When is a brand name a trademark? The ASA ‘Superfoods’ Ruling

The UK Advertising Standards Authority (ASA) has upheld a complaint against Leon Restaurants this week for the use of the term ‘Superfoods salad’ or ‘Leon’s Original Superfoods Salad’.

It was accepted by Leon Restaurants that ‘Superfoods’ as a statement can be an implied general health claim and therefore requires a specific permitted authorised health claim to be associated with it.

However, EU Nutrition and Health Claims Regulation 1924/2006 sets out an exemption to this requirement under Article 28(2), namely:

“Products bearing trade marks or brand names existing before 1 January 2005 which do not comply with this regulation may continue to be marketed until 19 January 2022…”

The ASA looked at evidence establishing that Leon Restaurants had used the term ‘Superfoods Salad’ ahead of 1 January 2005; however it was maintained that, as a term, this was not sufficiently precise to establish the requisite goodwill to establish any action for passing off and therefore the exemption did not apply.

The ASA is taking a strict interpretation to the meaning of ‘brand names.’ ‘Brand names’ is, of itself, an unregulated and broad term. Potentially here the ASA are alluding to the fact that it could be regarded more in the context of a descriptive name or generic term rather than with reference to any specific ‘branding’ of the Leon Restaurant salad. However, they are using the requirements necessary to establish an action to protect an unregistered trademark rather than specifically considering whether Leon Restaurants’ use of the term was a descriptive name only. The question they should have been considering was whether or not the term ‘Superfoods salad’ was sufficiently precise to inform the consumer of the true nature of the product and distinguish it from other foods with which they could confuse it; for example ‘cucumber salad’ would likely be a descriptive name rather than a brand name. The UK Department of Health guidance on this topic simply references that manufacturers should be able to establish the brand name or trade mark was in use on the product prior to 1 January 2005 and take it that this interpretation is common across the EU.

The ASA were thereby going further than the specific wording of the EU Regulation and UK government guidance in considering the terms 'trade mark' and 'brand name' as indistinguishable.

When is a brand name a trade mark? When the ASA are considering the application of an exemption.

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