A hole lot of trouble – Nestlé takes action against vape brands

Global confectionery giant Nestlé, which manufactures its famous Polo Mints at its factory in York, is reported to be taking action against manufacturers and importers of "vaping" liquids, for use with e-cigarettes, which use branding similar to that of the famous circular mints, and/or images of the mints themselves to promote products which (the vape-sellers claim) promote "fresh breath."

One example of the products said to have caused concern to Nestlé can be seen below:

Nestlé is believed to be asserting its registered trade marks, which include the name POLO itself in connection with confectionery, which was first registered in 1927, as well as its well-known logo and (it appears) the 3D shape of and imprinted name upon the mint itself;

They are likely also to be relying upon common-law rights to prevent "Passing Off" against the goodwill which exists in well known brands.

It is not surprising that Nestlé's own marks are not registered in classes which include Class 34 (which is the class of goods and services which includes tobacco and e-cigarette products) and so they are likely to be considering their rights under Section 10(3) of the Trade Marks Act 1994 or Article 9(1)(c) of the EU Trade Marks Regulation 2009 which enable the owner of a mark which enjoys a particular level of reputation to take action where another party uses a sign in the course of trade, even as here in connection with a wholly dissimilar sort of goods or services, but where that use is without due cause and takes unfair advantage of, or is detrimental to, the "distinctive character or repute of the trade mark."

This enables the owners of well known "household" brands to act to prevent copycat versions of their branding being applied to products with which they may not wish to be associated. The late 1990s, for example, saw a number of s.10(3) cases brought by brand owners against the makers/importers of novelty condoms using close facsimiles of their well known brands in no doubt humorous ways.

For the owner of a well-known brand, one of the strengths of being able to rely on s.10(3) / Article 9(1)(c) is that it is not necessary to prove a likelihood of confusion taking place - merely to show that your registered mark enjoys the necessary level of reputation (often by reference to sales, marketing spend, visibility of advertising and any awards won by the product), and that the use of the mark by the third party is "without due cause" and takes unfair advantage or is detrimental to the character or repute of the registered mark. Quite often, this latter test will be quite easy to satisfy.

In this case, Nestlé will no doubt have regard to the fact that while "vaping" and e-cigarettes were heralded as a much healthier alternative to smoking, the dramatic increase in their use (especially amongst teenagers) has begun to raise questions about the addictive qualities of the products (which still contain some element of nicotine) and the potential that they may still have to cause harm to the health of users. This has especially been a cause for concern where it is felt that users would not otherwise have taken up smoking of any sort, had it not been for the appeal of the various flavours applied to the "vape" liquids.

Nestlé will no doubt want to point to the growing body of concern about e-cigarette use as one of the reasons why they feel that this use of their mark(s) has the potential to be seriously detrimental to the repute of their well known brand.

On the face of it, Nestlé's case seems like a compelling one, and it will be interesting to see whether there are other brand owners whose marks have found their way onto flavoured "vape" products who see these moves by Nestlé as a spur to action themselves.

In broader terms, this serves as a useful reminder to owners of registered trade marks that your registered marks can be protected against unauthorised third party use, even outside the classes of goods and services for which your marks are registered, if they enjoy a particular level of reputation, and also that a claim based on infringement of this sort does not require proof of the sometimes evidentially challenging "likelihood of confusion."

If in doubt, brand owners are encouraged to take advice as to whether their mark(s) might qualify to have the level of reputation which might "unlock" these potentially useful remedies.

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.