Trade mark essentials, Waitrose vs Asda

Recent reports have suggested that Waitrose has sent a letter of claim to Asda objecting to Asda’s soon to be launched “Just Essentials” range.

Waitrose is the owner of various trade marks including one for ESSENTIAL WAITROSE, it will also no doubt argue that it has a significant reputation in respect of the use of the term Essential, which started in 2009, as this relates to its more competitively priced “everyday” goods (such as sweet piccalilli, Cypriot halloumi, sirloin steaks and gnocchi – as I say, everyday stuff). However, this isn’t likely to be a straightforward claim for Waitrose and its problems are twofold.

Firstly, the word ‘essential’, in the context of supermarket goods, could quite easily be argued to be both descriptive and generic (i.e. insufficiently distinctive). And certainly, an Asda spokesperson is already arguing both of these points. The significance of this is that in trade mark law cannot allow any party to monopolise a generic or descriptive term as this would be considered to be anti-competitive and damaging to the economic success businesses generally. Indeed, trade mark law suggests that a lower likelihood of confusion should be found when dealing with generic marks and the goodwill which is said to be attached to them is likely to be highly diluted.

Secondly, Waitrose may be required to establish a likelihood of confusion in this case or even some element of misrepresentation (i.e. deception) on the part of Asda. However, retailers such as Aldi and Lidl, who are well known for sailing close to the wind when it comes to own brand products, have time and again dodged such claims by establishing the fact that shoppers are not confused or deceived when they walk into their stores. Instead, they know very well that they’re in Aldi and paying a vastly reduced price to purchase something akin to the market leader. Equally therefore is it really likely that Asda shoppers will see the Just Essentials range and think that they’re buying good supplied by Waitrose? Probably not, and if the court agrees then this could be problematic for Waitrose.

So it remains to be seen how this will dispute will pan out, however if you would like to discuss how best to protect your brand name, or what to do if its infringed (essential advice in my opinion), just email info@briffa.com to book a free consultation.

Written by Will Miles – Partner