IP law issues certainly feel very accessible these days and have been seldom out of the mainstream headlines in recent months.  For example, this Spring we saw a clash of titans between Marks and Spencer's "Colin" and Aldi's "Cuthbert" in an IP bout relating to caterpillar cakes - light-hearted subject matter, while raising important issues of IP law verses freedom of expression.  While stealing a lot of the limelight, this is not the only IP issue which M&S have had to grapple with in recent months.  In particular, in its David vs. Goliath dispute with independent food box company Pollen + Grace, yet again important issues of IP law have come to the forefront in connection with allegations that M&S copied Pollen + Grace's food box recipes.

SMEs looking to monetise their ideas often run into difficulty when launching or growing their brand.  Going to market can indeed feel like shark infested water at times, as larger, more established competitors can look to stifle the growing competition by launching similar products.  Under English law, no IP rights exist in an idea itself - the law protects how that idea is reduced into a tangible, concrete, and protectable form. While an IP dispute relating to the designs of tangible caterpillars is one thing, disputes surrounding recipes can be trickier to navigate given their more intangible nature.

A written recipe could constitute a literary work for the purposes of the Copyright Design and Patents Act 1988. However, this would only protect the recipe from being republished (e.g. on copycat packaging) and would not generally prohibit someone following the recipe to make the dish, which they then might sell. Given these difficulties, manufacturers can sometimes look to rely on the law of trade secrets to protect their recipes, although this will not always be possible, especially for SMEs.

One commonly used means of warning off larger competitors is through pointing to the fact that similar packaging or branding may have been used by them to sell their similar product. In cases where a competitor uses identical or very similar packaging with regards to shape, imagery, colours or logos, for example, this could more easily attract an IP infringement claim.  Each case is examined on its individual facts. Whether a copyright has been infringed, for example, rests on whether a ‘substantial part' of the original work has been copied, the test being qualitative, not quantitative. Therefore, a small part or seemingly minor detail of the original work, but one which took significant skill or labour to create, can be considered a ‘substantial part'.

For SMEs, there are a few steps that can be taken to protect IP, especially before discussing ideas with potential competitors, partners, investors or the like. Often, it is advisable to proceed under a non-disclosure agreement; essentially an agreement that the company that you're meeting with to discuss an idea will not use any confidential information discussed for its own, or anyone else's, purpose or benefit. It is also a sensible move for the company who owns the IP to register any IP rights being shared before going to market or discussing ideas, to the extent those rights are registerable (e.g. any trade marks, designs or inventions could all potentially be registerable). Additionally, they should seek to limit the amount of information disclosed in discussions. A good rule of thumb is to keep shared information to the minimum necessary to strike a deal.

Despite taking precautionary steps, IP infringement can still of course occur.  So where does that leave the entity alleging infringement?  There are a number of civil remedies available for a claimant to seek against the alleged infringer. These could include an order that the infringing items be delivered up, seized or forfeited, or injunctions that the infringing act ceases.

If a claimant is successful in proving an IP infringement, they may also choose to pursue an account of profits or an inquiry into damages. The former would essentially force the defendant to forfeit any profits made using the copied work. Alternatively, seeking damages aims to restore the claimant to the position they would otherwise be in, had the infringing act not occurred.

For many smaller companies, the cost of pursuing these remedies can of course be prohibitive, particularly where defendants with large cash reserves for legal battles are concerned.  For such companies it will be important for them to keep their cards - or recipes as may be the case - as close to their chest as possible when going to market, to reduce the risk of becoming the next IP headline in the legal sections of the media.

For further information visit Pillsbury Winthrop Shaw Pittman LLP