Flavour Marks – Can They Become a Reality?

This post was first published on 26th November, 2014.

Here is the next post in the series of Student Blog Contest. This post is authored by Amrita Vasudevan.

Every city has its food treasures and eating haunts, and Bangalore, for example, has Shivaji Military Hotel’s Donne Biryani or CTR’s Benne Masala Dose, both of which have quite the fan following. Eating joints like these often become landmarks, and a ‘must visit’ for tourists. We often associate a particular taste or flavour with an eating joint, a sort of trademark of that business. But can we then register and protect the flavour as one?

Flavour marks, if accepted, join the list of non conventional trademarks like sound, smell, touch etc. The criteria for registration of a traditional trademark, however, do not translate well for the registration of a non-conventional mark like a flavour. For example, a flavour cannot be graphically represented. Additionally, since taste is such a subjective human experience, it escapes objective and precise definition. Some jurisdictions like the EU plan to remove the requirement of graphical representation, but there still has to be some kind of representation. Representation by depositing samples at the registering office is unfeasible as flavours change over time, besides being difficult to access.

Moreover, since trademarks cannot be functional, registering flavour marks for food products unless it acquires secondary meaning is not possible. Eli Lilly’s attempt to register the taste of artificial strawberries to mask the bitter taste of its medicine and N V Organon’s attempt to register the orange flavour of its product, were thwarted for this very reason. Furthermore, since the consumer tastes the product only after purchase, it doesn’t fulfil the ‘identity of origin’ function of traditional trademarks. The other problem that crops up with flavour marks is that it must be clearly distinguished from the natural flavour of the ingredients and if this is not done, there will be serious anticompetitive repercussions.

Recently, an interesting case involving flavour marks was decided by the United States District Court. Recounting some of the problems listed above the court rejected, New York Pizzeria, Inc. (NYPI)’s contention that the flavour of its Italian food and the way in which it plates its baked ziti and chicken and eggplant parmesan dishes are entitled to protection under Trademark Laws.

The facts of the case are as follows: NYPI accused Adrien Humbree, a former employee, of using NYPI’s recipes at a rival restaurant. The Plaintiffs claimed that this constituted “trademark infringement under the Lanham Act for copying NYPI’s distinctive flavours”. The Court held that in principle, the Lanham Act encompasses “almost anything at all that is capable of carrying meaning”. The Court did not doubt that, flavour can “carry meaning,” but that meaning entitles a mark to trademark protection only if it distinguishes and indicates the source of a product. Flavour marks may not be able to satisfactorily carry out this function. Thus, “…only when a flavour has acquired distinctiveness, or “secondary meaning” – that is, when customers have learned to associate the flavour with its source, that it has any chance of serving as a valid trademark.”

The Court highlighted the hurdle of the functionality test. Justice Costa observed that while “…people eat, of course, to prevent hunger. But the other main attribute of food is its flavor, especially restaurant food for which customers are paying a premium beyond what it would take to simply satisfy their basic hunger needs. The flavor of food undoubtedly affects its quality, and is therefore a functional element of the product.” And so the Court rejected the “half-baked” claim of the Plaintiffs.

The Court also addressed the contention of protection of plating of food as a trademark. This is particularly relevant in light of the increasing presence of food shows, blogs and not to forget, Instagram, that have exalted food presentation to an art form. Justice Costa did acknowledge that there may be rare circumstances when plating of food can be given trade dress protection. Unfortunately, in the present case NYPI was not able to demonstrate any inherent distinctiveness or acquired meaning.

In light of the above, it may seem like flavour marks are a distant reality, fortunately trade secrets and sometimes patents can come to the rescue.

– Post authored by Amrita Vasudevan

Source: here, and here

Image source/Attribution: here (This is governed by Creative Commons license)