Slimming World v Asda

High Court proceedings commenced by Slimming World against the supermarket Asda raise a number of interesting questions concerning where the line is drawn between trade mark rights and commercial free speech.
In a case which has attracted substantial attention, Miles-Bramwell Executive Services Limited, proprietor of the Slimming World brand, has sued Asda Stores Limited for trade mark infringement, passing off and malicious falsehood. The claim concerns Asda’s incorporation of the wording “Free to enjoy as part of the Slimming World Extra Easy Plan” on the packaging and promotional materials of its “Slimzone” range of frozen ready meals. The case is ongoing, and we act for Asda, so we will keep this article as neutral as possible, focussing on the points of general legal interest which arise.
By way of background, the Slimming World Extra Easy Plan divides foods into three categories, one of which, “Free Food”, can be eaten without restriction by followers of the plan. Slimming World provides guidance to its members as to which ingredients, if cooked without oil, will result in a “Free Food” meal. Slimming World also provides its members with a substantial list of third party products which fall within the category of “Free Food”. Finally, Slimming World has licensed the supermarket chain Iceland to produce and sell a range of “Free Food” frozen ready meals. “Slimming World”, “Free Food” and “Free” are all registered trade marks owned by Miles-Bramwell.
Asda began selling in January 2017 a range of frozen ready meals under the “Slimzone” brand. Asda believed that the range had been manufactured in accordance with Slimming World’s guidelines for “Free Food”, and that it was permitted to describe the meals as falling within that category. Slimming World’s claim is partly that at least some of the products in the range do not comply with its guidelines for “Free Food”. Of more general interest, however, is Slimming World’s contention that, whether or not the goods comply with the guidelines, no-one other than Slimming World is permitted to use the term “Free” on food products, other than to refer to price, or to the lack of any particular ingredient. It is settled law that a registered trade mark does not prohibit all third party uses of the mark, even on identical goods. There is an exception, for example, which permits third parties to use the mark to indicate characteristics or intended use of a product, provided that the use is in accordance with honest commercial practices. For example, a manufacturer of spare parts for BMW cars is permitted to advertise and sell its products by stating that they are for use in BMW cars, provided it doesn’t state or imply that the parts are made or authorised by BMW.
Asda’s contention is that, by analogy to the BMW scenario above, it is doing nothing more than indicating characteristics/intended use of the products i.e. to be consumed freely by followers of the Extra Easy Plan. Slimming World’s contention is that a substantial number of the public, on seeing the claim on the Slimzone packaging, would assume that the range must have been authorised or approved by Slimming World. That alleged misrepresentation is also the basis of the passing off and malicious falsehood claim.
As we say above, the claim is ongoing, but may if it goes to trial provide some useful general guidance as to where the line is drawn between trade mark protection and commercial free speech.