Using brand name confectionery in a product range can be a sure-fire way to sell. But is it legal? Copyright specialist Ben Evans of law firm Blake Morgan explains.
"We’ve all seen them: Mars Bar Muffins, M&M Cookies, Nutella Crepes, Milky Way Doughnuts – and the list goes on.
Using brand-named ingredients in baked goods is prevalent and is a great way of attracting consumer attention. But is it actually legal?
Brand owners such as Mars are extremely protective of their intellectual property rights – and for good reason. You only need look at McDonald’s issues with Irish food chain Supermac as an example of what can happen if a brand owner doesn’t properly protect its rights. The key rights for these consumer-facing brands are likely to be registered trade marks.
Brands such as Mars Bar are registered as trade marks for the likes of confectionery and other such foodstuffs. At its most basic, the use of the term Mars Bar, as a trade mark, in relation to baked goods is likely to infringe the trade mark rights of Mars.
Take, for example, an independent bakery selling a ‘Mars Bar Muffin’. Customers seeing the Mars Bar Muffin would be at risk of confusion, potentially causing them to think the product was authorised by or perhaps even made to a recipe devised by Mars.
Even if there wasn’t any such confusion, the use of the term Mars Bar in the name of the goods would almost certainly be deemed to take unfair advantage of Mars’ trade mark rights. Either way, it is likely to be an infringement to use the trade mark in the name of the product without obtaining consent.
While you may think it is unlikely that brands such as Mars would take action against an independent bakery, they do, occasionally, make an example of traders to act as a warning for others.
So, what can you do to avoid being made an example of?
Firstly, you should drop the trade mark from the name. Simply calling it a Chocolate Nougat Muffin, for example, would not infringe Mars’ rights. If you still want customers to be aware the product incorporates a Mars Bar, then reference to that could be made in the list of ingredients (notwithstanding food labelling and ingredients requirements). Ensure you make clear it is a trade mark (for example MARSTM or MARS ), that it is in the same size font as the rest of the ingredients list and doesn’t otherwise attempt to create an association with Mars, by using the distinctive Mars font, for example.
However, if you do want to use the trade mark in the name – after all, a Mars Bar Muffin sounds more appetising than a Chocolate Nougat Muffin – then you’ll need to obtain consent from the trade mark owner. Clearly, it is unlikely that Mars would enter into negotiations with an independent bakery, but many such brand owners have a standard set of terms under which bakers, and other such retailers, are permitted to use their marks (see example below).
It is likely that other such brand owners will have similar terms, but there could be differences – indeed, some may not permit any use at all.
Accordingly, you should ensure you identify, and review, the appropriate terms before launching any products using names containing third-party trade marks."
Case study: use of the Nutella trademark
The Ferrero website sets out what bakers can, and can’t do with the Nutella mark:
The Ferrero terms require (among other things) that the retailer uses the Nutella mark to describe to customers that it is: an ingredient within, or on top of a product (but that it cannot be mixed with other ingredients); that the products are freshly made in a safe and healthy environment; and that the mark is in monochromatic capital letters (not in logo form) followed by the symbol and it cannot be emphasised over the name of the product (so the font and font size should be consistent).