'Just Essentials by Asda' – essentially trade mark infringement?
Supermarkets protecting their Intellectual Property (IP) rights remains a topical issue, with the latest battle relating to Asda's newly announced 'Just Essentials by Asda' range. During its recent announcement, Asda promised this range would help shoppers navigate the increasing cost of living by providing a line of low-cost products in its stores in place of its previous 'Smart Price' campaign. However, Waitrose asserts that the branding is too similar to its well established 'Essential Waitrose' range, which has been used since 2009.
Summary of the dispute
Although Asda's new product range is yet to reach the shelves, Waitrose has already objected to its name. Waitrose alleges that Asda is attempting to ride on the coat tails of the strong reputation of its own budget friendly range, which they state, "is known for value, quality and higher welfare standards".
To date, Asda has not yet responded to Waitrose's letter asserting trade mark infringement. Although, an Asda spokesperson has said: “The word ‘essentials’ is a generic and commonly used term by retailers to describe their value product ranges”. From the statements made so far, it is likely Asda will argue it does not infringe Waitrose's trade mark as it is descriptive of the kind, value and intended purpose of goods, and therefore should be revoked. Waitrose will then have to argue that the trade mark is sufficiently distinctive.
Trade mark infringement
Waitrose owns a word trade mark for 'Essential Waitrose' which it has held since July 2019. It also had a figurative trade mark, registered from August 2009 to April 2019. Both trade marks were registered under classes relating to a variety of goods, from fresh produce to cleaning products and packaging.
In order to succeed in its case for trade mark infringement, it would be necessary for Waitrose to demonstrate:
- Asda is using an identical sign in relation to identical goods which are identical with those for which Waitrose's mark is registered;
- Asda is using an identical or similar sign for similar goods, or a similar sign for identical goods - and there is a likelihood of confusion on the part of the public; or
- Asda is using an identical or similar sign for goods (regardless of similarity) and the use is detrimental to, or takes unfair advantage of, the distinctive character or repute of Waitrose's mark.
In the event that the marks are not deemed to be identical, Waitrose may face an uphill struggle to succeed in showing customer confusion; Aldi has set a precedent that customers are deemed to be aware of which supermarket they are in when browsing and buying goods.
Asda has already commented that the word 'essential' is a term describing characteristics of the goods i.e., referring to 'absolutely necessary' goods/groceries. It looks as if Asda would therefore be arguing that Waitrose's mark was registered contrary to section 3 of the Trade Mark Act 1994, which states that the following shall not be registered:
- trade marks which are devoid of any distinctive character (s3(1)(b)); and
- trade marks which consist exclusively of signs which designate the characteristics of the goods or services, such as their value (section 3(1)(c)).
It has been reported that the 'Essentials by Asda' range has already cost multiple millions, as Asda moves to become the second largest supermarket in the UK. While this dispute is only in its infant stages, it will be interesting to see if it develops and to what extent this is done in the public domain. This is another example of a retailer heavily investing in arguably contentious branding and facing immediate objection. Again, it is very unlikely that Asda will have proceeded without careful consideration by their legal and marketing teams. No doubt the benefit was therefore perceived to outweigh the risk.
In light of the #FreeCuthbert dispute between Marks & Spencer and Aldi (articles here and here), Waitrose may well approach the dispute more cautiously to avoid another public IP spat effectively decided on social media in the court of public opinion. It will be interesting to see whether either Waitrose or Asda do choose to check out of this one early.