Our fascination with cooking and cooking shows seemingly has no bounds.

Viewer rates are high and climbing for television programs like MASTERCHEF.  As are the sale of cook books.  We want to create things and cooking is a relatively easy way to showcase our talents. And this trend is not limited to New Zealand.  Apparently cooking is the 'new black' of socialising and entertaining ourselves globally.

Not surprisingly then we see that businesses in this area are looking at expansion plans.  Social cooking classes are growing hugely in popularity and budding chefs are eager to get their hands on any tools that can help create that 'five percent extra magic' in the kitchen.

International cooking schools have their eye on New Zealand.  The Le Cordon Bleu Acadamie D'Art Culinaire De Paris cooking school "Cordon Bleu" will open in Wellington in August offering a range of course and diplomas.  This school started over a century ago teaching culinary skills to French students. It has since expanded its operations immensely. Not only does it have 40 culinary schools throughout Europe, North America, South America and Australasia, it also sells gourmet food products, cooking equipment, clothing, books and other accessories under the LE COURDON BLEU brand to the world. My only daughter is currently in London doing a Patisserie course at Cordon Bleu and loving it.

Brands are key

But at the core of every business is its brand.  That is the way the public link the products being offered with the provider of those products.  With many businesses offering the same or very similar products, there is a strong need for differentiation.  While this can be achieved through quality, range of products, delivery etc, one of the easiest ways to differentiate a business from its competitors is through its brand.  Having a strong, unique brand pays for itself many times over during the life of the product.

The LE CORDON BLEU name has a wonderful origin that dates back to 16th century France. As the story goes, King Henry III awarded the Cross of the Holy Spirit to an elite group of French knights who would wear the crosses around their necks by a blue ribbon. The knights became famous for their lavish feasts, and LE CORDON BLEU has been synonymous with excellence in cooking and fine food products ever since. The reputation only enhanced with the establishment of the Cordon Bleu pre-culinary school in Paris in 1895.

Protect your brand

With an intention to do business in New Zealand, Cordon Bleu has taken steps to register different variations of its brand in New Zealand for the products it offers.  But it recently struck a wall when it went to register LE CORDON BLEU for certain meat products.

The Intellectual Property Office of New Zealand refused to register LE CORDON BLEU essentially on the basis that LE CORDON BLEU was a laudatory term and that other traders of meat products might wish to use those words to communicate to consumers that their products are of the highest quality.  This decision was appealed to the High Court.

Don't take no for an answer

The High Court of New Zealand held that the trade mark LE CORDON BLEU was inherently distinctive for 'meat, poultry and game, and meat extracts'.  In overturning the decision of the Assistant Commissioner of Trade Marks the Court provided some useful guidance on the registrability of trade marks.

The Court found that LE CORDON BLEU was inherently distinctive for the following reasons:

  • the word 'LE' added a distinctive element
  • LE CORDON BLEU was a proper noun used exclusively by Cordon Bleu for over 100 years
  • the French wording added to the distinctive character of the mark
  • the English translation of the mark (The Blue Ribbon) had no direct connection to the products at issue
  • there was no evidence to suggest other traders were likely to use LE CORDON BLEU in the course of their business
  • LE CORDON BLEU had been accepted for similar products in Australia, the United Kingdom and in many other countries.

The Court went on to consider whether, if the trade mark had not been inherently distinctive, the trade mark could have been registered on the basis that it had acquired distinctive character, either as a result of use or of any other circumstances.

The Court gave useful guidance on the meaning of 'any other circumstances' stating that this included, but was not limited to, circumstances where:

  • goods or services could, on a reasonable basis, be said to be fairly closely allied to the pre-existing fields of the applicant's activities
  • the trade mark is another in a distinctive family of marks to which distinctiveness will already attach
  • the mark forms part of a well-known business name but has been used in only a limited extent as a trade mark
  • subsequent events assist in establishing the essential quality at the time of registration.

Taking these factors into account, the Court held LE CORDON BLEU would also have been registrable on the basis that it had acquired distinctiveness through 'any othercircumstances'.

The vital ingredient

Cordon Bleu was right not to give up on registering its brand and the fight proved that.  Sometimes it takes a bit of effort to secure your brands - the registration process is not a rubber stamping exercise. Certain criteria must be met. But if your brand meets that criteria, make sure you get the rights you deserve as it is vital to the marketing and promotion of a business.  It helps hugely if a strong distinctive brand chosen at the outset!

Bon Appétit!

An edited version of this column was published in NZRetail magazine, issue 708.