In the first of three articles for Fine Dining Guide, leading London intellectual property lawyers Hansel Henson discuss the ways in which restaurant owners and chefs can protect their enterprises through the use of trade marks, and how these can be used to strengthen commercial relationships and enhance public awareness of restaurants, brands and chefs alike.

A recent survey by Hansel Henson of the UK’s top 20 fine dining establishments shows that less than half have adequate registered trade mark protection for their restaurant name. In other words, less than half are properly protecting their brand!

That’s a startling statistic and is very unusual in the general hospitality sector.  Brand savvy operators of mid-market and quick-service restaurants would not dream of leaving themselves so defenceless – and nor would most suppliers.  Indeed, the first and oldest registered trade mark, registered in 1876, is for the Bass beer red triangle label.

Protected since 1876. UK Registered Trade Mark Number 1

Why are fine dining restaurants failing to protect themselves?  This is particularly strange given the relatively modest cost of trade mark registration.  The problem seems to be that many fine dining restaurateurs think that their restaurant name is not a trade mark.

On the contrary, a trade mark is any sign capable of being represented graphically, which distinguishes the goods and services of one supplier from another, serving as a designation of origin. The sign must be unique for the goods and services offered.  So, any restaurant operating under a distinctive name or other sign has a brand capable of protection through registration.

Registering a trade mark brings a number of benefits:

• Registration gives comfort that the trade mark is usable by the owners.
• Owners can take action against those who infringe their trade marks. Compared to other forms of IP protection (such as the tort of ‘passing off’) this offers a powerful safeguard.
• Owners can prevent others from registering social media and domain name handles, if the Owners’ mark would be infringed.
• Owners can put licensing deals in place with third parties, opening up commercial opportunities.

Many big name chefs and restaurants have protected themselves by registering trade marks including Heston Blumenthal, Jamie Oliver and Raymond Blanc.  This prevents others from using their brand names and facilitates deals to promote anything from sauces and crockery to hotels and DVDs. Top restaurants like Copenhagen’s Noma, London’s Le Gavroche and the now-globetrotting Momofuku group have all obtained protection across Europe to prevent others from capitalising upon or compromising the hard earned goodwill associated with their brand.

If you find yourself on the banks of the River Thames and see a sign for “The Waterside”, then you might want to see if you can get a table.  You might be tempted by “our signature dish ‘Ironed Chicken’”

CGL (the former Conran restaurant business) owns over 30 UK registered trade marks, from ‘Quaglinos’ to ‘Paternoster Chop House’.  For each restaurant, CGL generally keep things tight (and costs down) with single class applications covering their core restaurant activities for the UK only.  Each registered mark lasts for 10 years before being renewed, and together these trade marks must form a significant part of the value of the CGL chain.

Well kept London Pride and Thai Food await customers of the Latymers in Hammersmith

Chefs can also use trade mark protection for licensing deals, for example as Gordon Ramsay has done with Royal Doulton.  Chefs, whether Michelin starred or not, may also license their brand in more subtle ways such as consulting and putting their names on the menus for less formal restaurants, cafés or pubs. The new establishment benefits from the goodwill flowing from the chef’s brand, while the chef is paid a fixed fee or royalties.

Licensing on a plate – both “Gordon Ramsay” and “Maze” are registered trade marks.

Trade mark protection is generally quick and cheap to obtain. Each country around the World has its own trade mark registry, with searches of the relevant register allowing prospective owners to check whether a particular proposed mark is registrable before making an application. Once registered, the trade mark gives the property owner exclusivity and can be rolled out internationally. Trade marks can be renewed every ten years and, as with the Bass device, the protection can be maintained indefinitely.

As well as words (such as the names of a restaurant or chef), food industry leaders have successfully registered trade mark protection for the shape of their products or the colours which define their brand. Courts have ruled that the public see the lines of the Coca-Cola bottle or Toblerone chocolate as a badge of origin and so too the particular shade of orange used by Veuve Clicquot Champagne. But these are examples involving iconic brands and the attempts of many others to register shapes and colours have failed.

There are establishments called Hibiscus everywhere from Cagliari to New Jersey!

Leaving aside the potential difficulties in registering more niche marks described above, it is astonishing how few chefs take the basic precaution of obtaining trade mark protection to ensure that their name, their restaurant’s and other key elements of their brand are protected. The significance of this came to light in 2012, as Gordon Ramsay Holdings International applied for trade mark registration of “The Spotted Pig” in the UK.

This application was reportedly met with outrage by others in the industry, including Jamie Oliver and Anthony Bourdain, as it is also the name of a successful Michelin-starred gastropub in New York, established in 2004 by British chef April Bloomfield. However, Gordon Ramsay Holdings International soon transferred the newly registered mark to the owners of the “The Spotted Pig”. Restaurants lacking such powerful friends, or dealing with less scrupulous people, may not be so lucky.

Had there been a fight over the ownership of “Spotted Pig” in the UK then the New York owners would have been in a weak position legally. Without a registered trade mark in the United Kingdom, they would have been forced to file an opposition to the application, and give evidence of a reputation and customer base here in the UK.  Many restaurants have a localised trade and will not be able to satisfy the test.  So, when Pepsico first attempted to launch Taco Bell in Sydney’s Bondi, the locally based owners of a Mexican restaurant called Taco Bell Casa got an injunction against Pepsico, forcing a rebrand.

Your IP rights over here, will not necessarily protect you over there!  Trade marks are territorial .  Photo Hai Linh Truong

The registration of a trade mark in any emerging market is a simple procedure that is effective in preventing others benefitting from or tarnishing a restaurant’s name. In 2011 a restaurant called The Fat Duck was opened in Sydney’s Darling Harbour. Having registered the name as a trade mark in Australia, Heston Blumenthal was able to quickly compel the Sydney restaurant’s proprietors to change the name of their restaurant and to cease using the words “fat duck” on their menus.

If a restaurant does not have registered trade mark protection, then only where it has became a destination in itself, attracting an international clientele, can it be successful in enforcing IP rights within its customers’ territories. The famous Venetian Hotel Cipriani was able to compel the well known Mayfair establishment ‘Cipriani London’ to change its name to ‘C London’, despite being based outside of the UK.

After hugely expensive litigation, Mayfair’s Cipriani London now goes by the name “C London”.

Some of the other benefits of trade marks will be discussed further in the second and third articles in this series, where we look first at protecting dishes and culinary skills and then licensing.

Conclusion

Branding and marketing a business in the 21st century is a time and energy consuming affair, and this is no less the case for high end restaurants. Given the passion, effort and skill that chefs and restaurateurs expend to provide a superior offering, it is only right that this is properly rewarded, and that a hard built reputation is properly protected.

For a single class UK trade mark application we currently charge £450 in professional fees together with a £170 government filing fee.  For a three class application covering the whole of the European Community, the application cost is £700 plus a EURO 900 government filing fee.

For more information about trade marks and all forms of Intellectual Property law, please contact Hansel Henson on either 020 7307 5145 or by email to dah@hanselhenson.com.

© 2014 Hansel Henson Limited. All rights reserved.  HANSEL HENSON is a registered trade mark of Hansel Henson Limited.  The rights of other trade mark holders named in this article are acknowledged.

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