When talking about protecting designs, food is usually not
the first type of product that comes to mind. However, just
like various household and utility products, food can be the
subject of design protection. A decision by the court of The
Hague shows that design protection is just as alive and
relevant in the food industry, resulting in effective
The US company JR Simplot Company is the owner of an EU
design registration incorporating the shape of a curly fry
(described in the registration as "potato shapes"), branded the
Sidewinder. While the product was successfully launched in the
US and Canada in 2013, Simplot had not made sales of this
product in the EU. McCain, the well-known manufacturer of
potato products, launched a curly potato product under the
designation Rustic Twist in the autumn 2016 in the EU. Simplot
has since undertaken several legal measures against McCain,
alleging that McCain infringed Simplot's design rights.
Among Simplot's actions were interlocutory proceedings
before the court of The Hague, in which Simplot sought a
preliminary EU-wide injunction order against McCain.
In its defence, McCain claimed that the EU design
registration of Simplot is unclear since several of the images
therein are of poor quality and cannot be properly understood.
However, the court did not follow this argument. Also, McCain
claimed that the Sidewinder, at the time of its registration,
was preceded by various foods with a curly shape, such as
potato snacks and a loaf of bread. However, McCain did not
succeed in proving that the shape of the Sidewinder –
as shown in Simplot's EU design registration – is
actually found in earlier food products or in proving that
similar shapes were present in the market before.
Effectively, Simplot's design registration for the
Sidewinder fries is deemed to have individual character and to
be novel, resulting in an adequate protection. Although there
are some minor differences between the Sidewinder and the
Rustic Twist, the court held that the Rustic Twist is much
closer to the Sidewinder than to the prior products pointed out
by McCain, resulting in an EU-wide injunction against McCain.
Manufacturers of food products will consider this decision a
tasty legal treat.
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