Protect and serve: Why the hospitality sector must safeguard their brands
From pop-up bars to world-renowned hotel chains, brand recognition plays a vital role in the success of every business operating in the hospitality sector.
The importance of properly registering and protecting your business’s intellectual property was illustrated perfectly earlier this summer when the people behind the illustrious Claridge’s hotel in London brought a claim for trade mark infringement and passing off against the one-woman candle-making business ‘Claridge Candles’.
The hotel may have been successful in their claim but they did not emerge unscathed. They had to give up one of Claridge’s trade marks entirely and the scope of another has been significantly reduced following a counter-claim relating to their non-use of that mark.
And this pattern is not uncommon in the hospitality industry.
In another slightly more surprising case William Grant & Sons Ltd, one of the biggest independent whisky distilleries in Scotland and owner of the famous Glenfiddich brand, failed to prevent a competitor from applying for a trade mark containing the word Glenfield.
Although these cases involve very different parts of the leisure sector, what they have in common is they involve a well-established brand losing some element of protection due to defects in their trade mark registrations. So that your hotel, restaurant or bar doesn’t find itself facing similar action, we’re going to take a quick look trade marks in general and, more specifically, at the threat of ‘passing off’.
A trade mark is designed “to protect a recognisable sign, design or expression” which identifies a particular product.
Within the hospitality or leisure sector the trade mark will usually be an expression of the brand name, logo or trading style. However, a trade mark can also consist of the shapes of certain products or their packaging, colours associated with a trading style as well as sounds, smells and slogans though it’s more difficult to register these marks as Cadbury recently found out when they lost the right to trade mark the particular shade of purple they used in their packaging.
Registering a trade mark plays a key part in creating, establishing and protecting a brand. Your mark will also help you prevent competitors from imitating the name or logo of your new establishment, product or service.
To register a trade mark in the UK, an application must be made to the UK Intellectual Property Office (UKIPO). They will examine the application to see whether it is eligible for registration. In order to be eligible, the trade mark must meet several requirements including being sufficiently ‘distinctive’ and not easily confused with any earlier registered mark.
It is also worth noting that if the trade mark is not used for five years, it can become invalid as was the situation in the Claridge’s case we started with.
The owner of a distinctive brand can bring an action to protect that brand without having registered a trade mark because use of the brand in a particular market leads to the generation of ‘goodwill’ in relation to that brand.
‘Goodwill’ has value and can be described as the quality which leads to a customer purchasing goods or services from one particular business rather than any other. The owner of a brand which has acquired goodwill can sue another trader who uses that brand (or an imitation of it) in a way that confuses the public into believing that the trader’s products are provided or endorsed by the owner of the brand.
This is a “passing-off” action.
In a recent example, the maker of Jägermeister threatened legal action against any bar caught serving a substitute product when customers had ordered the popular drink. Incredibly some of the establishments had even been alleged to have poured the substitute product from a Jägermeister bottle!
If you would like to discuss how best to protect your restaurant, bar or hotel’s brand, please contact Tom Rook at firstname.lastname@example.org or call Tom on 0114 2527183.