Clifford Chance

I. Introduction

With the food industry producing more and more alternative food products – like vegan cheese or vegetarian burgers (?) – the question arises if and how these products can be protected by intellectual property law. In particular, protection for the recipe and manufacturing processes for these products is crucial for a sustainable competitive position. In this context, protection may potentially be provided under the German Patent Act ("PatG") and the German Trade Secrets Act ("GeschGehG").

Firstly, the distinction between a recipe and a manufacturing process needs to be emphasised. The ingredients and their quantities constitute the recipe (II.)¹, whereas the manufac-turing process for a product includes the production sequences and the related procedures (III.).² Furthermore, protection of the product name as a trademark within the meaning of the German Trademark Act ("MarkenG") should be taken into account as a potential addi-tional source of protection (IV.).

II. Recipe

For protection under the Patent Act, it is essential that the recipe itself is patentable. And, for any potential protection under the GeschGehG, the recipe needs to qualify as a trade secret within the meaning of the GeschGehG.

1. Patentability

A patent for an invention is only granted if it is new, displays an inventive step, and can be commercially exploited (cf. section 1 (1) PatG). These requirements generally also apply to the registration of recipes.

It is therefore only possible to apply for a patent relating to food and recipes if the preparation of a dish extends beyond the usual technical kitchen work. This is the case, for example, if unusual process steps are used. In addition, the invention must achieve a specific effect that cannot be expected effortlessly (for example, special shelf life). Moreover, unusual basis products or unusual mixtures of basis products (including spices) must be used to achieve an unexpected effect. Furthermore, the composition or the method of preparation must be described in such a way that a person skilled in the art (e.g. an amateur chef) can easily reproduce the dish. The German Federal Court of Justice, for example, held that the recipe for an onion soup was not patentable due to a lack of novelty and progress. If a recipe produces only aesthetic effects, patent protection cannot be justified.³ Notwithstanding this, the recipe must be made available to the public by the German Patent and Trademark Office.⁴ Since patents only have a limited term, they can be used by anyone after the expiration of protection which – together with the above-mentioned publication requirement – could be a (commercial) reason not to protect a recipe under the PatG.

Therefore, protection under the PatG does not seem to be the protection method of choice when it comes to recipes (for alternative foods). In addition, due to the required disclosure of the invention, obtaining a patent might not even be advisable. 

2. Protection under the GeschGehG

Protection under the GeschGehG requires that the recipe qualifies as a trade secret. According to section 2 of the GeschGehG, a trade secret is any information (i) which is secret and therefore has an economic value, (ii) which is subject to reasonable protection measures initiated by the person lawfully in control of the information, and (iii) for which a legitimate interest exists to keep the information secret. Secrecy means that the information is not generally known or easily accessible, either as a whole or in the specific arrangement and composition of its components. Especially in the case of recipes, the question arises if they could be obvious and thus not constitute a trade secret within the meaning of the GeschGehG. However, recipes are not obvious per se because an informed expert could produce similar recipes without the relevant information. However, obviousness may exist if the necessary information can be found without major expenditure of time, effort and money. In general, the analysis of a recipe is expensive, the products that need to be analysed are not freely accessible and the analysis is not reliable as such, i.e. the analysis might not yield suitable results or help to determine the underlying formulation.⁵

Thus, it is common sense that a recipe can be protected as a trade secret provided that the above-mentioned protection measures are met. For this reason, protection under the GeschGehG is generally also available for alternative food products.

III. Manufacturing process

In terms of the protection of manufacturing processes, patentability and trade secret pro-tection are controversial topics.

1. Patentability

In general, manufacturing processes are patentable.⁶ The criteria to be examined in individ-ual cases are, in particular, novelty (cf. section 3 PatG) and inventive step (cf. section 4 PatG). The German Federal Patent Court held in a decision that a manufacturing process is new even if parts of the process are already known and only one part is carried out differently, i.e. in a new way.⁷ In terms of any assessment of whether a claimed solution is based on an inventive step, the decisive factor is what the invention, in its technical context, actually achieves compared to the previous state of technology.⁸

Thus, for the protection of a manufacturing process for alternative food products as a patent, the decisive element is whether the individual process is already known and whether it achieves an inventive step (i) which is not obvious to a person skilled in the art and (ii) which deviates from the state of the current technology.

2. Protection under the GeschGehG

Moreover, protection under the GeschGehG is possible for manufacturing processes in general.⁹ This follows, inter alia, from section 2 no. 4 GeschGehG, according to which an infring-ing product within the meaning of the GeschGehG is a product whose design, features, functionality, manufacturing process or marketing is based to a significant extent on an un-lawfully obtained, used or disclosed trade secret. Therefore, manufacturing processes for alternative food products are generally eligible for trade secret protection under the GeschGehG.

IV. Protection under the MarkenG

An additional level of protection for alternative food products can be achieved via German trademark law. In general, trademark protection can be granted for all signs with distinctive character. Often, suppliers of alternative food products tend to choose product names in such a way that they convey the characteristic of the alternative product and, at the same time, indicate which product is to be replaced. However, such product names can easily be of purely descriptive or misleading nature and thus cannot be protected as trademarks according to section 8 subsection 2 no. 1 and no. 4 of the MarkenG. Hence, it is often difficult to obtain trademark protection and establish the brand on the market.

The German Federal Patent Court, for example, rejected an application for a vegan cheese alternative product called "Vromage". According to the Court's opinion, there was no distinctive character within the meaning of section 8 subsection 2 no. 1 of the MarkenG. The designation was suitable for indicating the type, quality or appearance of its goods or services, but not its origin from a particular business.¹⁰ Furthermore, the designation "Vromage" is capable of deceiving as to the nature and quality of the goods within the meaning of paragraph 8 section 2 number 4 MarkenG. "Fromage" is a foreign language term. The term "Vromage" is a variation of the term "cheese" which can only be recognised in its written form and with knowledge of the French language. A relevant part of the targeted public will therefore assume that it is a cheese or a cheese product.¹¹

Protection can also be refused if the usage of the sign can be prohibited in accordance with other legal provisions (section 8 subsection 2 no. 13 MarkenG). For example, trademark protection cannot be granted if the sign violates specific food regulations such as the prohibition to use the words "butter" or "cheese" for non-dairy products.¹² However, the European Parliament recently refrained from tightening the provision to such an extent that references and comparisons to dairy products such as "buttery" or "creamy" are prohibited for non-dairy products.¹³

Thus, trademark applicants must make sure that their trademark (i) is not purely descriptive for the target group and not misleading for other consumers and (ii) does not violate specific food regulations.

V. Conclusion

In conclusion, protection of the recipe and/or the manufacturing process for alternative food products under the PatG and under the GeschGehG is generally possible. Protection under the GeschGehG seems more likely given as there are fewer requirements to be met to gain such protection. In any case, each producer or business in the field of alternative food solutions should take additional/ supplementary protection methods into account, such as trademark protection, in order to create multiple protection layers and to raise the market entry barriers for potential competitors.

¹ Higher Regional Court Stuttgart decision from 19 November 2020 – 2 U 575/19, GRUR-RS 2020, 35613 re-cital 128.

² Köhler/Bornkamm/Feddersen/Alexander, GeschGehG, paragraph 2 recital 133.

³ Federal Court of Justice order from 23 November 1965 – Ia ZB 210/63 –, recital 18.

⁴ Zipfel/Rathke LebensmittelR/Rathke, Art. 21 recital 8.

⁵ Higher Regional Court Stuttgart decision from 19 November 2020 – 2 U 575/19, GRUR-RS 2020, 35613 re-cital 111.

⁶ Federal Patent Court, decision from 3 April 2008 - 3 Ni 33/06; Federal Patent Court order from 4 June 2004 - 14 W (pat) 333/02.

⁷ Federal Patent Court order from 4 April 2004 – 14 W (pat) 333/02, BeckRS 2011, 29288.

⁸ Federal Patent Court decision from 5 February 2019 - 4 Ni 47/17, BeckRS 2019, 9123, recital 88.

⁹ Higher Regional Court Stuttgart decision from 19 November 2020 – 2 U 575/19, GRUR-RS 2020, 35613 re-cital 109.

¹⁰ Federal Patent Court Munich order from 10 December 2020 – 25 W (pat) 552/19 –, recital 18.

¹¹ Federal Patent Court Munich order from 10 December 2020 – 25 W (pat) 552/19 –, recital 21 f.

¹² See Art. 78 subsection 1 and 2 in conjunction with Annex VII of Regulation (EU) No. 1308/2013 establish-ing a common organisation of the markets in agricultural products and repealing Council Regulations (EEC) No 922/72, (EEC) No 234/79, (EC) No 1037/2001 and (EC) No 1234/2007.

¹³ https://www.foodnavigator.com/Article/2021/05/26/Europe-drops-Amendment-171-allowing-forcreamy-and-buttery-plant-based-dairy#.