Beers, IP and chocolate

Written by Samuel O’Toole | June 22, 2020

IP Disputes

Beers, IP law, and chocolate. Three of my favourite things. Although when they come together, the results can be mixed, as S43 Brewery recently found out.

The tale begins at the S43 Brewery, where a rather tasty-sounding peanut butter and fudge stout was being brewed. The stout in question was named “You’re Not You When You’re Thirsty”, a play on the classic Snicker’s “You’re not you when you’re hungry” campaign. By all reports, S43’s You’re Not You When You’re Thirsty was a hit with S43’s customers.

However, things took a turn when Mars caught wind of S43’s activities. S43 received a cease and desist letter which, as the Sunderland Echo reports, demanded that S43 Brewery rename its stout. The correspondence went on to detail that “In this case, we believe you calling your product ‘You’re Not You When You’re Thirsty’ and using a highly similar Parallelogram Design, font and colours, creates a false association with our SNICKERS brand which is not only capable of creating confusion in the marketplace but also of taking unfair advantage of the repute and distinctiveness of our SNICKERS trade marks.”

Mars is the owner of EU trade mark number 9822719 for “YOU’RE NOT YOU WHEN YOU’RE HUNGRY” in classes 29 and 30 covering, you guessed it but amongst others, chocolate. The law in this area realises that trade marks with reputation should be afforded wider protection, as such, if Mars were to contemplate court proceedings here, it would likely rely on a claim that its trade mark has a reputation and S43’s activities take unfair advantage or is detrimental to this distinct character.

Like with all good things, court action is expensive and to be avoided where possible. Presumably, Mars is fully aware of this, as such, when it wrote to S43, it detailed that it would like to resolve the matter amicably but did demand that S43 change the stout’s name within 15 days.

So what did S43 do? It rebranded the stout to “The One We Can’t Talk About”. Jonathan Graham, operations director at S43, told the Sunderland Echo, “It’s flattering really to be noticed by a brand as big as that and is a bit of a David and Goliath story. We were inspired by the Snickers ad, but it’s not like anyone would confuse the two brands.”

This matter serves as a good warning to business owners. When launching a new brand or product, you can save both time and money by doing your due diligence first. Briffa advises that clients undertake a clearance search for any new brand or product name, the advantage of a clearance search is that we can either be safe in the knowledge that a third party trade mark isn’t being infringed or safe in the knowledge that a new name needs to be chosen to avoid any infringement issues.

If you have a new brand or want to launch a new product, why not speak to one of our specialist intellectual property lawyers, who will be able to advise you as to any potential issues? We offer a free consultation, so contact us today.

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