In September 2013, a trade mark war broke out when a Vietnamese restaurant, Mo Pho, situated in London, which had been trading there for a number of years, received a letter of demand from Pho Holdings Ltd, which runs its own chain of Vietnamese cafés in the United Kingdom.
Pho Holdings Ltd demanded that Mo Pho cease all use of its name on the basis that the PHO trade mark is owned by Pho Holdings Ltd and had been registered in its name for, inter alia, restaurant services. However, “pho” is a traditional Vietnamese soup, considered by some to be the national dish of Vietnam and a dish that features on the menu of any Vietnamese restaurant worth its salt.
At the news that Mo Pho may have to change its name, a virtual food fight erupted on Twitter with the ‘twittersphere’ seemingly unanimous in its judgment – it is unacceptable to assert exclusive rights in the name of a country’s national dish or in the name of a common type of food. Just as the trade mark BREAD in relation to bread or bread baking services would be descriptive and devoid of trade mark value, the prevailing sentiment was that a trade mark for PHO in relation to soup, or (Vietnamese) restaurant services, would lead to entirely unsavoury results. Indeed, to bring the analogy closer to home, South Africans could certainly sympathise when considering the prospect of, say, BOEREWORS, being registered as a trade mark with the trade mark owner acquiring the right to use the word for all boerewors related goods and services to the exclusion of others.
Within a day, the Twitter battle was won and Pho Holdings Ltd admitted defeat, tweeting that legal action against Mo Pho would not be pursued.
This ultimately inconsequential skirmish does, however, raise a few interesting legal issues.
When considering Pho Holdings Ltd’s PHO trade mark, most trade mark attorneys would agree with the views expressed on Twitter that, ultimately, attempting to enforce the mark PHO against a Vietnamese restaurant (being a restaurant that serves pho), which has traded under a name incorporating the word pho for a number of years, was unwise. However, the question of whether or not the mark should have been registered in the first place is not entirely straightforward. Is it correct to assume that the examiner erred in allowing the PHO trade mark to be registered?
In South Africa, the issue of marks that have meanings in different languages is pertinent, bearing in mind that we have eleven official languages. It is unlikely that a descriptive mark, applied for in, for example, Zulu, would escape the examiner and proceed to registration. Practically, a similar approach would probably be adopted in relation to a mark such as PHO. The examiner would most likely consider “pho” to be a foreign or perhaps invented word and would request the applicant to provide the meaning and derivation of the mark, for further consideration. The road to registration, if the examiner were to do this this, may be bumpy for a mark like pho as, knowing that it is the name of a soup, the examiner may well consider the mark to be descriptive if the goods or services for which registration was being sought were foodstuffs or restaurant services.
However, at the time that Pho Holdings Ltd sought to register the PHO trade mark in the United Kingdom, over five years ago, “pho” would probably have been a lesser known dish amongst mainstream consumers. Even today, it is very arguable that, at least in South Africa, pho may only be well-known in trendy “foodie haunts”. However, in the United Kingdom, Vietnamese food has apparently grown steadily in its popularity over the past few years.
The examiner of the trade mark application in the UK had probably at the time never heard of pho. He or she, not knowing Vietnamese, may well have considered it to be a fanciful combination of letters with no particular meaning or significance in relation to the goods and/or services for which registration had been sought. PHO would, at that time, at least on face value, have met the requirements for registration and, furthermore, the registration of the mark was not opposed.
But times, like consumers’ taste buds, change. With the rising popularity of Vietnamese food in the UK, evidenced by the reaction this matter evoked on Twitter, pho may well now have gained the mainstream recognition it arguably once lacked. In terms of South African trade mark law, although the PHO trade mark may, in the absence of an opposition, also have proceeded to registration as it did in the UK, one would be able to argue that it would now be an entry wrongly made in or remaining on the register of trade marks. The mark may therefore be vulnerable to attack by third parties wanting to divest Pho Holdings Ltd of its registered rights in what is now, it could be argued, a generic and commonly used term for a popular Vietnamese soup.
This matter highlights the dangers involved in registering descriptive trade marks and building brands around them. Descriptive trade marks, such as PHO, even if only descriptive in another language, are not easily enforced, particularly not when used by third parties in relation to the very goods and/or services that the mark describes, in this case, a beefy noodle soup called pho. These cases would probably only be worth pursuing if passing-off had also taken place. Mo Pho had, however, not created any impression that it was associated with Pho Holdings Ltd or its restaurants, nor was there any allegation that it had it copied their get-up. Indeed, there is little chance of consumer confusion taking place given that Mo Pho has created its own (rather tongue-in-cheek) name and associated brand.
The rights conferred by trade marks of this nature, should they remain on the Register, should be narrowly construed and Pho Holdings Ltd, going forward, should probably adopt a less aggressive approach and rather seek undertakings from other Vietnamese restaurants using the word pho in their names to the effect that they will never create the impression that they are associated with Pho Holdings Ltd or its restaurants and will not attack its trade marks. While owning a virtually unenforceable trade mark is a less than satisfactory outcome for a trade mark owner, as Pho Holdings Ltd learned, public relations implications (such as the negative attention received on Twitter) may ultimately do more damage to a brand than adopting a “softer” approach to the enforcement of a descriptive mark.
Another lesson learned from this case, which businesses and intellectual property attorneys alike should take note of, is that social media has become a valuable force of communication that, when used wisely, can be wielded to the benefit, or as in this case, detriment, of the owners of intellectual property rights. Understanding the power of social media is pivotal to brand protection and, even more so, brand promotion in the ever-evolving modern business world.
Nicole Smalberger is an associate in the Trademarks Department at Adams & Adams. Verified by: Kelly Thompson, partner in the Trademarks Department at Adams & Adams.
IMAGE: Wikimedia Creative Commons
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