Food for Thought: Intellectual Property in the Food and Drinks Industry
First Published April 2018
Belfast has seen a surge of new restaurants, hotels, specialist ale producers, microbreweries and innovative eateries over the last couple of years. To thrive in such a competitive environment, being able to offer a unique product or service is essential. Building a successful brand takes enormous effort – and most of the time it is a financial one.
During this process, intellectual property (IP) rights are developed and should be properly protected otherwise it could be lost. Your IP can add tremendous value to your business. Restaurant owners and operators should, where possible, maximise the value of those IP rights. IP is protected in law by patents, copyright and trademarks, and designs, which enable people to earn recognition or financial benefit from what they invent or create and prevent others from copying their work.
For restaurants, a trademark may be just as important as the location that you have secured. A trademark is a word, phrase, sign, design, or logo that distinguishes goods and services of one business to another. If you own and register your trademark, you have the rights to stop others from using a mark that is the same or confusingly similar to your goods or services or, in case of passing off, a mark that could be seen as being associated to your goods and services.
In certain cases, you can seek to protect your unregistered trademark. This will be done using the common law passing off but you have to prove that: (1) you own the mark in question; (2) you have built up a reputation in your mark; and (3) you have been harmed by other people’s use of the mark. For example, if you are operating a particular themed restaurant. Although it may not be possible to register the theme as a whole as a trademark, you may prevent others from replicating the same theme for their restaurants. In essence, you would need to prove that the other people, by associating with your goods and services, are ‘piggy-backing’ on your reputation and success.
It can be however very difficult to enforce unregistered trademarks. Therefore, registering your mark from the onset can offer significant benefits. Registered trademarks are protected throughout the UK. It is often easier and less costly to enforce. Registration can also increase the value of your business; you can sell it just like you sell other business assets or you can licence it. If you intend to set up a franchising network, a registered trademark is essential.
Restaurant names, a catchy slogan or a logo may be registered as trademarks. Naming your restaurant after a chef or a founder is not recommended simply because person’s name is generally not distinctive. You need to consider the strength of the name chosen from a trademark point of view – the more distinctive your name is the greater the trademark protection. There is a simple exercise you can do when choosing a name – a Google search and a quick check of the UK trademark database are both free of charge. This is to ensure that the name has not been used elsewhere in the UK or has already been registered as trademark for restaurant services.
If you use a logo as well as a name, both should be registered. Generally, registering a black and white mark, without claiming colours, would allow you to protect your mark even if you use it in different colours. However, if the colour is an intrinsic part of your trade mark (for example, Louboutin shoes’ red, Tiffany’s blue and Cadbury’s purple) you may wish to register a colour mark.
You should bear in mind that it is best to use your registered name or logo consistently, whether online, on your menu or any other marketing materials. For trademarks, if your registered mark has not been put to genuine use within the period of five years from registration, you could lose the legal protection over it. You may claim that you use a variant of your mark but that is not a sufficient defence as the variant is not registered – therefore, it cannot benefit from the same legal protection.
If you have crafted a unique dish and it has been proven a hit, you may consider registering the name of that dish as trade mark. The same goes for a unique drink or cocktail.
Although trade dress is not protected on its own right, you may be able to seek protection of your trade dress as a form of trade mark. For example, BP owns a registered figurative mark consisting of a sketch of a filing station, depicted in heraldic shading, with the colour green as applied to the exterior surface of the premises. Aside from the striking green colour, the overall appearance of its stations is very similar to that of its competitors. So you may wish to review the overall look of your restaurant appearance, its décor, interior and exterior, and any particular feature, for example, a cleverly designed menu or a mural in the main dining area.
Unlike in some countries, scents, tastes and textures cannot be registered as mark simply because they are not capable of graphic representation. Sound, however, may be registered as a mark so long as it can be represented graphically and is capable of distinguishing goods or services of one undertaking from those of other undertakings. One might question whether plating could be protected as a trade mark if it is unique and has earned sufficient reputation to indicate the source of the dish. Others might suggest that plating may be protected under copyright as an artistic work. This would need to be examined by the court on a case by case basis.
When designing new products, you are automatically entitled to design right that allows you to stop others from copying it. It lasts 10 years after it is sold or 15 years after it is created. To get better protection, you may seek to register your design. The look of your design includes the appearance, physical shape, configuration (or how different parts of a design are arranged together) and decoration.
To be registerable, your design must be:
not be offensive (for example feature graphic images or words)
be your own intellectual property
not make use of protected emblems or flags (for example the Olympic rings or the Royal Crown)
not be an invention or how a product works – you’ll need a patent instead
Your marketing literature may be protected as copyright. In essence, copyright protects the following work that you create:
original literary, dramatic, musical and artistic work, including illustration and photography
original non-literary written work, such as software, web content and databases
sound and music recordings
film, television recordings and broadcasts
the layout of published editions of written, dramatic and musical works
You get copyright protection automatically and don’t have to apply or pay a fee. So, marketing literatures – that are original – may be a copyrighted work. If you commission an artist to put graffiti on a section of the restaurant’s wall or create a painting for the restaurant, those works may be copyrighted if they were original. If you own a copyright in a work you have exclusive right in that work – that is to copy the work, issue copies of the work to the public, rent or lend the work to the public, perform, show or play the work in public, communicate the work to the public and make adaptation of the work. As a restaurant owner, you should ensure that you own the copyright in any work created by any person or agency on your behalf.
As for your recipes, they can be protected as trade secrets. Trade secrets are business information that derives value through its secrecy. There is no specific legal protection regime for trade secrets; however, they can be protected by way of contracts. As such, as a restaurant owner, you must take all reasonable measures to protect your trade secrets. That includes notifying your chefs and all the relevant people who have knowledge of your recipe that the recipe is a trade secret and requiring them to sign non-disclosure and non-competition agreement.
The recipient then has an obligation to not disclose the recipe to any other person. To avoid potential conflict, you would need to consider as to who owns the recipe – yourself as the restaurant owner or your chefs who create it. As there is no particular law governing trade secrets, the contract can clearly spell out who has ownership over the recipe.