IP Ingredients: Winter Case Law Review 2024

As the nights draw in and the frenzy to finish everything off before the holiday season reaches its peak, it’s time to take a break, grab your favourite hot beverage and a mince pie, and catch up on some of the legal decisions in the food and drink sector that have been served up over the last six months.

Patents

The fate of Impossible Foods’ European meat substitute patent: An update

In November 2022 Impossible Foods’ European patent EP2943072B1, directed to a meat substitute, was revoked by the European Patent Office (EPO). The granted patent claimed a meat substitute which acquires the taste and smell of meat during cooking, and which comprises a heme-containing protein and at least two flavor precursor molecules selected from a list of 40 compounds. While the patent covered billions of combinations of proteins and flavor precursors, some of the combinations exemplified did not produce the claimed effects. As a result the EPO found that insufficient information was provided to enable a skilled person to achieve the taste and smell of meat without undertaking a research programme, and the patent was revoked. Impossible appealed the decision and oral proceedings were scheduled for January 2025.

Meanwhile, over in the US, 2024 saw Impossible Foods reach a settlement in its long-running dispute with Motif FoodWorks Inc. over patents relating to the use of heme proteins in meat substitutes. As reported by Sheena Wang (linkedin.com/in/sheenaxw and see https://www.jdsupra.com/legalnews/meating-of-the-minds-impossible-foods-7546200/ ) this settlement follows years of legal wrangling during which Impossible Foods accused Motif of patent infringement, in response to which Motif challenged the validity of several of Impossible Foods’ patents.

Returning to the pending appeal in Europe, in August 2024 Impossible Foods withdrew its pending main claim set and instead requested that the patent be maintained on the basis of a new Main Request (filed as AR1 in April 2023) or any one of Auxiliary Requests AR1-AR9 (AR1 corresponding to AR1A filed in January 2024). In these claims the composition claims have been deleted and claim 1 is instead directed to a method of making a meat substitute comprising a heme-containing protein and at least the flavour precursor molecules (i) cysteine, glucose and thiamine, or (ii) cysteine, ribose and thiamine. The Board of Appeal has indicated in its preliminary opinion that AR1A is allowable. Since the opponent has withdrawn from the appeal proceedings, the oral proceedings are likely to be cancelled.

The change of claim category and the limitation of the flavour precursor compounds represents a significant departure in the scope of protection compared to the patent as granted. Whether or not this concession forms part of the terms of the settlement agreement with Motif, and whether Motif was behind the strawman opponent, remains unknown.

Key take-away:This case highlights the value of the EPO’s opposition procedure for obtaining revocation of a competitor’s patent across Europe, and for providing leverage as part of a wider dispute. The revocation of Impossible Foods’ EP patent at first instance also emphasises the importance of supporting data in food tech patents, particularly when a wide scope of protection is desired to block competition. Broad claims should be supported by a number of examples which demonstrate that an alleged advantage is achieved across the claim scope, as exemplified further in T1799/21 discussed below.

T1799/21: Downfall of claims covering microorganisms that produce vanillin (and some that do not)

In this case, the EPO’s Board of Appeal revoked European patent EP3164485 owned by Specialty Operations France for lacking an inventive step. Granted claim 1 was directed to a recombinant strain of the order Actinomycetales having at least one non-functional gene encoding a vanillin reductase enzyme with certain sequence characteristics. According to the patent, vanillin is produced when bacteria of the order Actinomycetales are grown on ferulic acid. However, the vanillin itself is then either converted into vanillic acid by a vanillin dehydrogenase, or into vanillic alcohol by vanillin reductase. The invention therefore sought to solve the problem of this unwanted consumption of vanillin by endogenous enzymes and provide an improved process for producing vanillin.

European case law has established that if a technical effect is relied upon for establishing an inventive step, this effect must be achieved by substantially all embodiments falling within the claim scope. However, in this case, the Board disagreed with the patentee that substantially all strains covered by the claim were actually capable of producing vanillin. In particular, it observed that there was no requirement in claim 1 for the strains to produce vanillin, nor did it specify any genes or other conditions required for vanillin production. The evidence also showed that not all strains of Actinomycetales are capable of producing vanillin. This resulted in claim 1 covering non-vanillin producing strains.

As such, the claimed invention did not solve the problem stated in the patent, i.e. that of providing an improved process for producing vanillin. Rather, the only problem solved was the provision of an alternative recombinant strain of the order Actinomycetales. The Board considered that the solution provided by the claimed invention, i.e. the production of a strain with a non-functional vanillin reductase, would be an arbitrary choice for a skilled person, and so the claimed invention was found to be obvious. Auxiliary Requests 1-11 were held to lack an inventive step for the same reasons. Auxiliary Requests 12 and 13, filed at the Oral Proceedings, were not admitted due to being late-filed. The patent was therefore revoked.

Key take-away:While applicants understandably want to maximise their scope of protection to catch potential infringers, the quest for broad claims can be taken too far. It is important not to compromise validity by omitting from the main claim features that are essential for achieving the alleged technical effect, or which result in the claim covering non-working embodiments. In post-grant proceedings patent proprietors must also be mindful of the strictly-applied Rules of Procedure which prohibit the admission of claim amendments which could have been filed earlier in the proceedings.

T1772/22: Confusion over coffee: Clarity of amendments challenged even if similar to granted claim language

In this case the EPO’s Board of Appeal revoked Nestle’s European patent EP3160247 for a coffee composition. Claim 1 under consideration defined a coffee composition comprising, inter alia, 10-20 wt% of particles of roast Coffea arabica and/or roast Coffea canephora coffee beans. During the opposition proceedings claim 1 was amended to require that the composition comprises “an amount of coffee oil which is less than 4% by weight of the total amount of roast Coffea arabica and Coffea canephora coffee particles” (referred to as “feature 3”). The opponent/appellant (Douwe Egberts) argued that this wording was unclear.

While clarity is not a ground of opposition in that it cannot be used to attack the claims as granted, subsequently amended claims which incorporate features from the description can be attacked for lacking clarity. Nestle argued that the clarity of feature 3 was not open to attack since similar wording was already present in claim 6 as granted. However, the Board observed that Nestle had voluntarily defined the coffee oil content in claim 1 using different language to that used in granted claim 6. This allowed the wording of amended claim 1 to be assessed for clarity.

The Board agreed with the appellant’s assessment that a skilled person could reasonably interpret the “coffee particles” in feature 3 as either (a) fresh particles of roast coffee beans; (b) partly oil-depleted particles of roast coffee beans obtained after extracting oil from the composition; or (c) fully oil-depleted particles of roast coffee beans. Since the interpretation selected would result in a different content of the coffee oil, thereby changing the boundaries of claim 1, the claim was found to be unclear.

Key take-away: In opposition or appeal proceedings, care must be taken when making amendments based on the description. If possible, it is safer to use wording formulated in the same way as wording already present in a granted claim, to mitigate the amended claim being open to clarity objections. More generally, amounts of ingredients present in food or beverage compositions which are expressed relative to other components must be checked at the drafting stage to ensure that they are clearly defined, and that no alternative interpretations could be envisaged.

Trade Marks

T-58/23, Supermac’s (Holdings) Ltd v EUIPO, General Court, 5th June 2024

This judgement is the conclusion of Supermac’s long running attempts, starting in 2017, to revoke McDonald’s EU Trade Mark registration for BIG MAC which was originally registered in 1996 covering various goods and services across classes 29, 30 and 42. Supermac’s claimed in their 2017 filing that McDonald’s had failed to demonstrate genuine use of their trade mark and this was confirmed by the EUIPO’s Cancellation Division in 2019.

Not unsurprisingly, this decision was appealed by McDonald’s to the Board of Appeal who annulled parts of the EUIPO’s decision reinstating the trade mark registration for specific goods, including “meat sandwiches, chicken sandwiches” and services, such as “restaurant operations”. The decision was further appealed by Supermac’s to the General Court, reiterating their arguments that the evidence submitted by McDonald’s was insufficient particularly for “chicken sandwiches” and related services.

It has long been established that genuine use of a trade mark must be demonstrated with solid, objective evidence reflecting the mark’s actual and sufficient use in commerce. This should include evidence of place, time, extent and nature of use.

In conclusion, the General Court partially annulled the Board of Appeal’s decision and confirmed the revocation of McDonald’s EU Trade Mark for “chicken sandwiches” in classes 29 and 30 and “foods prepared from poultry products” in class 29 as well as “services related to operating restaurants and preparing carry-out foods” in class 42. Supermac’s request for broader annulment was rejected where McDonald’s evidence was deemed sufficient, including for “meat sandwiches” in class 30.

In taking it’s decision, the General Court held that while “meat sandwiches” were deemed part of the broader category of “foods prepared from meat products”, McDonald’s argument that use for one type of sandwich implied use for all “edible sandwiches” should be rejected. Use in connection with “chicken sandwiches” and “foods prepared from poultry products” could not be assumed as genuinely used based on limited evidence for meat sandwiches.

Key take-away:(no pun intended) Ever since the first decision of the EUIPO in 2019 this case has acted as a tale of caution, reminding everyone, no matter the size of business, that they should not be complacent when filing evidence of use in trade mark cases. The relevant Offices can only take a decision based on the evidence before them, so it is critical that that evidence be gathered, stored and presented at the relevant point and at the volume necessary to ensure that there can be no dispute that use has been made.

For further discussion on this case see: https://www.linkedin.com/feed/update/urn:li:activity:7272893725725351937?utm_source=share&utm_medium=member_desktop

SkyKick UK Ltd and another (“SkyKick”) v Sky Ltd [2024] UKSC 36

In a further installment of another long running saga, the UK Supreme Court in November issued it’s judgement in the case between Sky Ltd and SkyKick ltd. Sky had accused SkyKick of infringing upon five of its registered trade marks through the use of the term SkyKick in their email and cloud storage services. SkyKick contested the infringement claims and challenged the validity of the SKY marks, alleging that Sky had applied for these trade marks in bad faith by including goods and services for which it had no genuine intention to use.

The case was originally heard by the High Court who referred it to the Court of Justice of the European Union. The matter was then appealed to the Court of Appeal before this further appeal to the Supreme Court.

In their judgement, the Supreme Court unanimously allowed SkyKick’s appeal in part, reinstating the High Court’s finding that Sky had applied for their trade marks partially in bad faith to the extent that the specifications encompassed goods and services unrelated to Sky’s business intentions, with some categories so broad that Sky could not have intended to use the marks across their entire scope. This overreach rendered the trade marks partially invalid.

Key take-away: You may at first be wondering what this has to do with food and drink. On the face of it the goods and services affected are entirely unrelated to the food and drink sector. However, the implications of the judgement are profound in the trade mark world and cut across and apply to every sector of business including food and drink. The main concept to take-away from the decision is that Applicants should ensure that the specifications of goods and services covered in their trade mark applications accurately reflect their genuine commercial intentions. Overly broad specifications, without intent to use the mark across all listed categories, may be deemed as filed in bad faith, which could ultimately lead, as it did here, to a finding that they are partially or completely invalid.

For more information on the case please visit: https://www.hgf.com/news/supreme-court-holds-that-sky-marks-were-registered-in-bad-faith/

O/0526/24, Kerstin Reinwald v International Nutrition Researcher Center, Inc. UK IPO, 6th June 2024

Trade mark oppositions asserting that one or other of the parties involved have acted in bad faith are not particularly common and are taken very seriously by the UK IPO.

In this case, Kerstin Reinwald, had applied for a trade mark in the UK (designated from an International Registration) for the mark MAP covering dietary supplements and preparations in class 05. The Opponent, International Nutrition Researcher Center, Inc. opposed on the basis of passing off, bad faith and unauthorised registration by an agent or representative. The Opposition succeeded on the bad faith ground only.

In the decision, the Hearing Officer dismissed the passing off ground on the basis that the Opponent had failed to provide sufficient evidence of goodwill associated with the MAP mark in the UK. The Hearing Officer was also unconvinced that the relationship between the parties met the criteria of an agent-principal relationship as defined under the act.

However, the evidence did establish that the Applicant had a “close contact” with a prior association with the Opponent. The “close contact” was found to be the Applicant’s husband, Dr Heinz Reinwald, who had previously worked as a distributor for the Opponent and their MAP brand of nutritional and dietary supplements. Dr Reinwald already had unsuccessfully defended various legal proceedings in Germany brought by the Opponent. There were also claims within the evidence asserting Dr Reinhold’s bad character, including claims of plagiarism and that he had tried to sell unlicensed treatments to cancer patients for his own profit.

Further evidence established that the Applicant played an active role in her husband’s business and was the CEO of two companies connected with Dr Reinwald, one of which had been applying the mark DR REINWALD VITAL to the Opponent’s MAP products and distributing them in Germany.

As a result of all the evidence, the Hearing Officer concluded that the Opponent had established that the Application was made with the intention of undermining or misappropriating the Opponent’s rights in the MAP mark in the UK. Furthermore, the fact that the Applicant filed the application after the decision of the German Court had found that her husband Dr Reinwald had acted as a disloyal agent of the Opponent and had arbitrarily appropriated the Opponent’s trade mark, supported the Opponent’s allegations that the application was filed in the name of the Applicant as a deceitful tactic. By filing in the Applicant’s name, it was clear that the Applicant was fronting for her husband in order to avoid further declarations of invalidity based on the dishonest behaviour of her husband. In the Hearing Officer’s view, this was unacceptable commercial behaviour to the point of bad faith.

Key take-away:Claims of bad faith are serious claims in the UK, that must be firmly evidenced to be taken seriously by the Hearing Officers. However, this decision shows that where the activities fall to the level of unacceptable commercial behaviour, it is possible with the proper evidence to succeed on this ground even where the level of use in the UK has not been found to be sufficient for a claim of passing off.

For any questions relating to the above, please contact the authors, Tanya Waller [email protected] and Jennifer Bailey [email protected].

This article was prepared by Trade Mark Director Tanya Waller and Partner and Patent Attorney Jennifer Bailey