Food is a language that connects everyone worldwide. Cuisines change every few hundred miles, food habits and preferences vary with the climate, and families have their own culinary secrets that get passed on from generation to generation. Everyone has something to share and protect. It comes as no surprise, therefore, that the commercial food industry is so crowded and heavily contested. But, as with any form of business, the food industry is also not immune to risks, including from counterfeiters and imitators.
Food can be protected in many ways, including through intellectual property. IP protection in the food industry in India is complex and can include several options, such as trademarks, trade dress, trade secrets, patents, and copyright. For this note, we highlight some aspects of trademark protections that are available in the food industry in India.
A brand is often the prime determinant of the success of a food company, food product, or a restaurant. With increasing commercialisation, food has become a lot less about the taste and more about how it appears. Consequently, it has become necessary for chefs, restaurant owners, QSR companies or FMCG companies to create unique identities and brand recall for their products among consumers.
Protection under Trademark Law
Under trademark law, a brand can protect several aspects of its business. These include traditional or conventional elements such as names, recipes, taglines or logos. Protection is also granted for non-conventional aspects such as shapes, store layouts and decor, and motion marks.
Under the international classification of goods, a brand owner can apply for a trademark under several classes for different categories of food, e.g., Class 29 for ‘Dairy, poultry, etc.’[E.g.: ‘’ for milk and dairy products]; Class 30 for ‘Food products like rice, coffee, chocolates, flour, etc.’[E.g.: ‘’ for coffee, ‘Cadbury’ for chocolates, ‘’ for biscuits]; Class 32 for ‘Beers, water and non-alcoholic drinks’[E.g.: for beers, mineral water, etc., ‘Bisleri’ for drinking water, soda, etc.]; Class 43 for ‘Services of food and drinks’[E.g.: , Café Coffee Day, ].
Protection of Traditional Trademarks
To register a trademark in India, one must follow the process outlined by the Trade Marks Act, 1999 (“the Act”), which includes selecting a unique and distinctive name, logo, or slogan for the food item, conducting a trademark search to ensure that the chosen name, logo, or slogan is available for use, filing a trademark application with the appropriate office, and awaiting final office approval for the application.
Once a brand obtains registration for its name, tagline or logo, it is granted exclusive rights to use the trademark in connection with its applied class of goods or services in the country. Such use can help build brand recognition and gain competitive advantage. A food product or dish may be protected under trademark law if it has acquired a distinctive name (e.g., ‘Oreo’), logo (e.g.,), tagline (e.g., ‘Amul: The taste of India’) or other identifying feature that distinguishes it from other similar products in the market.
In the case of Impresario Entertainment & Hospitality Pvt. Ltd. v. M/s. Urban Masala LLP [I.A. 7447/2017 in CS(COMM) 441/2017, order dated 10 July 2017], the Delhi High Court granted an interim injunction to the plaintiffs restraining the opposite party from the use of the trademark “SOCIAL”. The Court noted that the word ‘Social’ is arbitrary with respect to restaurants, and terming it generic would be prejudicial to the party which owns such mark.
Protection of Recipes
Unique and original recipes created by individuals can be protected under different kinds of intellectual property, including patents, copyrights or trade secrets. Protection may be sought under patent law for innovative recipes, methods of production or for the structure of food and confectionary products so long as they meet the requirements under Section 3 of the Patent Act, 1970. For instance, in 2020, homemaker Shubhangi Patil, was granted a patent for her recipe of ragi walnut soup. However, in case the product fails to come under the purview of patentability, one can write a cookbook with the recipe and get a copyright for the published book. Therefore, even though third parties may copy the food recipe, it will still be recognised as an original and genuine work of the copyright holder. Further, recipes also would qualify for protection as a trade secret. Popular brands such as KFC and Coca Cola have protected their iconic recipes through trade secrets in order to avoid disclosure to the public by way of patents or copyrights.
Protection of Non-traditional Marks
A trademark can also be obtained for non-traditional aspects of a business such as store layout, décor, restaurant, food designs or shapes, sound or motion marks, etc.
In ITC v. Central Park Estates [2022 SCC OnLine Del 4132], the Delhi High Court held that “BUKHARA” qualifies as a well-known trademark. The conglomerate ITC started the ‘Bukhara’ restaurant in the late 1970s and also acquired trademark registrations for the Bukhara logo and word marks in 1985. The restaurant has a unique decor, wooden menus, and a specially designed uniform for staff. The defendant set up a restaurant under the name, Balkh Bukhara, and adopted several characteristics and features similar to that of ITC’s Bukhara. Pursuant to the order, the defendant was injuncted from using the menu, uniform, and cutlery, which were similar to ITC’s Bukhara.
Similarly, in Merwans Confectioners Pvt Ltd v. Sugar Street and Ors [IA No. 1 OF 2019 in CS(L) No. 1100/2019, order dated 17 December 2019], the plaintiff, a well-known bakery in Mumbai, obtained an injunction in the unique decor, layout and design of their store across their 24 franchisees against M/s Sugar Street at the Bombay High Court. As per Merwans, Sugar Street (their erstwhile franchise partner, and also engaged in a bakery business) had infringed their rights by the use of similar brown tiles, store layout, décor and design, despite their franchise agreement having lapsed.
It is also possible to register a shape mark to protect the unique shape of the food items associated with any particular brand. In terms of protecting the shape of a food product or dish, it has to be distinctive and non-functional. For example, the shape of Toblerone chocolate bars has been registered as a trademark in several countries, including India.
In Gorbatschow Wodka Kg v. John Distilleries Limited [2011 (47) PTC 100 (Bom)], the Bombay High Court, while adjudicating on whether the unique shape of the Gorbatschow Wodka bottle is eligible for trademark protection or not, observed that
“…Section 2(zb) of the Trade Marks Act, 1999 defines the expression ‘trade mark’ to mean “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others” and to include the ‘shape of goods, their packaging and combination of colours’. Parliament has, therefore, statutorily recognized that the shape in which goods are marketed, their packaging and combination of colours form part of what is described as the trade dress.”
Even sound marks have proven to be effective in establishing brand recall value. Iconic jingles and tunes composed for certain food brands have left lasting impressions on consumers. Rule 26(5) of Trade Mark Rules, 2017 provides provisions for the registration of the sound trademark, and Britannia Industries has registered its ‘Four note bell sound’ as a sound trademark in India.
Motions involved in the culinary process have also been granted trademark protection. In Europe, Nusret Gökçe (popularly known as ‘Salt Bae’) succeeded in registering a motion trademark for a video of him sprinkling salt over the meat, which went viral in 2017.
The Indian food industry has immense potential in terms of developing and protecting intellectual property. With the advent of globalization and rise of competition in the food business, a lack of IP protection might lead to brand owners effectively serving up their goodwill on a platter to counterfeiters and copycats. Brand owners must be proactive in protecting their IP and think through the entire gamut of protections available and necessary to ensure that their business and products remain secure.