Pub & Bar: Protecting your trade mark

After McDonald’s made the news for losing its battle with Supermac’s over its BIG MAC EU trade mark, brand owners, particularly in the food, drink and hospitality sectors, are wondering if their trade marks could also be vulnerable. In this article, trade mark attorney, Sanjay Raphael outlines how to protect your brand, now and into the future.

In June, following a ruling by the EU’s General Court, McDonald’s lost the exclusive right to use the sign "Big Mac" in reference to chicken sandwiches sold in the European Union. A case at a high-level court featuring a household name was always bound to turn heads, but there are warnings to be heeded and lessons to be learned for brand owners of all descriptions – including those in the pub and bar sector.

Having an enforceable trade mark begins before you even apply for registration. It is important that you consider the ‘defensibility’ of a term before you apply for a trade mark. For example, simple descriptive words, or words that are very common within the sector are weak and often unlikely to be accepted as a trade mark. If accepted, they may also be vulnerable to challenge further down the line. Although it is a ‘worst-case’ scenario and unlikely to unfold in most cases, you should imagine that every trade mark you file for is one that you will have to defend at some stage. There is little point in investing in building a brand unless you are in a position to enforce it when a serious issue arises with a competitor.

Once a trademark is accepted brand owners should adhere to the principle of ‘use it or lose it’. Put simply, if you cannot demonstrate how and where you have been using a trade mark, then after 5 years your mark may become vulnerable to a challenge of non-use. To this end, it is important that a business keeps records of use of the trade mark in respect of the goods and/or services covered. These records could include where the mark has been used, how many sales have been generated and the extent of the trade mark’s use. These are examples of records that you may need to produce if required – you cannot assume that just because the trade mark is well known that it will be accepted there is use of the mark across the whole specification, even if the services are related.

One of the key issues in the Big Mac case was that McDonald’s did not produce evidence to satisfy the court that they had used the trade mark in respect of all the services for which they had registered. As a result their BIG MAC trade mark was partially cancelled.

When preparing to file a trade mark application it can be a sensible strategy to use a combination of broad terms and narrow terms so that in the event use cannot be established by that narrow term, the broader term could cover it and maintains adequate levels of protection.

A registered trade mark is valid in ten year blocks. Throughout that period, it is likely that your business will develop, and so it is important to ‘future-proof’ your trade marks. Having a well drafted specification for the mark can give the business room to grow without affecting protection whilst also making it adaptable so that it can be used to challenge other marks or prevent challenges against it.

Q&A

Q: The new tipping legislation is coming into force on 1st October – what do I need to do?

A: If you have not acted already, it is crucial you do so without delay. You must engage with your staff as soon as possible to explain the changes and ensure managers and supervisors are fully trained up. Refer to the code of practice on fair and transparent distribution of tips for more detailed advice and guidance – your staff will not be able to abide by rules, if you do not know them yourself! Remember that if you are found in violation of the new rules, you could face claims in the employment tribunal, as well as damage to your customer loyalty and employee attraction and retention. 

Q: “I've seen recently that a number of food items have been recalled over E coli concerns. What shall I do if I've sold recalled products in my venue?”

Restaurants, bars and pubs should withdraw from sale any products which have been recalled as a result of e-coli contamination. You should also ensure these products are clearly identified, isolated, and stored safely away from unaffected products to avoid potential cross-contamination. Depending on the advice provided by the Food Standards Agency (the “FSA”), these products may also need to be disposed of where it is not possible to make them safe for use or consumption (for example, by heating them to temperatures which eradicate the bacteria). In doing so, proper waste disposal guidance must be complied with.

The onus to communicate actual or suspected e-coli outbreaks to regulatory bodies and consumers usually falls to the food supplier or manufacturer, rather than retailers selling to end-consumers. However, it is advised that a communication strategy is created to manage the situation where customers might become ill from items served at your establishment.

This article was first published in Pub & Bar.

This publication is intended for general guidance and represents our understanding of the relevant law and practice as at August 2024. Specific advice should be sought for specific cases. For more information see our terms & conditions.