It was Pancake day last week, how has the humble treat shaped UK trademark law?
20th February 2021
We have a few new members of the Patently family who originate from across the pond, and they’d never heard of ‘Pancake Day’. Needless to say, they we’re really confused when we arranged to have an evening Teams call on Tuesday night and they were told their tossing would be judged so they’d better practice.
So, for the uninitiated, Pancake Day, or Shrove Tuesday, is the traditional feast day before the start of Lent on Ash Wednesday. Lent — the 40 days leading up to Easter — is traditionally a time of fasting, and on Shrove Tuesday, Anglo-Saxon Christians went to confession and were “shriven”.
Shrove Tuesday is the last opportunity to use up eggs and fats before embarking on the Lenten fast, and pancakes are the perfect way of using up these ingredients.
Let’s be clear, we’re talking about thin pancakes, you might call them crepes if you’re most used to the thicker US kind. A traditional British pancake is very thin and is served immediately. Nutella, Golden syrup, orange or lemon juice and sugar are the usual toppings.
So how did our tossing competition go? Let’s just say that we all need to practise for next year (when hopefully will be able to do it together in the office kitchen again) and that the video of the event will stay set to ‘private’ on the Patently Youtube channel.
In may surprise you to learn that Pancake Day has contributed heavily to British trademark law, more so than most festive occasions can claim.
A bit of background… where a sign/logo has been used in a particular market for a long 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  1 All E.R. 873 (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 — (even running an advertising campaign in 2010 calling the day: “Jif lemon day”). A rival company began to sell its lemon juice in squeezy lemons, 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, there was another pancake related trademark case: British Sugar PLC v. James Robertson & Sons Ltd.  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 syrup they sold. 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 the public associated the word with their product. 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.
So there you have it, pancakes and IP do go together, just not as well as pancakes and sugar and lemon. What are your favourite pancake toppings? Let us know via social media.