The Globe and Mail with Teresa Scassa 30 June 2019
Two of the world’s biggest French-fry makers are locked in an international legal battle for who has the rights to manufacture a spiral spud.
In one corner is Idaho-based J.R. Simplot Co. with its Sidewinders, a curly potato wedge that comes in four trendy flavours, including craft beer and smoky barbecue.
In the other corner is Canadian frozen-food giant McCain Foods Ltd., maker of the Twisted Potato, a thick-cut, curved potato wedge with a peel.
Simplot is suing McCain Foods for the “economic harm” it says the Twisted Potato has caused the Sidewinders in the Canadian, U.S. and European Union markets and it has commenced legal action in all three jurisdictions. McCain is countersuing.
The two are titans of the French-fry world. Simplot, with an estimated US$6-billion in global annual revenue, is one of the suppliers of McDonald’s iconic fries. McCain Foods, with $9.5-billion in global sales, boasts that it makes one out of every four frozen French fries in the world.
The case hinges on whether these two kinds of curvy frites are different enough from each other to be distinct intellectual property. The differences may seem small to consumers – and hardly worth a costly legal battle – but the tiniest twists can mean big money for companies in the billion-dollar French-fry business.
“The real challenge for these guys is that the marketplace is not really growing in terms of the dollar value,” said Robert Carter, an industry analyst with the NPD Group.
That means that, in order to grow, companies have to steal market share from competitors, Mr. Carter said, and they do that by inventing new products and protecting those designs jealously.
In court documents, Simplot alleges that McCain’s Twisted Potatoes infringe on the industrial designs of the “distinctive” spiral of the Sidewinder fries.
In Canada, having an industrial design registered with the government gives a company the exclusive rights to sell products with that design for up to 10 years from when it was registered.
The Sidewinder debuted in Canada in 2013 and five related industrial designs were registered on May 5, 2014. McCain registered its industrial design for the Twisted Potato on Sept. 24, 2014, and the product hit the market in 2016, court documents state.
“The defendant’s [McCain’s] activities are an attempt to piggyback on Simplot’s investment in Sidewinders by introducing a copycat product without investing its own time, research or money into making a distinctive and successful product of their own,” Simplot writes in its statement of claim, which alleges infringement of its industrial design.
Simplot is asking the courts for an injunction to halt the production of McCain’s twisted taters, the profits from their sale and the disposal of any “infringing articles.”
McCain denies the allegations, arguing that their fries differ “substantively” from those of Simplot.
In its defence filed in court, McCain said its own Twisted Potato product is thicker than the Sidewinders (10 mm to 12 mm compared with 5 mm to 6 mm), has fewer turns (one twist instead of two or three) and rotates in different directions (McCain’s fries twist either clockwise or counterclockwise, whereas Simplot’s potato product turns only clockwise). As well, McCain said, the Sidewinder has ridged surfaces – while the Twisted Potato does not.
McCain has also countersued, alleging that it is, in fact, Simplot who infringed on McCain’s intellectual property and that the five Sidewinder-related industrial design registrations should be invalidated because they do not differ much from each other or from other French fries on the market.
Teresa Scassa, a law professor at the University of Ottawa who studies intellectual property, said that the degree of distinctiveness will likely be a central issue of the case.
“[McCain] is arguing that [the Sidewinder fry design] is not novel at all, but secondly if it is novel, the novelty is pretty narrow and has to be understood pretty narrowly,” Dr. Scassa said.
She added that it’s uncommon for cases such as this to come before the courts in Canada.
A spokesperson for Simplot declined to comment.
McCain has also launched a separate lawsuit for patent infringement, related to part of Simplot’s manufacturing process.
“McCain invests in its intellectual property and when it is necessary, it will take steps to enforce its valuable rights,” a spokesperson for McCain said in a statement.
The cases are currently working their way through the Canadian, U.S. and EU justice systems.
A European court has already authorized an injunction to prevent McCain from selling its product (called the “Rustic Twist”) in that region.
Canada’s Federal Court is scheduled to hear the case on May 4, 2020.