A trade mark-led battle of the vapours could be coming to the UK following a spate of legal challenges in the US. Consumer brand owners need to be vigilant and be prepared to enforce their rights if necessary.
In a rapidly-growing marketplace worth around $2.5bn (according to Wells Fargo), some entrepreneurial manufacturers of electronic vapour products in the US have faced threats of legal action after using brand names owned by established bakery and confectionery goods producers.
Names like ‘Cinnamon Toast Crunch’ and ‘Tootsie Roll’, which are owned by General Mills Inc and Tootsie Roll Industries respectively, have been used to describe liquid nicotine flavours, which are heated to create the inhalable vapours.
At a time when the UK Faculty of Public Health is uncertain about whether the benefits of e-cigarettes and vaporiser products outweigh the risks, and the BMA has called for stronger regulation, brand owners in Britain need to be wary about copycat moves to link their name to liquid nicotine flavours.
This is a rapidly-growing market led by a relatively high number of small-scale, entrepreneurial producers and each of them wants their electronic vapour products to stand out from the rest. There is obviously a temptation for makers of these innovative products to associate their liquid nicotine flavourings with those of other well-known consumer products.
Brand names owned by established coffee, food and confectionery brands are among those most at risk of this type of infringement.
Some brand owners may not be aware that they can challenge any misuse of their brand name, even if it is being used in a totally different market category from that covered by their registration.
Rarely-used provisions of the Trade Mark Act 1994 state that the owner of a registered trade mark can block the sale of a product, or registration of a trade mark in a different market category, in certain specific circumstances.
Such action might be possible, for example, if the trade mark owner can show that use of its trade mark is taking unfair advantage of and /or having a detrimental effect on its reputation. If this can be proved, then the brand owner can ask the tribunal to refuse registration and/or issue an injunction against the infringer and could potentially sue them for damages.
Similar rights of protection against reputational damage apply to Community Trade Marks obtained from the Office for Harmonization in the Internal Market (OHIM), which provide trade mark protection across EU member states.
The relevant provisions of the Trade Mark Act 1994 were successfully used in the UK in 1999 by Visa International, the globally-renowned credit card company, to block an application for registration by a Malaysian company for a brand of condoms that used the VISA name.
Since then, the corresponding CTM provisions have been used. For example, Pfizer, proprietors of the Trade Mark VIAGRA were able to prevent registration of the trade mark VIAGUARA for energy drinks.
We are advising food and drink manufacturers who think that their brand names could be infringed in this way to using watching services to alert them to any misuse. They should also conduct regular searches of online auction sites such as eBay, where electronic vapour products and flavoured liquid nicotine refills are currently being sold.
In some cases, brand owners may wish to go one step further by extending their Community Trade Mark registrations to cover the e-cigarettes and electronic vapour category, which would give them greater enforcement rights in these markets.
Mark Armitage is consultant and trade mark attorney at Withers & Rogers