Oct 13, 2015

Pie in the Sky? Business Making Square Pies Given Legal Warning

A company making square shaped pies has been told that it cannot call them 'square' by a rival pie maker.

Wiltshire based firm 'Eat Square' started making square pies earlier this year. However, the phrase square pie is owned as a registered trade mark by London based Square Pie Ltd who began trading in 2001. The word mark is illustrated in a red square logo as well as in black and red rectangular logos. Square Pie Ltd have asserted their rights and have filed an opposition against the registration of 'Eat Square'.

Alex Joll, the founder of Eat Square said: "We have to stop calling them square pies, so from now on they're just pies." Eat Square came into the market wanting to offer "square meals" which included square shaped pies.

Square Pie Ltd is threatening to take legal action unless the word 'square' is dropped from the branding.  If the opposition is unsuccessful Eat Square may have to change the name of the business.

It is interesting to note that a question arises as to whether Square Pie Ltd should have been granted registration for these trade marks in the first place.  The marks could be deemed as being literally descriptive of the goods that are being produced or offered in this business.

Readers should note that the trademark does not give Square Pie Ltd a monopoly on the phrase 'square pies' and it does not prevent other pie producers from producing square shaped pies, something Square Pie Ltd is not contesting. They can, however, object to uses of the trademarks that fall within the grounds of infringement prescribed under section 10 Trade Marks Act 1994 ("TMA 1994"). In Case C-291/00 Diffusion v Sadas Vertbaudet SA the Court of Justice of the European Union set out a 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".

In context, both marks are similar in the sense that they both contain the word 'square' and their respective logos are likely to go unnoticed by the average consumer. The mere fact that there exists a similar mark which serves identical goods or services could mean there is a possible infringement action under section 10(2) TMA 1994. There needs to be a likelihood of confusion for a finding of infringement under this section. Although Square Pie Ltd has been in business for 15 years it could be possible that the average consumer in Wiltshire thinks that those square pies relate to the square pies sold in London by Square Pie Ltd. They are likely to be successful in this opposition under the relative grounds of refusal.

There is a defence available to Eat Square under section 11 TMA 1994. It provides that the earlier mark is not infringed if the mark is used to describe the characteristics of the goods, provided that the use is in accordance with honest practice commercially. The use is indeed descriptive as the pies are square. There would be no defence available if the pies were a different shape to the one being claimed.

Posted by: in: Case Law, News, Trade Marks

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