Copyright Aid

Hello,

A friend of mine has just opened an indian restaurant in Stockport called "Harappa" and has found out that someone has already got a product (a brand of Bombay Mix) which is also called "Harappa". The owners of the bombay mix are already kicking up a fuss because they have Trade Marked the word "Harappa". They have already had a legal trade-mark "specialist" write to the restaurant.

An extract from an IP Office Search on the Harappa Trademark is at the end of this post.

Our argument is that Harappa is a place name. It is the name of both an aincient civlization and a modern town in Punjab. My question is, should they have been able to trade mark this word in the first place & can force the restaurant name to be changed?

Any advice would be much apprectiated.

Thanks. Silas Murray.


IP OFFICE SEARCH for HARAPPA ...
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Status
Status:RegisteredClasses:29, 30, 43Relevant dates
Filing date:01 April 2009Next renewal date:01 April 2019Registration date:24 July 2009Publication in Trade Marks Journal
First advert:Journal:6785Publication date:15 May 2009Registration:Journal:6798Publication date:14 August 2009List of goods or services

Class 29:Snack foods, Snack food products, Prepared snack foods, Bombay Mix, Crisps, Snack Bars [foodstuff], Foodstuffs in the form of snack foods, Prepared Meals, Prepacked prepared meals, Prepared cooked meals, Prepared frozen meals, Curry [prepared meals with or without rice]

Class 30:Snack Foods, Snack food products, Prepared snack foods, Snack bars [foodstuffs], Foodstuffs prepared in the form of snack foods, Noodles, Foodstuffs prepared in the form of savory snack foods, Crisp snack food products, Cereal based snack foods, Extruded savory snackfoods, Snack foods consisting principally of bread, Prepared foodstuffs in the form of sauces, Cooking sauces, Curry sauces, Canned sauces, Savory Sauces, Spicy Sauces, Sauces [condiments]

Class 43:Services for providing food and drink, Restaurant, Restaurant services specialising in Indian cuisine, Restaurant services specialising in Tandoori cuisine, Restaurant services for the provision of burgers, fries and cola, Restaurant services for the provision of fast food, Grill Restaurants, Self service restaurants, Restaurant services provided by hotels, Restaurant services incorporating licensed bar facilities, Snack bar services, Snack bars

Hi Silas,
Glad to see that you have already done your homework on the subject. As you will know (although others may not) the purpose of a Trade Mark is to protect a product or service from being confused in the mind of a consumer with a similar product or service of a rival company. Generally this is to protect the goodwill of the business which has registered the Mark. In other words, when Company A spends lots of money establishing its brand and building up its reputation with the public, it doesn't want Company B to come along and gain unfair advantage in the same market by confusing its product with that of Company A.
As I am sure you aware, because the bombay mix manufacturer has registered the Mark in Class 43 - restaurants etc - the use of the name by your friend is what is known as a Section 10(1) infringement (from the Trade Marks Act 1994), and the appllicant (ie the Mark's owner) does not need to prove that either actual confusion or reputational damage has taken place. Because the company has registered both the logo (a stylised form of the word 'Harappa') as well as the actual word in normal text, any use of the word for business purposes in the context of any of the three registered classes falls within the infringement rules.
You ask whether they are allowed to register a place name as a Trade Mark. The answer is 'yes' as long as it isn't used in a descriptive sense. For example "Cheddar" cheese or "Melton Mowbray*" pork pies cannot be registered as Trade Marks because they refer to the geographical origin of the product. As far as I can tell, Harappa Lrd are not using their business name or trade mark to identify their product with the geographical area. So in answer to your second question, yes, I'm afraid they can stop your friend using the name Harappa for his restaurant. Clearly you (or he) might wish to get full professional advice but I can't see any grounds on which this claim could be refuted.



* "Melton Mowbray" does however have EU Protected Geographical Indication (PGI) status http://www.mmppa.co.uk/protecting.html

Thank you so much for such a quick and comprehensive reply Andy. What if the name was changed slightly, to say Harapa or Harrapa ... would that be enough to legally keep the name? Thanks again, Silas.

Section 10(2)(b) of the Trade Marks Act 1994 says infringement also occurs when:
"the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, [and]
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.
In this case, it would be up to the registered Trade Mark owner to show the likelihood of confusion exists.

Your guess is as good as mine as to whether a court would find this to be the case. It would probably be sufficiently similar for the IPO to refuse to register a Trade Mark in Class 43 for Harapa or Harrapa, but that isn't the issue here.

I suspect this proposed change would not be enough to deter Harappa Ltd from pursuing the matter through their lawyers or trade mark agents.

Thanks again for your halp Andy. Regards, Silas.