What hospitality businesses need to know about trademarking

Protecting your brand, the name of your new dish, or your promotional term through trade marks is good business. Registered trade marks, as well as protecting your brand, can be licensed for use by others in return for royalty payments and can be sold.  

JD Wetherspoon showed the value they place on this when they threatened legal action​ against competitors over the use of trade marked promotions, such as 'Beer and Burger', 'Fish Friday' and 'Curry Club'.

Wetherspoon's said its customers may be confused into thinking that the competitors’ pubs were Wetherspoons pubs by the use of Wetherspoons’ marks. Whether or not the allegations will result in legal action remains to be seen. 

How to protect your trademark​ 

If you want to protect your brand, you need to check firstly if the mark is available for use and registration. You can do this in two ways:    

• Ask a trade mark lawyer to search if it is available for use and registration; or
• Do your own research on the internet. Look at the Companies House website to see if the mark is already a company’s name, online registers and journals of the Intellectual Property Office (IPO).

Ensure your search is thorough, because you will waste your application fees if you submit an unsuccessful trade mark application. 

How to apply for a trademark​

In the UK, an application for trade mark registration is made to the IPO.  You provide details of the mark you wish to protect and the goods and services in respect of which you intend to use your trade mark.  A trade mark can only be registered in respect of specified goods and services and the IPO has a system which divides goods and services into 45 different classes.  

Amending a submitted application is difficult so it must be very carefully drafted.  Using a trade mark professional can help to avoid wasted time and expense.  

The IPO will examine your application and notify you of any objections it may have.   

If the objections are resolved (or none are raised), the application is advertised in the Trade Marks Journal for two months during which anyone may oppose the application.  If the trade mark application receives no opposition (or any opposition is resolved), the trade mark will proceed to registration. Your registration lasts for 10 years and is renewable every 10 years. 

How to protect your trademark​

Registration gives you a statutory right to the exclusive use of your trade mark. You can take legal action against anyone who uses your brand without your permission (as Wetherspoons threatened to do).  ​

If you plan to use your mark outside the UK, you should obtain strategic advice from a trade mark lawyer on how best to include those countries within your portfolio.  In general, there are three options to consider when obtaining protection internationally depending on your requirements and budget.  Register:

• in specific countries;
• as a 'Community Trade Mark' (CTM) in the EU; or
• as an international mark through the 'Madrid protocol'. 

Once you have protected your marks, have a system in place to maintain them.  A trade mark lawyer can set up a 'watching service' to monitor applications to spot any potential conflicts. 

You should also pursue infringers promptly. If you have a reputation for turning a blind eye, others may be encouraged to infringe.  If the exclusivity of your mark is diluted, future infringement actions may be more difficult. Certain court remedies can be lost if you fail to act promptly.  Do consult a trade mark lawyer, as groundless threats of proceedings can result in action against you.

What to do when a trademark claim is made against you? ​

What if someone claims you are infringing or passing off, by using their mark?  Immediately get legal advice.  You need to decide whether to:

• stop using the trade mark,
• negotiate with the owner of the trade mark to coexist; or
• fight the claim.  

A claim needn’t always end in disaster.  Renaissance Pubs recently became the Three Cheers Pub Company​ following a claim. The founders said that the change of name allowed them to re-focus and create a brand which truly represented their identity.