Pancake Day!

Duncan J. Morgan | February 2016

Today of all days - British trade mark law and its addiction to pancakes

Today (the date of publication, that is 9 February 2016) is Shrove Tuesday.  As the author was brought up for a time in Louisiana, he feels duty-bound also to point out that it is Mardi Gras.  However, it is the former with which he is concerned for this article, as he doesn’t know any cases about Mardi Gras.   Apparently Estonia celebrates Vastlapäev, which is marked by eating pea soup and whipped cream, whilst certain areas in Hungary celebrate Húshagyókedd, which translates as ‘Tuesday leaving the meat’.  He doesn’t know any cases about those either, and is instead left to wonder both how this paragraph would have ended in the days before Wikipedia, and if it’s maybe best to stop referring to himself in the third person.

Shrove Tuesday is perhaps better known in the United Kingdom (and indeed many other countries around the world) as Pancake Day. Tomorrow (Ash Wednesday) is the first day of Lent, and so the production of pancakes the day before was seen traditionally as a way to use up eggs, milk, and sugar before fasting begins.  The tradition continues, and up and down the land people will be preparing pancakes this evening to mark the occasion, often without any intention of giving up anything in particular for the following 40 days, though perhaps still very much looking forward to some chocolate eggs at the end of it all. 

Anyway, Pancake Day has contributed more to British trade mark law than any other festive occasion.  Like the confection itself though, it’s not so much about the pancakes themselves as it is about the toppings.

Where a sign has been used in a particular market for a time, even if it has not been registered as a trade mark, ‘goodwill’ can be acquired in it.  Owners of such goodwill may bring a court action known as ‘passing off’ to stop others taking advantage of their rights.  The most famous passing off case in the UK is the House of Lords Decision in Reckitt & Colman Ltd v Borden Inc [1990] 1 All E.R. 873.  This is more commonly referred to as the Jif Lemon case.  Reckitt & Colman was the business behind Jif Lemon, the largest lemon juice brand in the United Kingdom, which had for many years sold its product in a squeezable plastic lemon, and promoted it heavily in this format, particularly around Pancake Day.  A rival company began to do so also, and Reckitt & Colman successfully sued, arguing that in doing so the rival was misrepresenting to the public that its products were linked to theirs.   The judgement remains the main authority setting out the requirements for a successful passing off claim.

Six years later, registered trade mark law in the UK acquired its own pancake topping-related leading authority in the form of British Sugar PLC v. James Robertson & Sons Ltd. [1996] R.P.C. 281.  British Sugar sued James Robertson for infringement of a British trade mark registration they owned for the word TREAT, which they used as the name of a sweet syrup they sold in jam jars.  Robertson successfully counterclaimed that the registration was invalid, as TREAT was a laudatory word in the context of such goods and British Sugar had not provided compelling evidence that despite this the public associated the word with their product.  However, the case is most significant for setting out the main criteria still used in trade mark law to determine whether or not parties’ goods and services are similar.

Finally, a drawing of a dead lion covered in bees accompanied by a truncated Bible verse (“Out of the strong came forth sweetness” - Judges 14:14, in part) may not be the most obviously marketable image, however, it forms the centre of the oldest unchanged brand in the United Kingdom.  The distinctive tin of Lyle’s Golden Syrup, a perennial pancake favourite, has displayed this image alongside the same logo and wording, and in the same format, since 1895, earning a place in the (much shorter-running) Guinness Book Of Records in doing so.

Happy Pancake Day everyone (unless you’re reading this after Pancake Day, in which case 28 February next year – set a reminder).