Can you Trade Mark a Dish? Or When Can You Not Call a Pho a Pho or a Dirty Burger a Dirty Burger?

The two major elements of my life
seem to be fusing rather publicly on Twitter at the moment. When I’m not
wittering on about food and drink here on my blog I spend my days earning a
crust as a trade mark lawyer*. There have been a few instances over the last
few months of companies applying to register trade marks for things that a lot
of us would assume are rather descriptive so I thought it might be an idea to
clear up some of the misconceptions about what you can and can’t do in relation
to IP and food.


The most recent incident involves
Pho Holdings Limited who started their restaurant branded as “Pho” in
Clerkenwell in 2005. They appear to have contacted “Mo Pho” who are based in South
East London with a legal threat based on trade mark infringement and passing
off. Apparently they are demanding that Mo Pho change their name which I think
is a big old shame as a) Mo Pho’s name is a really cool play on words and b) I
think that Pho’s name is rather boring; its like calling a Dim Sum restaurant “Dumpling”
or “Har Gau”. On the face of it “pho”
is a dish that all us foodies (and any Vietnamese) know and love as a classic,
iconic dish of Vietnam so why or how could someone acquire a monopoly right to
prevent others from using the name?  In
fact there are essentially two questions to be answered here 1) Are Mo Pho
infringing Pho’s trade mark? and 2) Should Pho’s trade mark even be registered
at all?


At its most basic you can’t register
a trade mark which is either a) descriptive or b) non distinctive.  This is what has got people hopping up and
down about the Pho case. “Pho” feels descriptive. Also where would this end? Will Pho be chasing down every London restaurant that dares to have “pho” on its menu? The system is designed to prevent this. 


Pho Holdings Limited appear to be
claiming on Twitter that they aren’t actually claiming a monopoly over the dish
name but to the right to use the name for restaurant services. When you file a
trade mark application you have to choose from a list of goods and services to
which your trade mark will apply. For example class 29 is meat and processed
foods, class 33 wines and spirits whereas class 43 is for restaurant
services.  From a quick check of the
trade mark register, Pho Holdings Ltd have registrations in the UK and EU for a
whole host of classes some of which actually include food (thereby arguably covering
the dish itself) They even have a registration for “Phocafe” which covers “noodle dishes”.  Naughty, naughty!

Is this similar to Mo Pho?


One way of getting a difficult
trade mark registered is to include a logo (making it more distinctive) and
this is what Pho seem to have done. They  have a variety of registrations for the logo mark (see above). They only have one word mark for “Pho” but its arguable you could challenge this as a) not having been used in a trade mark sense (a cursory glance indicates they only seem to use the logo mark on their website and use “pho” generically on the menu) and b) descriptive (see below re cancellation). This
means the legal comparison could potentially be between the entirety of each mark i.e. “MO PHO”
versus the “logo+Pho”.   Even more different now eh?!


To decide whether something is an infringement
you need to compare the marks and if it can be shown that either a similar or
identical mark is being used for similar or identical goods then, in essence
this could be the grounds for an infringement claim. One defence to
infringement is to show that the claiming mark should never have been
registered at all and if not then to file a cancellation action. If I was Mo
Pho this is the route that I would be exploring with some specialist lawyers right about now. 
The challenge will be to show
that “pho” was recognisable to consumers at the time of filing (2005) in a wide
area (i.e. not just London or even a Vietnamese populated part of London).



Mo Pho have also apparently been
accused of “passing off”. Passing off occurs when someone (in this case Pho
Holdings) have good will and reputation in a brand which they can show has been
misrepresented by a third party (in this case Mo Pho) and is in danger of
leading to damage to their brand. Or in essence, would consumers be likely to
be confused into thinking that Mo Pho is in some way linked to Pho and as such,
money is spent at Mo Pho which would have been spent at Pho?  It is very hard to prove in the UK (and
expensive) so let’s hope Pho have got their cheque books ready and that Mo Pho
get the support they deserve to fight this.


On this I wish Mo Pho all the
luck in the world as I would like to see them able to continue trading under their current fab and imaginative name. That
said, let the Twitter storm and the PR continue – the case deserves it!


Other Examples

Soho House Group have applied for
a whole host of trade marks in the past year including “Duck Shop”, “Meat Shop”,
“Fish Shop” and “Steak Shop” covering (amongst other related services) “Services
for providing food and drink” all of which have successfully reached
registration.


They have also registered “Dirty
Burger”, which I’ve used for years to describe a multitude of burgers
(especially ones outside football grounds), meaning that the next time you’ve
had a skin full and say to a mate “I
could murder a dirty burger
” you should in theory say “I could murder a Soho House Dirty Burger™


I’d be interested to hear if
there are any other examples out there. Okay so taking the work hat off now, boring
law lecture over and back to the usual antics of eating and drinking. Cheers!



UPDATE: After an afternoon of Twitter doing what it does best at a frenetic pace, Pho Holdings posted the following tweets this evening:

I’m glad that what could have been a nasty protracted legal battle for all parties has been resolved without the need for litigation. Hard as it is to believe, lots of lawyers don’t like litigation and do what we do to try and avoid it!

*Important disclaimer: none of this is legal advice, its my
own personal thoughts from a decade of experience. If you’re in any doubt or
have got yourself in a pickle then consult a paid lawyer.  You can also find lots of useful IP advice at
the UK government Intellectual Property Office website www.ipo.gov.uk 
They also have a helpline which, although they can’t give legal advice
is nonetheless very helpful!

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13 Comments

  1. Anonymous
    September 24, 2013 / 2:07 pm

    It's the problem with the currently rather lame trend for naming brands after well-known and pre-existing collectives. Should be the other way around. Of course the really clever would think of a name, and it's so good, the product will universally become known as it (Hoover is the obvious example).

    • September 24, 2013 / 5:03 pm

      I agree completely, the best brands are invented names. Google and Yahoo meant nothing to anyone a few years ago but are now ubiquitous. Plenty of food examples; Fanta, Marmite, Hawksmoor, Hibiscus the list is endless. One of my favourite restaurant names is Phat Phuc in Chelsea; quirky, naughty but original whilst still indicating the style of food they sell (just down the road from the wonderfully named shoe shop 'R. Soles' which is also fab).

  2. Anonymous
    September 24, 2013 / 2:34 pm

    Can't believe anyone would confuse the two! But I don't get the uproar regarding the TMing of Pho – isn't it for it to be used as a name of a restaurant. Regarding the basic test does the 'or' condition prevail as the logo is pretty distinctive hence it can be TM'ed- though if they prove that they weaken the case that anyone would confuse their distinctive brand with mo pho's.

    • September 24, 2013 / 5:07 pm

      I think the problem arises because people historically haven't necessarily been as familiar with more unusual cuisines. Hevster's e.g. below is good one or how about this… Imagine years ago someone had trade marks "Duck" for restaurants and also for food the when The Fat Duck opened they threatened to sue them, we would surely all consider that crazy both from the perspective of how they trade marked "Duck" to begin with and also how anyone could possibly think they would be confused. I also like the Ramen examples people have given on Twitter.

    • Anonymous
      September 24, 2013 / 6:30 pm

      Oh yea- completely agree with you and kavey and the everyone else on how silly it is to attack anyone using the word pho in its name. But can you TM a generic word if it is used distinctively? Distinctive being the test.

      Would it possible to trademark something like DUCK or RaMeN or BurGER (in a font and with graphics and a brand that took £££ to design rollout). Its a dish yes, but distinctively used. I'm pretty sure Polpo is a descriptive word, no logo springs to mind but will be done if I tried to open a restaurant called say called Little Polpo. How about Little Social Street (per Jason Atherton sites)

      I think people are getting confused – though a bit of a mouthful to sat each time, can't believe they TMed Pho for use only in a restaurant. Regarding using in food – doesn't that cover say – if they wanted to see packaged products in super markets perhaps?

      Could someone retail products, say curries, called PHO as their brand and argue that its pronounced FO not fur?

  3. September 24, 2013 / 3:42 pm

    Agree with the first response above – seems a bit lame and lazy to me too.

    Pho are in a position that they have chosen to call themselves after a word that is already a common food term. Someone else has come up with a clever use of that common word. I can't see how Pho can think they now own the word 'Pho' when it has been around a lot longer than they have and has been in common usage for ages. I might open a company selling cook-it-yourself noodle soup ready meal packs called 'Pho Kit' just to test their resolve further.

    Another example for me would be 'Roast'. A fairly common term in food to describe a family of dishes but obviously also the name of a certain eating house in Borough. However there is already another food business called 'Spit & Roast', a small street food business who sells chicken at pop-up events. There is also a coffee company called Artisan Roast who make coffee up in Edinburgh. There even appears to be a Roast Beef Productions in Soho but I am at work so not willing to investigate what they might do too closely. Point is, Roast are obviously quite comfortable with the fact they can quite rightly protect their right to be the only 'Roast' restaurant on the block but they have to live with other people using 'Roast' as part of their name, even other food/drink related businesses.

    • September 24, 2013 / 5:20 pm

      Hello! Fabulous example, couldn't have put it better myself. Although I am disappointed you didn't investigate Roast Beef Productions in Soho, firewall schmirewall…..

  4. September 24, 2013 / 3:49 pm

    The uproar is because Pho are trying to use their trademark not just to stop others opening restaurants with the name Pho or Pho Cafe but any name that includes the word Pho in it. Since pho is the name of a dish, this seems completely ridiculous. There is no likelihood whatsoever of a consumer thinking MoPho Viet Cafe is actually passing off as Pho the restaurant chain.

  5. Anonymous
    September 24, 2013 / 6:46 pm

    Someone just suggest Dishonest Burgers to me! Complete opposite to an Honest Burgers!

  6. October 7, 2013 / 3:50 pm

    Well, that would be particularly tricky thing to ask, if that particularly involves a dish you've concocted that a person or a company was able to sell first. When that occurs, try consulting trademark professors and experts regarding this. They will know what's what.

    Jamie @ UK Trademark Registration

  7. October 14, 2013 / 5:43 pm

    This is pretty ridiculous in my opinion. Had it been a logo or a signature dish unique to the restaurant, I'd understand the allegation. But saying that Mo Pho is infringing is like saying no other fish and chips stand can sell fish and chips just because.

  8. Anonymous
    November 28, 2013 / 8:55 pm

    So can anyone have a restaurant & claim to serve 'Dirty Burgers' or is this trademark infringement.

  9. Anonymous
    July 6, 2015 / 10:58 am

    I have an idea for a name of a ready meal that is fish based. I would like to sell the concept to a local major company that already is a leader in the field of ready meals. Do I need to get a trademark for my name before going to them with the concept?

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