We all know that trade mark registrations will be refused if they are devoid of distinctive character. In other words, if a word or a logo is regarded as generic in the public domain, the Intellectual Property Office (“IPO”) will reject the application under Section 3 of the Trade Marks Act 1994 on ‘absolute grounds’.
Is your trade mark distinctive?
The difficult question to answer is whether a trade mark is distinctive or whether it is a word or sign that is already regarded as generic in the public domain. This might seem a dichotomous question, given that each are theoretically at opposing ends of the spectrum, but it is a real issue – think ‘Hoover’ and ‘Sellotape’ for example where trade marks which were once distinctive, have become generic over time.
Pho Holdings Ltd, who operate an international chain of Pho Vietnamese cafes successfully registered the trade mark ‘Pho’ as a word in 2008. It has a good reputation within the restaurant industry and the name is growing synonymous with their cafes. However, ‘Pho’ is also a deep and restorative beef broth with noodle, meat and lots of fresh green herbs and is the national dish of Vietnam. Although the word ‘Pho’ is now well known amongst the Vietnamese population as well as enthusiastic foodies, at the time of filing the trade marks it is probably safe to say that it was not a well know term amongst the population of the UK, and probably the rest of the EU.
When Pho Holdings became aware of a small south-east London restaurant called Mo Pho, they sent them a legal letter asking them to change their name. Despite this attempt to protect their intellectual property rights, Pho Holdings Ltd felt the wrath of furious Twitter and social network users expressing their anger at Pho Holdings Ltd for asking the small restaurant to change their name. One Twitter user said it was like trade marking “sandwiches and not letting anyone else use it”. Indeed it might be.
Despite the arguable lack of awareness of the meaning of the word Pho amongst the British public at the time, there were some who clearly felt that Pho Holdings Ltd should not have been able to have registered the national dish of Vietnam. In response to the negative social network reaction, Pho Holdings ceased with their action against Mo Pho as they admitted that “all they wanted to do was protect their brand, but they understand the sentiment of the reaction.” It has been interesting to see that Pho Holdings Ltd was able to successfully renew their trade mark registration when it was up for renewal in 2017 (in order to remain in force, a UK trade mark must be renewed every 10 years). By that time the national dish of Vietnam was more well known amongst the British population.
The well known Mexican fast food chain Tortilla has now also successfully registered the word ‘Tortilla’ for its restaurant services. As you might expect, the mark is a ‘figurative’ mark, meaning that the way it looks is equally important and often owners of less distinctive, more generic marks choose to file the application as a figurative mark, because the figurative element gives it an inherent degree of distinctiveness. I anticipate that they also provided significant evidence to demonstrate that, notwithstanding the generic nature of the mark, it has become distinctive of their own services, through the use that Tortilla has made of it.
Before businesses start spending money registering their trade marks, or renewing their already registered trade marks, they need to reflect on whether their trade marks are, or are likely to become in the next 5-10 years, well known amongst the population in general.
However, businesses should have the comfort of knowing that even if they are unable to register their trade marks, they might still be able to make a claim against another party if that party is trading in such a way as to trade off their reputation and mislead the public into believing that the infringing party is the original business (the common law right of passing off). Additionally, even if the trade mark is regarded as generic now, a lack of distinctive can be overcome by publicly recognised use – i.e. by building up goodwill in the mark. In 1997, after hundreds of years of building up goodwill, Oxford University Press managed to register the word ‘Oxford’ despite its generic connotation.
If you would like to discuss the possibility of registering your trade marks or look at other ways of protecting your intellectual property please contact Laura Trapnell or take a look at our intellectual property service pages.