Vietnamese restaurant chain Pho brought trade mark law into the limelight recently, hitting the press after initiating enforcement action against Mo Pho, a small independent Vietnamese restaurant
Vietnamese restaurant chain Pho brought trade mark law into the limelight recently, hitting the press after initiating enforcement action against Mo Pho, a small independent Vietnamese restaurant based in South London. Pho Holdings Limited - the proprietors of a UK registration for the word PHO - considered 'Mo Pho' confusingly similar to PHO and requested they change its name to prevent the initiation of infringement and passing off actions against Mo Pho.
Following a Twitter backlash from customers and foodies alike, Pho publicly announced it had been heavy handed and would cease any further action. However, this story raises a number of questions; specifically, whether descriptive names such as PHO are registrable, whether the use of the name 'Mo Pho' amounted to an infringement and whether, in the age of Twitter and Facebook, growing brands need to exercise caution in enforcing their registered trade marks.
A trade mark must have distinctive character in order to be registered; descriptive marks which designate the kind, quality or other characteristics of the goods or services cannot be registered. Given that "pho" is a type of noodle soup and the national dish of Vietnam, the registration of PHO has been likened to successfully registering the words 'sandwich' or 'fish and chips'.
Several factors must be taken into account when assessing whether PHO is registrable. Whilst it can be argued that PHO is descriptive in nature, in certain circumstances a descriptive mark may be capable of registration. A trade mark must be registered in the appropriate class of goods and services to which it relates. Therefore, in their examination, one of the factors the Registry will look at is whether third parties are likely to use the mark applied for to describe goods and services covered by the application. In this instance the word mark PHO is registered in Classes 39 for "packaging and delivery of food and drink products" and 43 "cafe and restaurant services". Therefore, Pho has registered the mark PHO as the name of a restaurant, not the the dish itself. Given that the main third party use of the word "pho" is to describe the dish, registration of PHO in Classes 39 and 43 is in reality unlikely to prevent other traders from using "pho" to describe dishes on their menu.
Given that at the time of its registration in 2007 "pho" was a relatively unknown Vietnamese dish in the UK, it is likely that the mark PHO was considered to be a distinctive and non-descriptive trade mark for restaurant services and, therefore, registrable. It should be noted, however, that a third party invalidity action was filed in October 2012 against Pho's UK registration for the word mark PHO; it will be interesting to see how this action plays out.
This case highlights the benefits of distinctive and non-descriptive trade marks. There seems to be a developing trend for some restaurant chains to use non-distinctive or descriptive names to describe their business, such as Dirty Burger and Chicken Shop. Therefore, when developing a brand a balance must be struck between choosing a name which is not descriptive and which is distinctive but alludes to the nature of the product.
What this case does show is that growing brands must be increasingly careful in how they choose to enforce the rights in their brand. In the Twitter and Facebook age, consumer power is at an all time high and a negative reaction in the blogosphere can have a severely detrimental effect on both big and growing brands alike. This is highlighted by Pho's quick and embarrassing u-turn. Therefore, when enforcing their rights, it is important for brands to pick and chose their fights carefully.
Vietnamese restaurant chain Pho brought trade mark law into the limelight recently, hitting the press after initiating enforcement action against Mo Pho, a small independent Vietnamese restaurant based in South London. Pho Holdings Limited - the proprietors of a UK registration for the word PHO - considered 'Mo Pho' confusingly similar to PHO and requested they change its name to prevent the initiation of infringement and passing off actions against Mo Pho.
Following a Twitter backlash from customers and foodies alike, Pho publicly announced it had been heavy handed and would cease any further action. However, this story raises a number of questions; specifically, whether descriptive names such as PHO are registrable, whether the use of the name 'Mo Pho' amounted to an infringement and whether, in the age of Twitter and Facebook, growing brands need to exercise caution in enforcing their registered trade marks.
A trade mark must have distinctive character in order to be registered; descriptive marks which designate the kind, quality or other characteristics of the goods or services cannot be registered. Given that "pho" is a type of noodle soup and the national dish of Vietnam, the registration of PHO has been likened to successfully registering the words 'sandwich' or 'fish and chips'.
Several factors must be taken into account when assessing whether PHO is registrable. Whilst it can be argued that PHO is descriptive in nature, in certain circumstances a descriptive mark may be capable of registration. A trade mark must be registered in the appropriate class of goods and services to which it relates. Therefore, in their examination, one of the factors the Registry will look at is whether third parties are likely to use the mark applied for to describe goods and services covered by the application. In this instance the word mark PHO is registered in Classes 39 for "packaging and delivery of food and drink products" and 43 "cafe and restaurant services". Therefore, Pho has registered the mark PHO as the name of a restaurant, not the the dish itself. Given that the main third party use of the word "pho" is to describe the dish, registration of PHO in Classes 39 and 43 is in reality unlikely to prevent other traders from using "pho" to describe dishes on their menu.
Given that at the time of its registration in 2007 "pho" was a relatively unknown Vietnamese dish in the UK, it is likely that the mark PHO was considered to be a distinctive and non-descriptive trade mark for restaurant services and, therefore, registrable. It should be noted, however, that a third party invalidity action was filed in October 2012 against Pho's UK registration for the word mark PHO; it will be interesting to see how this action plays out.
This case highlights the benefits of distinctive and non-descriptive trade marks. There seems to be a developing trend for some restaurant chains to use non-distinctive or descriptive names to describe their business, such as Dirty Burger and Chicken Shop. Therefore, when developing a brand a balance must be struck between choosing a name which is not descriptive and which is distinctive but alludes to the nature of the product.
What this case does show is that growing brands must be increasingly careful in how they choose to enforce the rights in their brand. In the Twitter and Facebook age, consumer power is at an all time high and a negative reaction in the blogosphere can have a severely detrimental effect on both big and growing brands alike. This is highlighted by Pho's quick and embarrassing u-turn. Therefore, when enforcing their rights, it is important for brands to pick and chose their fights carefully.