We all know that trademark 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 absolute grounds.

The difficult question to answer is whether a  trademark 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).

Pho Holdings LTD, who operate a small glossy chain of Pho Vietnamese cafes (eight so far; with a ninth to open in Leeds soon) successfully registered the trademark ‘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 Pho might be well known amongst the Vietnamese population, as well as enthusiastic foodies and keen Time Out readers, at the moment it is safe to say that it is 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.

Dispute the arguable lack of awareness of the meaning of the word Pho amongst the British public, 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.” What will be interesting to see is if Pho Holdings Ltd will be able to successfully renew their trademark registration when it is 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 could be a well known dish amongst the British population.

Interestingly, the well know Mexican fast food chain Tortilla have not successfully registered the word Tortilla. After the rise in popularity of the supermarket Mexican fajita kits, I am sure that you are well aware that a Tortilla is a type of thin flatbread made from finely ground wheat flour. Who is to say that in 5-10 years the word Pho will be as well known as a Tortilla. Did you know what a Tortilla was 25 years ago? With the growth of globalisation more and more words and phrases will clearly become more well known throughout the UK and the rest of the world.

Before business start spending money registering their trademarks, or renewing their already registered trademarks, they to need 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 trademarks, 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 trademark 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 trademarks or look at other ways of protecting your intellectual property please contact Laura Trapnell at laura.trapnell@parissmith.co.uk