Disputes over trade marked names involving companies such as Pho and Tragus, have been thrown into the spotlight this week. David Roberts, head of international law firm Olswang’s market-leading leisure practice, takes a look at the issues surrounding naming rights.
Readers will have seen recent press repotrts regarding an attempt by Pho, the chain of Vietnamese street food restaurants, to prevent a small local restaurant from trading under the name “Mo Pho”. We are also aware of a dispute between Café Rouge and Poulet Rouge on similar issues.
Businesses can prevent others from using names that are identical or similar to theirs where they own registered trade marks, or where they can show that consumers will be confused by that use.
A name can only be protected as a trade mark if it is distinctive enabling consumers to distinguish, in this instance, one restaurant from another.
Once registered, a trade mark is a powerful right since it confers on its owner a monopoly over the registered mark in respect of the listed goods and services protected. If there is no registered trade mark, a restaurant owner would have to produce evidence to show that it has acquired a goodwill and reputation in its name and that the use of the same or a similar name by another operator will cause diners to think the two restaurants are connected or owned by the same group.
In the Pho example, Pho, the Vietnamese street food chain, was successful in obtaining a number of registered trade marks for “PHO” which included registrations for the word PHO as well as for their distinctive logo. Acting on advice from their lawyers, they wrote to a Brockley restaurant called “Mo Pho” asking them to stop using their name because it was too close to their “Pho” trade mark.
Those who are fans of all things Vietnamese will know that “pho” is a kind of noodle made from rice which is typically cooked in a broth. Whether the word “PHO” is a distinctive mark for a Vietnamese restaurant is up for debate and it is of note that in October 2012 a third party filed invalidity proceedings at the UK Intellectual Property Office against Pho’s UK registration no. 2449151 for the word PHO, proceedings that appear to be pending. There are no equivalent proceedings pending in respect of the PHO logo which is inherently distinctive.
Against this backdrop Pho sought to enforce its trade mark against the Brockley restaurant but has recently backed down and allowed them to continue to trade under their “Mo Pho” name. In a statement the Pho founders Stephen and Juliette Wall said: “Recently, after we came under attack by a large US chain restaurant hoping to enter the UK, we received legal advice to follow IP law to protect our brand name, which meant asking all restaurants - large and small - to change their name if it included the word Pho.
“Whilst we will always want to protect the business we have worked really hard to build, we recognise that it is unnecessary to pursue action against independent Vietnamese operators unless they are truly passing off as us, so as to benefit from the goodwill of our brand. We know that the legal advice we received to pursue IP law in such a way was far too heavy handed, and we’ve decided to ignore it, and we will not continue that course of action any further.”
In the Café Rouge/Poulet Rouge case, Tragus, owners of Café Rouge have filed an application at the UK Intellectual Property Office to cancel Poulet Rouge’s UK registered trade mark. Presumably they want to prevent a third party operator entering the UK market under a name they feel is too close to theirs.
However it is relevant to note that when Tragus obtained their UK trade marks the UK IPO required them to disclaim the words “café” and “rouge” so that while their registrations give them a monopoly over use of the combination of words “café rouge” it does not give them any exclusivity in those words separately. We’ll have to await the UKIPO’s ruling as to whether they assess the new entrant’s mark to be confusingly similar.
The lesson to be learnt from both of these cases for those looking to open a new concept is to choose your brand name wisely. Seek advice to ensure that your chosen name is distinctive and capable of trade mark protection, and run clearance searches to verify that there aren’t any existing trade marks too close to your proposed name.
It is for this reason that the clever concept owners often choose to invent names for their restaurants as these types of name create the strongest brands. It is easier to apply for and register an invented name, and enforcement is also more straightforward and results in a strong portfolio of rights: hence Hakkasan, Sake No Hana, Boujis and Hawksmoor.
