British celebrity chef Jamie Oliver hit the headlines this week when his online recipes were accused of infringing a US gluten-free certification mark. The lawsuit coincides with the European Union’s recent introduction of certification rights. While an increased risk of similar infringement suits could stir up concern among European brands, lawyers are confident that the opportunities offered by the new EU marks far outweigh the risks.
The chef is being sued by the Gluten Intolerance Group of North America (GIG), whose US certification trademark for gluten-free food consists of the letters ‘GF’ in a circle, accompanied by the phrase ‘Certified Gluten Free’. This sign is only permitted to be used by vendors who have completed the organisation’s certification process. Oliver (who is not certified by the body) is accused of intentionally infringing the mark to “falsely certify” that his recipes are gluten-free. Many of Jamie’s online recipes feature a small circle containing ‘GF’, and although they do not feature the words ‘Certified Gluten Free’, these marks are alleged to be “identical or substantially similar” to GIG’s protected sign.
The dispute has grabbed attention just days after the European Union certification mark became a reality. Amendments to the continent’s trademark system have created the opportunity for a broad range of standard-setting organisations to distinguish certain goods, and prevent uncertified businesses from misleading customers about their credentials.
But will the new regime lead to an increase in disputes like the one Jamie Oliver is now embroiled in? Speaking about the US experience, Brett Heavner of Finnegan points out that the Jamie Oliver case is far from being a one-off, with certification mark related litigation not uncommon: “Cases like this happen all the time in the United States… Many companies misuse certification marks and they often get sued. This is pretty standard.”
Importantly, infringement is not always wilful. One potential pitfall for well-intentioned brand owners, according to Heavner, is the use of a protected certification which they believe is generic and descriptive. Therefore, on both sides of the Atlantic, due diligence is crucial: “Obviously generic signs like the recycling mark will probably not be owned by any organisation, but even if you are considering using a mark which you think is universal, it is important to do a search to make sure you will not be infringing someone’s rights.”
Fellow US certification mark expert Monica Riva Talley of Sterne, Kessler, Goldstein & Fox also suggests that some infringements occur “perhaps because these marks tend to describe, or at least suggest, the characteristics they certify”, as well as from wilful flouting of the rules. Furthermore, with the availability of this new right in Europe, UK trademark attorney Amy Galloway of Bond Dickinson also identifies a risk that some companies will fail to realise that particular marks, such as those indicating gluten-free or vegan products, can only be displayed on certified goods. She, like Riva Talley, therefore emphasises the importance of proactive marketing campaigns by certification bodies to make sure that businesses are aware of the necessary processes for using protected signs.
While accidental infringement can occur, Heavner notes that most US disputes involve blatantly intentional imitations of certification marks. He explains that there is no problem with brands using words to truthfully describe their products; the difficulty chiefly arises from the use of confusing logos, designs, shapes and colours.
Though something to be mindful of, the new EU mark will mainly bring benefits – for groups in the US as well as Europe – according to the experts we spoke to. “My takeaway is that the opportunities far exceed the pitfalls; this is great for certifying organisations in Europe”, says Heavner: “With certification rights previously limited to some EU member states, registration used to be a real pain in the neck. I can now tell my clients that the hodge-podge country-by-country protection they were getting in the past has been replaced by an integrated Europe-wide system. Many organisations from outside the EU will be interested in these registrations, I think.”
He continues: “Relying on different pieces of national legislation to enforce certifications can be difficult and quite expensive. Clients can find themselves dependent on false advertising and passing-off charges to uphold their rights, which is not ideal… From my perspective, these changes recognise the realities of the market place, and serve consumer interests.”
Galloway is similarly positive: “It is a good addition to EU trademark law, and an opportunity for national mark holders to get a uniform set of protections across the member states. A harmonised approach will save on costs and make rights easier to administer across the continent.”
As well as being crucial for standard-setting bodies, certification marks should also be embraced by brands, which can use these signs to further distinguish themselves in terms of quality, safety, or ethical standards. Some European businesses may need to review and tweak their branding and packaging, but the cross-border consistency created by recent amendments to EU law may also help them to avoid infringement when operating across several national jurisdictions. As such, the recent trademark reforms offer new opportunities for brand owners, consumers and certifying bodies alike.