The Future Lawyer Weekly Briefing- W/C 28th March

The devil works hard but IP lawyers work harder

By Shaznee Seraj

🛒 Waitrose vs Asda

Move over Marks & Spencer, it’s Waitrose vs Asda IP battle time. Waitrose is pursuing a legal battle against Asda over their ‘J ust Essentials’ budget range as the former believed that its rival unveiled a somewhat similar named discounted range. On the 28th of March, Asda unveiled its shiny new £45 billion investment in the Just Essentials range, promising an extended line of low-cost products in all its stores starting in May to assist shoppers to cope with rising living costs (Thank you, Asda).

The problem arises when Waitrose challenged the range claiming that the name “Just Essentials” is too similar to Waitrose’s own Essential Waitrose range which debuted in 2009. However, Asda argued that the word “essential” is a commonly used word for “lower-cost” products.

As a result of the new announcement, Asda’s new discount line will now replace its present Smart Price range which has been condemned by food poverty campaigner and chef Jack Monroe for not being available in all locations. See more here. The idea behind the new line is Asda’s answer to the rise in the cost of living due to Russia’s invasion of Ukraine which has elevated the costs of food, fuel, and energy. The Just Essentials line will include items such as meat, poultry, frozen and cupboard staples, and household items. Ironically, as Tesco once said, “every little helps.”

At the time this article is being written, Waitrose has said it had submitted a letter of claim to Asda to express concerns about trademark infringement and was waiting for a response. For some of us, this is just another IP legal battle, but not to Waitrose. Waitrose was rather “surprised” to hear that Asda is launching a lower-cost range with a somewhat similar name which the company has been using since 2009. Most importantly, the John Lewis partnership company believes that Waitrose has built up a strong reputation for its quality and welfare and Asda has infringed one of its trademark assets – the Essential name.

*IP law has entered the chat*

William Miles, a partner at Briffa provided a succinct legal-IP standpoint on the claim in his article. He mentioned that:
1. The word ‘essential’ could be argued to be descriptive and generic which Asda has been relied on. This means that trademark law does not allow any party to monopolies a generic or descriptive term due to its anti-competitive behaviour.

2. To support their claims, Waitrose may be required to prove a ‘likelihood of confusion’ and argued that they might even have to show an element of misrepresentation on the part of Asda. As we have previously seen in the M&S Battle of the Caterpillar and Christmas claim, companies like Aldi and Asda have managed to dodge such claims simply by showing that the shoppers are not confused or feel deceived when they walk into the store.

Arguably, it is agreeable that Asda might be able to rely on the “descriptive and generic” argument as the word ‘essential’ does not mean anything special or memorable to an average consumer. However, a Waitrose spokesman commented that “As we’ve also protected the name as a trademark, we have raised this with Asda and are awaiting a response” which makes the claim an interesting one as it begs the question; will Asda rename the range as the word ‘essential’ has been protected, or are the supermarket giants going to take it to the court? It remains unclear at the moment.
Potential outcome?

Miles’ article suggests that it is highly unlikely that Asda shoppers will see the Just Essentials range and think that they’re buying goods supplied by Waitrose. Most importantly if the court agrees with this view, Waitrose could potentially lose the trademark battle. That said, the Waitrose vs Asda claim will make an interesting outcome for IP law as we have been witnessing more and more supermarket stores bringing trademark claims against their competitors. However, the claim is still developing which makes it hard to tell how the dispute will turn out. Will it be settled out of court, or will it be a long legal battle? Who knows! Stay tuned for more updates.