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What should you look out for when branding a business?

20 June 2014
What should you look out for when branding a business?

Watch out for any slight similarities between your new branding and an established trademark, as it can result in a court case, says Meera Shah

THE PROBLEM
I own an independent Vietnamese restaurant in south-east London. The restaurant is aptly named Mo Pho, as pho is the name of a renowned and traditional Vietnamese soup we serve.

I was horrified to receive a letter from the lawyers of chain restaurant Pho Holdings Ltd (trading as Pho) stating that they are putting us on notice of a potential claim for
trademark infringement.

They claim they have already registered the word ‘pho' as a trademark and that my restaurant's name, Mo Pho, could be confused with this.

As a family-run business, I cannot afford to take on a huge company in a legal battle, therefore I have no choice but to take down the signage and spend money ebranding.*

THE LAW
The UK law on trademarks is contained in the Trade Marks Act 1994 (TMA) and the statutory instrument the Trade Marks Rules 2008 (SI 2008/1797).

A registered trademark confers on the owner the legal right to the exclusive use of the mark in connection with the goods or services for which it is registered.

A trademark is effectively any sign that is capable of being represented graphically and distinguishes the goods or services of one undertaking from those of another.

Further, the Trademarks Registry can refuse to register a sign as a trademark based on one of the absolute or relative grounds for refusal contained in sections 3 and 4 of the TMA.

The UK law on trademark infringement is also set out in the TMA and occurs when the registered trademark or a sign similar to the registered trademark is used in the course of trade, without the trademark owner's consent. In most circumstances, there also needs to be the existence of a likelihood of confusion on the part of the public.

EXPERT ADVICE
This scenario serves as a cautionary tale for restaurant owners as it highlights that even food dishes can potentially be registered as a trademark, if found to be sufficiently
distinctive.

The word ‘pho' was registered at a time when Vietnamese restaurants in the UK were few and far between. Therefore, Pho Holdings Ltd was able to establish ‘distinctiveness' on the basis that the majority of the population had probably not heard of the dish.

It is worth bearing in mind that trademark registrations are only valid for 10 years, after which a renewal application will need to be made. With Vietnamese restaurants
sprouting up all over London, it is uncertain whether Pho's application to renew the trademark will be successful.

CHECKLIST

• Research the law on trademarks, infringement and passing off.

• Conduct thorough Registry searches before adopting a new mark to avoid conflicting with existing registrations.

• You should also check slight misspellings of your sign, phonetic equivalents, plurals or other slight similarities.

• If a conflict is discovered, enquire about taking an assignment or licence from the owner.

• If in doubt, seek advice from legal professionals.

BEWARE Defending a trademark infringement claim can be extremely expensive, especially as you could be liable for your opponent's costs as well as your own if you lose.

As well as an injunction, the payment of substantial damages and the removal of signage, the courts also have the power to order criminal penalties such as fines or even mprisonment.

UK Trade Mark Register: www.ipo.gov.uk

Community Trade Mark Register: https://oami.europa.eu/ohimportal/en/

*This scenario is based on a real-life dispute between the family-run restaurant Mo Pho and café chain Pho. Pho later retracted its demand and did not
pursue a copyright action.

CONTACT
Meera Shah is a commercial litigation solicitor at HowardKennedyFsi (meera.shah@howardkennedyfsi.com)

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