The recipe for protecting your valuable assets
First published: Food Australia publication, 4th June 2014
Intellectual property is a key component in the recipe for success in today’s competitive food industry. It should be regarded as a valuable asset that can be used to support commercialisation and marketing of a product, as well as gain competitive advantage by restricting what competitors can do.
Broadly speaking, intellectual property or “IP” is a term for a group of rights, provided for by law, that provide protection for “creative and intellectual effort”. Intellectual property rights fall into two primary categories: registrable and non-registrable rights.
Registrable intellectual property rights must be applied for, and include patents, registered designs and trade marks. In contrast, copyright and confidential information (so called “trade secrets”) arise automatically and fall under the category of non-registrable rights. In this article we will provide you with a quick insight into each of these rights and guide you on what to watch out for.
Identifying your intellectual property
The first step to protecting the creative and intellectual effort in a product is to identify your intellectual property and determine the most appropriate mode of protection.
A patent provides an exclusive and legally enforceable tool that can be used to restrict the exploitation of an invention for a period of time.
Patents protect the functionality of an invention and can be granted for products, methods, apparatus, materials or processes that are novel and sufficiently inventive. Notably, not all inventions are patentable.
In Australia, exclusions to patentability include human beings and the biological processes for their generation, mathematical models, plans and schemes, and abstract ideas or concepts (although the practical implementation of the idea or concept may be patentable).
The owner of a patent has a monopoly, which provides the right to prevent others from exploiting the invention for the term of the patent: 20 years for a standard patent and eight years for an innovation patent, which offers a shorter period of protection for incremental product developments. The owner of a patent can choose to exploit the invention themselves, or can license, transfer or sell the patent to others.
In order to be patentable, an invention must be new and not obvious in light of what is already known. Food products that are made using typical ingredients and using standard preparation techniques are unlikely to meet these requirements. Innovations in food technology, however, can result in new products that qualify as patentable inventions. Examples of patented products include New Zealand company Cookie Time Limited’s patented meal bar “One Square Meal” which is marketed as the first nutritionally balanced food or beverage, as well as fat substitutes and artificial sweeteners and flavours.
Food manufacturing processes
Patents are also useful to secure protection for food manufacturing processes, particularly those inventive processes that would be impossible to keep secret.
As well as ensuring that your method for creating food is protected, thus making it difficult for competitors trying to imitate your product, process patents can also provide useful revenue streams through licensing patents to others within the food industry or beyond.
New Zealand ice-cream manufacturer, Tip Top, registered patents for the triple layer dipping used for their Memphis Meltdown, and for placing large food chunks in ice cream on a stick for their Moritz product. Mars Inc also patented the process ‘Cocoapro’ for producing cocoa flavanols for use in multiple products.
In addition to securing protection for new products and manufacturing processes, it is also possible to obtain patent protection for new and inventive packaging. For example, if the packaging provides storage advantages or improved delivery to the consumer, such as the Berocca Twist ‘N’ Go bottle or Tetra Pak’s Tetra Evero Aseptic carton bottle for milk.
Patents: Watch out for
Public disclosure: Any demonstration, sale or discussion of an invention before the filing of a patent application may jeopardise the novelty of the invention.
A registered design protects the overall appearance of a product. Almost any type of manufactured product can be protected by a registered design, from food products to clothes to vacuum cleaners.
To be registrable, a design must be new in appearance; in other words, the appearance of the product must differ from that of existing products. Design rights provide protection not just for the appearance of the packaging of a product, for example the Berocca Twist ‘N’ Go bottle, but also to the appearance of a product itself, for example Guylian’s shell shaped chocolates.
The owner of a registered design that has been examined and certified has an exclusive and legally enforceable right to use, license or sell the design for a maximum of 10 years in Australia.
Designs: Watch out for
As with patents, any public disclosure may jeopardise a design application. Notably, registered design protection protects the overall appearance of a product only, and does not protect the fuctionality of the product when embodied in a product of different appearance.
Trade marks are the most frequently used, and widely known, form of intellectual property. They are typically a fundamental part of a branding strategy, and should be considered at the inception stage of a new product or service.
In Australia, names, words, logos, shapes, colours, scents, sounds or any combination of these that distinguish the goods and/or services of one trader from those of another can be registered. The main requirement for registration is that a trade mark should be capable of distinguishing the goods or services to which the mark is applied. Trade marks that are simply descriptive of goods or services are typically difficult to register. Simply put, the more distinctive the trade mark, the easier it is to obtain protection.
Trade marks enable consumers to readily identify a product or service so that the brand can become a powerful and valuable business asset, helping to achieve and maintain market share.
A registered trade mark provides the owner with the exclusive right to use the mark in relation to particular goods and services within Australia. The owner also has the right to stop other people from using substantially identical or deceptively similar trade marks for the same class of goods or services, or similar and closely related goods or services. The owner can also choose to license, transfer and/or sell the trade mark to others. The registration term is 10 years and is renewable indefinitely upon payment of an official fee.
Examples of successful trade marks in the food industry include Cadbury’s Freddo Frog which has registered trade marks for both the name and shape of the product, and the registered trade marks for Vegemite which include the “Happy Little Vegemite” sound jingle.
Trade marks: Watch out for
You do not have to register a trade mark to have some rights to the mark, but it is usually advisable because proving your rights and taking action against an infringer without a registered trade mark can be a lengthy, expensive process.
Copyright protects the original expression of an idea from copying and certain other uses. The original expression can be in the form of original works of art and literature, music, film, sound recordings, broadcasts and computer programs.
Copyright is free and automatic and no registration is required in Australia. Material is automatically protected from the time it is first written down, painted or drawn, filmed or taped.
Depending on the material, copyright for generally lasts 70 years from the year of the author’s death or from the year of first publication after the author’s death. Copyright for films and sound recordings lasts 70 years from publication. Copyright for broadcasts lasts 70 years from the year in which the broadcast was made.
Copyright protects a range of materials, for example cookery books containing recipes, but also written recipes and manufacturing processes setting out a description of the type and amount of ingredients used and the method for making the food.
Copyright: Watch out for
Although making copies of copyright material can infringe the owner’s exclusive rights, a certain amount of copying is permissible under the fair dealing provisions of the legislation. Notably, copyright laws do not protect you against the independant creation of a smiliar work.
Confidential information (trade secrets)
A trade secret is both a type of intellectual property, and a strategy for protecting your intellectual property. It can be a useful strategy for protecting proprietary knowledge and is commonly used in the food industry to protect recipes and manufacturing processes alike. Some of the most famous examples of trade secrets include the formula for Coca-Cola and the KFC original recipe of 11 herbs and spices.
Trade Secrets: Watch out for
A trade secret should be protected by a signed confidentiality agreement. Trade secrets are not useful for products that can be readily reverse-engineered and copied by a third party.
In summary, it is important to be aware that intellectual property in the food industry is not just for protecting the branding and labeling of a product. It is a tangible asset for protecting multiple aspects of a product, including the production of ingredients, the creation of recipes, the manufacturing process of a product and the appearance of the product itself, thereby providing an umbrella of rights to help maintain a competitive edge
The award winning technologies of Australian company Unistraw International Limited are expected by a wide range of intellectual property rights.
Unistraw’s best known product is the Sipahh milk flavouring straw, which is available in a number of flavours in over 65 countries. It is designed to encourage children to drink more milk.
The functionality of the Sipahh milk flavouring straw is protected with patents, the appearance of the straw is protected with registered designs, and the brand itself is protected with registered trade marks.
The Australian owned and operated, Eagle Boys Pizza understands the value that intellectual property rights can provide in the food industry.
Eagle Boys has registered multiple trade marks – words, logos and slogans – and is also attempting to register a trade mark for the pink glow produced by the lightning on their shop fronts.
Eagle Boys also look to other intellectual property rights to boost their competitive edge. Their two-tiered pizza box is currently the subject of both patent and design registration applications in Australia and overseas.