements are found to be non-distinctive. Beyond Meat have filed figurative applications for BEYOND NUGGETS and BEYOND TENDERS, which cover “Meat substitutes” and feature Beyond Meat’s logo, and both of these applications were accepted by the EUIPO without objection. Plant Meat Limited filed for a figurative mark comprising the packaging for their THIS ISN’T CHICKEN meat substitute. This was also accepted. However, these registrations have a different scope than word mark registrations for opposition and infringement purposes, given that the distinctive character of the marks may be identified as being outside the word elements.
Another option is registering solely an applicant’s house mark for broad ‘meat substitutes’. This strategy was pursued by Beyond Meat for BEYOND and Impossible Foods for IMPOSSIBLE. This strategy is less likely to give rise to a EUIPO examiner’s objection, as it is less likely to directly point towards an ‘understood meaning’ from which the Examiner can draw objection to, while still providing protection against imitation products.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
