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Jessica Bent

Trade marks: tastier than you think

Have you heard about Hybrid Baking? If you haven’t yet, you will soon: it is getting increasingly popular in the States and is no doubt on its way to the UK.

Every morning hundreds of people queue outside a New York bakery to get their hands on the infamous ‘cronut’.

For those of you who haven’t heard of the cronut, it is a blend of the key components of a croissant and a donut, deep-fried and filled with cream or chocolate and it is not for the faint hearted!

The cronut is just one of the new additions to the baking world which now has the ‘townie’, a tartlet-brownie and a ‘duffin’, a donut-muffin to name a few.

With the explosion of these new culinary delights with such catchy names it was inevitable that the intellectual property lawyers among us would question whether the names are properly protected and who owns the trade marks in these new products.

In respect of the cronut, the owner of the New York bakery may not have been the first person to ever bake a cronut, but they certainly have been savvy enough to register the name as a trade mark. The only bakery to officially carry the cronut, they have created a monopoly over the name which creates exclusivity and ultimately queues of eager people willing to try one. 

The legal perspective: A trade mark grants the owner exclusive rights over the mark and prevents others from exploiting it. So to the other bakers keen to jump on the cronut band wagon, they have to think of other inventive ways of naming their creations, which are not identical or similar to cronut.

Not only does the registered trade mark act as a deterrent to others intending to use it and allows the owner to take legal action against others if they were to use the trade mark, but it also allows the owner to sell, franchise or grant people a licence that allows them to use it. This in itself can lead to a substantial source of revenue for the trade mark owner.

The hot Pho incident

Another recent case highlights how trade marks can get their owners into hot water, or more precisely into hot ‘Pho’.

Pho is the name for Vietnamese noodle soup, and Pho was trade marked in the UK as a logo with the word Pho by Pho Holdings, owners of various Vietnamese eateries going by the name of Pho.

Then along came Mo Pho, a Vietnamese restaurant in London, which incurred the wrath of Pho Holdings which required Mo Pho to change its name.

As Mo Pho supporters took to twitter and sided with Mo Pho, expressing disbelief that anyone could trade mark Pho, Pho Holdings backed down and said it was a mistake.

The legal perspective: The case underlines that businesses should always think long and hard about any possible PR or social media backlash they may face by getting their lawyers to write strongly-worded letters.

It also highlights the risk for businesses of applying for trade marks which are known names in other countries.

Although Pho would have been a valid trade mark when applied for eight years ago, as at that time it would not have been a generic name, it has probably become generic now through the increasing interest in Vietnamese food.

Additionally if a business chooses not to enforce its trade mark – as Pho Holdings has chosen given the PR backlash – this is likely to seriously undermine the trade mark as it does pave the way for other traders to use it.

The lesson has to be to choose your trade marks wisely and if there is any risk that your trade mark is generic, a softer approach to the other business might be the best option.

  • Jessica Bent is an intellectual property lawyer at Withy King solicitors. For issues over brands and trade marks, contact Jessica on 01225 730100 or email