A Matter of Taste

Although uncommon, non-conventional trade marks for scent and taste such as “the strong scent of bitter beer applied to flights for darts”, or the “taste of liquorice in relation to paper products” have been registered. Obtaining registrations for these marks is however not an easy feat as the marks must be capable of graphical representation and the proprietors must show that the particular scent or taste is capable of distinguishing the good and services offered from similar goods and services in the marketplace.

In respect of the graphical representation requirement, it is generally accepted by most courts that the representation must be clear, precise, self-contained, durable and objective, although the particular requirements differ depending on the applicable national legislation.

While a simple description of “the taste of liquorice” in respect of paper products was accepted in the Benelux countries, in the United States, a pharmaceutical company was refused protection for “the taste of strawberry” in respect of a pharmaceutical product. The US court held that the description was insufficiently precise and therefore could not distinguish the particular taste of strawberry for which protection was sought from similar pharmaceutical products which utilise a similar flavour.

Can the difficulties associated with obtaining registrations for non-conventional trade marks be overcome by relying on copyright protection, which arises automatically, instead? A Dutch cheese maker recently asked a European Court to consider this very question.

In 2007 a Dutch retailer created a spreadable dip containing cream cheese and fresh herbs which it called “Heksenkaas” or “witches cheese”. Heksenkaas proved to be very successful, and in 2014 a competitor, Smilde Foods BV, created a similar cheese product using similar ingredients and having a similar taste to Heksenkaas which it called “Witte Wievenkaas” or “white wives’ cheese”.

Levola instituted proceedings against Smilde Foods on the basis that the production and sale of Witte Wievenkaas infringed its copyright in the ‘taste’ of Heksenkaas. Levola asked the Rechtbank Gelderland (Gelderland District Court, Netherlands) to rule that the taste of Heksenkaas is an intellectual creation and is therefore eligible for copyright protection as a work and that the taste of the product manufactured by Smilde Foods is a reproduction of that work, and therefore constitutes an infringement of the Levola’s rights in such copyright.

The District Court held that it was not necessary to rule on whether the taste of Heksenkaas was protectable under copyright law as Levola’s claim had to be rejected on the basis that it had not indicated which elements, or combination of elements, of the taste of Heksenkaas gave it its unique, original character.

Levola appealed the decision to the European Court of Justice. The key issue to be decided was whether the taste of a food product could be considered a “work” and therefore be eligible for copyright protection.
Typically, copyright protection can be obtained for a work which is original and which has been reduced to a material form. The works which can be protected are set out in international conventions as well as in national legislation.

In coming to its decision, the European Court considered the provisions of the Berne Convention as well as the WIPO Copyright Treaty which set out the minimum standards of protection which should be afforded to its member states. Under Article 2 of the Berne Convention, “literary and artistic works include every production in the literary, scientific and artistic domain, whatever the mode or form of its expression” may include “books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science”.

The Court held that, in principle, a taste was not precluded from copyright protection by the fact that the examples cited in the Berne Convention relate only to creations that can be perceived by sight and/or by hearing. However, the Court held that in order to be classified as a “work” the subject matter must be expressed in a manner which makes it identifiable with sufficient precision and objectivity to allow third parties to know exactly what rights have been afforded to the proprietor of the copyright.

The Court found that the taste of a food product depends on the particular person tasting the product concerned and is influenced by factors such as age and consumption habits. As it is not possible in the current state of scientific development to achieve by technical means a precise and objective identification of a taste of a food product which enables it to be distinguished from the taste of other products of the same kind, the Court held that the taste of a food product cannot be considered a work and is therefore not eligible for copyright protection.

Therefore, at least for now, it is unlikely that copyright can be relied upon to protect a unique taste of a food product. Whilst imagination may be limitless – it’s the expression of that imagination, with sufficient precision and certainty, which determines whether protection can be obtained.

Hillary Brennan – Attorney

Kim Rademeyer – Partner