April 2003
Nil Points For Slimming Giants Weight Watchers
Weight Watchers UK, the company that supplies slimming products to millions worldwide, has been pursuing an action against Tesco supermarkets for what they claim is an unlawful use of their 'POINTS' system for ascribing value to particular foods. Weight Watchers have registered 'POINTS' as a Community Trade Mark for food, nutrition, consultation and advice (see our March 2003 report on the Community Trade Mark).
Tesco, on their Healthy Eating range, indicated a points value for certain products but used the following disclaimer on the packaging 'using the standard Weight Watchers calculator…this product is not endorsed by Weight Watchers'.
Weight Watchers were seeking an injunction to prevent Tesco from offering for sale any goods bearing the registered 'POINTS' trade mark. Tesco, in it's defence, claimed that the Points system was not a distinctive system, but merely descriptive of the fat and calorie content of the product.
The Court held that a survey presented by the Claimants as evidence of the deception did not prove the unique position of the Points system with regard to Weight Watchers, as opposed to a general system as applicable to all foodstuffs. The injunction was rejected in favour of a nominal award of damages.
BRIFFA Comment:
It seems likely that the points system has now become almost generic within the Health Food market which would leave the mark vulnerable to attack by virtue of the Trade Marks Act 1994 which states that a mark must not become generic (for example the majority of people would say that you can legitimately hoover the floor using a Dyson therefore "Hoover" no longer only describes the vacuum cleaner itself). It is therefore important to always use your mark in a branded, trade mark sense rather than using it to describe how the actual product functions as failing to do this can seriously undermine the level of protection available to you as trade mark owner.