Waitrose v Asda – an ‘essential’ trade mark claim?

As inflation hits a 30 year high at 6.2% in the last 12 months to February, households across the UK are scrambling to find ways to make ends meet. Asda have not been deaf to this and following criticisms that their ‘Smart Price’ range is not available in all of their stores at a time of unprecedented inflation, they have decided to invest £45 million into a new ‘Just Essentials’ range, to be rolled out at all stores and online this year.

Waitrose’s lawyers argue that Asda’s ‘Just Essentials’ range infringes on Waitrose’s ‘Essential Waitrose’ trade mark, which has been registered since its initial introduction back in 2009. They further note that over the past 13 years, Waitrose have invested in and have built a strong reputation for quality, standards and value, through its essentials range, which they fear Asda may freeride on.

Asda’s response? That the word ‘essential’ is a descriptive / generic term, commonly used by other retailers and is insufficiently distinctive to allow Waitrose the benefit of trade mark law.

Asda’s spokesperson may well have merit in stating the above. Trade mark law does not generally allow for the monopolisation of generic terms such as ‘essential’, as otherwise it would be too easy to infringe on trade marks, stifling competition as businesses are too scared to deploy certain common terms.  Waitrose would likely need to show that Asda’s ‘Just Essentials’ range causes confusion between the two ranges and that consumers are to an extent, deceived, when they purchase a ‘Just Essentials’ product instead of an ‘Essential Waitrose’ product.

Do consumers really think they have mistakenly purchased Asda’s ‘Just Essentials’ beef mince, instead of an ‘Essential Waitrose’ sirloin steak? The debate between budget and higher-end supermarkets is not a new one, as exemplified by recent high-profile cases including the dispute between M&S and Aldi, over Aldi’s use of ‘Cuthbert the Caterpillar’. In that case, the parties settled and Aldi continues to sell Cuthbert, showing how budget supermarkets can to a degree, successfully run the argument that consumers are not confused by the two competing goods which are highly variant in price.

It is understood that while Waitrose’s lawyers have sent a legal letter to Asda outlining their concerns, Asda have yet to formally respond to the letter and have simply outlined their views via a spokesperson. For now, the legal world watches and waits. 

What does this mean for you and your business?

Firstly, businesses should consider ways to avoid trade mark infringement claims in an increasingly competitive economic environment, to prevent wasting time, incurring legal costs and potentially having to pay damages, in defending a claim. Prevention methods include:

• Undertaking searches to ensure there are no existing registered or unregistered marks which may conflict with a proposed new mark; and
• Negotiating with marks holders for either an assignment or licence of third party marks.

Secondly, businesses should be aware of the value which trade marks bring and protect them to ensure competitors are not ‘freeriding’ on the business’ investments or damaging the value of the mark. Protection methods include:

• Pursuing infringers (whether small or large), to deter infringement and make individuals/companies think twice, before pursuing such a course of action;
• Keeping records of when businesses use their own marks, as this could be vital evidence in showing the relevant mark has a reputation / distinction to uphold, in an infringement action;
• Obtaining samples and evidence (e.g., photographs) of infringing products; and
• Considering whether there are any other intellectual property rights (e.g., patents, copyrights) infringed which could add to the pool of potential claims.

In an increasingly competitive market, it is crucial that businesses protect their investments in their brand, by taking legal action where appropriate. BPE’s litigation team are well placed to provide strategic legal advice on trade marks and other intellectual property matters, to protect and add value to your business.

For any queries relating to trade marks, other intellectual property or litigation generally, please contact Riyaz on 01242 248426 or riyaz.jariwalla@bpe.co.uk.

Recommend reading

An article by Riyaz summarising key considerations on protecting, reviewing and registering intellectual property is available here.

These notes have been prepared for the purpose of articles only. They should not be regarded as a substitute for taking legal advice.