Friend or Pho? No go!

Although Catherine (alias Cat the Kat) is still on a blogging sabbatical, there are times when her repute as the Culinary Kat means that the rest of the team will willingly defer to her, even to the extent of disturbing her tranquillity and begging her to break into print again. So here she is, giving her account of a recent spat that has sent shock waves resounding through London's cosmopolitan restaurant culture [where, it seems to Merpel, the only country whose culinary delights are not greatly in evidence is England itself -- but that's another matter]. Writes Catherine:

When this Kat previously thought of controversies involving soup, she remembered the Seinfeld episodes concerning whether soup was a meal (The Soup) and concerning a certain procedure for ordering soup (The Soup Nazi).  Last week in London there was another controversy involving soup, namely the extent to which a business could or should rely on its various UK trade mark registrations for the word 'pho'.  According to Wikipedia, pho is a popular Vietnamese noodle soup consisting of broth, linguine-shaped rice noodles, a few herbs, and meat.

Since 2005 Pho Holdings Ltd of Central London has registered a number of trade marks containing the word 'pho' for its Pho Cafe business.  These include Pho and device in class 43 (No 2392990), Pho and device in classes 29, 30, 32 and 39 (No 2398772 and Pho word series in classes 39 and 43 (No 2449151).  There are also registrations for PHOCAFE in classes 39 and 43 (No 2594929) and PHO TO GO word series in classes 29 30 32 39 and 43 (No 2524327).

The Guardian reported that last Monday Pho Holdings emailed a small Vietnamese restaurant called Mo Pho. (If you want an alternative meaning, this Kat suggests that you say it aloud) requiring Mo Pho to change its name.  At this point the Foodies took up arms ... and resorted to Twitter to question whether one company should be able to trade mark the national dish of Vietnam. Comparisons were made to fish 'n' chips, pizzas and sandwiches.

The founders Stephen and Juliette Wall later explained on Twitter:

“We made the decision six years ago to trade mark Pho, when Vietnamese food wasn’t as common on the high street and we only had one restaurant, to protect what we hoped would eventually become a successful restaurant business.The trade mark we own simply means only we can operate a restaurant under the name Pho (in the UK) as our restaurant brand name, but of course the word can be used in many other different types of businesses, and in many other ways (descriptively, menus, etc.)  

With plans to grow over the next few years, it’s important to us to maintain the trust of our customers, as well as to protect our name. While we regret that asking other restaurants to change their name is part of the process, we are not, and we would not, ask anyone to shut down, stop operating or change their menu.We’re following IP law to protect our brand, which means we have to ask all restaurants, large and small, to refrain from using the trade mark Pho in their name. And with what we think is a fair amount of time to rename, we know the country’s independent Vietnamese restaurants will continue to do well and serve their local communities.” 

In another Tweet, Pho Holdings Ltd stated 'we haven't TMed pho descriptively, just as our restaurant name. Did many years ago&roll out has been happening, albeit slowly'.

But this cannot be correct.  If one looks at the specification in class 29 for the trade mark Pho and device (No 2398772) one sees that the registration includes 'noodle soups ... prepared products made wholly or principally of any of the above'. 

This Kat asks: is Mo Pho infringing Pho Holdings Ltd's trade marks?  As outlined above, Pho Holdings Ltd has only one registration for the trade mark Pho by itself.  However if one looks closely at the PhoCafe website, this trade mark could be susceptible to a challenge on the grounds that it (a) is not used as a trade mark by itself but only in conjunction with the device and (b) is used descriptively to name its 15 varieties of noodle soup.  If such a challenge to the word only trade mark registration were successful, the question then would become: is PHO and device is infringed by MO PHO?  This Kat thinks it probably does not infringe as the two trade marks are not sufficiently similar. 

Unfortunately we will never know for sure.  By Tuesday, Pho Holdings Ltd had given up.   On Twitter it stated:

Merpel has heard that earlier this year the Soho House Group obtained trade mark registrations for DUCK SHOP in class 43 (No 2636625), FISH SHOP in class 43 (No 2636627), MEAT SHOP in class 43 (No 2636629) and STEAK SHOP in class 43 (No 2636631).  She wonders how many other examples are there out there?