Shakespeare said, “What’s in a name? That which we call a rose by any other name would smell as sweet”[i] This may be true for other things, but not for trademarks. If one peruses the Trademark law, a ‘trademark’ carries with it a goodwill and reputation, which are extremely important for the restaurant’s overall brand positioning in the market. The name becomes synonymous with the identity of the restaurant.
Most food business owners are very good at expanding their business using varied advertising techniques, but are very negligent to protect their intellectual property. This is harmful, as they often end up in emptying their profits in long-drawn litigation. Hence, it is vital that the name of a restaurant or snack-joint must be registered as a trademark or a service mark under the Trademarks Act, 1999.
If the hotel, snack-joint, bakery or food company is providing packaged or ready-to-eat food it can apply for a TM registration under Classes 29,30,31 (for goods) and if it also provides for dine-in and home-delivery services, it can apply under Class 43 (for services). To cite some examples, the ‘Gajalee’ restaurant, world-renowned for its Maharashtrian and Goan seafood, ‘O Calcutta’, for tasty Bengali cuisine and the mouth-watering ice-creams of ‘Natural Ice Cream’ – have registered trademarks under multiple classes.
Sometimes, a newly-opened restaurant hurriedly applies for a TM registration, without being aware that the trademark has already been registered by some proprietor, who may be an established hotelier in some other part of the country. This invites legal action. If a prohibitory injunction is obtained by the hotelier, then the new-comer has to refrain from using the trademark till the matter is finally disposed of by the Court.
For example, the former ‘The Four Seasons space’ in New York City’s Seagram Building, is to be named “Landmark”, short for “Landmark Rooms”, though not even opened, it was already the subject of an infringement lawsuit brought by nearby Landmarc restaurant, (the case has since been settled).[ii]
Another famous example is the Ludhiana-based street vendor Ravinder Pal Singh Babbar, had to change the name of his burger-joint from ‘Mr. Singh Burger King’ to ‘Mr. Singh Food King’, after the Miami-based fast-food giant ‘Burger King’ filed a trademark infringement suit against him.[iii]
Trademark protection does not limit itself to only the names of restaurants or snack-joints. The names of important recipes or food preparations in the menu can also be registered as a TM. Examples are ‘Mcdonalds’ has registered its principal trademark along with ancillary ones like ‘BIG MAC’, ‘McALOO TIKKI BURGER’.
The vital tip is that before adopting a trademark and it printing it on the menus, handbills or making a website (domain name), conducting a public search for a restaurant is advisable. So, if you are to begin a venture, it is important to pay attention to minute detail to select a name for your food business or restaurant.
BY
Adv. SHRADDHA PANDIT
B. A. LLB LLM
University of Mumbai
[i] Quote from ‘Romeo And Juliet’ by William Shakespeare, c.a. 1600
[ii] Restaurants and Intellectual property: a Recipe for Success by Marc P. Misthal – https://grr.com/publications/restaurants-intellectual-property-recipe-success/
[iii] “Burger King vs. Mr. Singh Burger King” (2015)