Pho no! Restaurant chain rescinds trademark following social media backlash  

British-owned Vietnamese restaurant Pho recently filed to surrender its trademark of the word ‘pho’ – the national dish of Vietnam – following a viral social media backlash against the business’ aggressive enforcement strategy.  

There are valuable lessons to be learned from this case, as well as similar cases, which include a London-based clothing retailer being threatened by a trademark owner for using ‘Brixton’ in its name. While organizations can maintain positive public sentiment and protect their intellectual property, striking the right balance between them can prove extremely challenging in today’s highly online world. 

When PHO was registered in 2007, the Vietnamese dish was probably not as well-known as it is today. Over the years, there is evidence of the mark being challenged but these challenges did not progress. Fast forward to the here and now, and the restaurant recently attracted a wave of criticism on TikTok, which led to it surrendering its PHO mark, despite being registered for restaurant and delivery services rather than the national dish. However, while it may have relinquished the word mark, it has retained the registrations for its figurative marks, which include its logo.  

While the restaurant is, therefore, still able to protect the figurative way it represents the mark, it has ultimately opened the door for competitors to use the word ‘pho’ by surrendering the registered trademark for the word and acknowledging it will not go after restaurants or third parties that use ‘pho’ in a restaurant or catering context. However, it is highly unlikely that other businesses will seek to register this particular trademark as PHO is now firmly on the UK Intellectual Property Office’s (UKIPO) radar due to the increasing popularity of the dish, and the recent TikTok backlash will equally serve as a strong deterrent to budding businesses.  

What this case does reinforce, however, is the importance of having a distinctive trademark. Some of the best marks have nothing to do with their subject matter. Take Kodak, for example. This is a made-up name with no meaning behind it – making it simpler to register as a trademark and protect against infringement due to its distinctive nature. There is nothing stopping businesses from trying to register a trademark for a well-known word, but it must be distinctive, and they must be prepared to protect it. 

Businesses that let third parties use their trademark unchecked and don’t take any measures to protect it could be in danger of losing their registration because it has become generic. JACUZZI and ESCALATOR are prime examples of this. Beginning as registered word trademarks, they fell victim to their own success. The public began to describe every instance of those types of product as a ‘jacuzzi’ or an ‘escalator,’ and the marks quickly became generic, resulting in the businesses losing their word mark registrations.  

HOOVER is an example where the proprietor of a word trademark registration has battled to maintain the distinctiveness of its brand due to the word ‘hoover’ commonly replacing ‘vacuum’ in the public consciousness. These examples demonstrate that irrespective of the sector in which they operate it is essential for businesses to take action to maintain their distinctiveness within their chosen market. 

Taking action does not have to involve being confrontational. An educational approach could also be taken, depending on how the recipient in question has overstepped the mark. However, in all circumstances, the main objective should remain the same: to stop the infringement and implement an appropriate solution. For some large organizations dealing with passionate fans of their brands, this often involves enforcing their rights in a way that takes the heat out of the situation. Netflix achieved this successfully in 2017 when the brand used humor to ask an unauthorized Stranger Things-themed popup bar to shut down. Rather than complaining via a formal Cease and Desist letter, Netflix sent a letter that was riddled with Stranger Things puns and references, including a playful “threat” to unleash the Demogorgon. 

Regardless of whether they follow the confrontational or educational route to enforce their rights, all businesses must keep a close eye on the optics of each particular case, especially in today’s social media-savvy world. As seen with PHO, these cases can rapidly become viral, and therefore monitoring the optics and anticipating what the overall impact on the business is going to be is crucial. In this instance, the PHO registration was legally sound; it had not been challenged by the UKIPO because the mark had been granted in the context of restaurant services and the delivery of food, not the actual dish. However, the court of public opinion saw a completely different perspective. Fortunately, Pho quickly recognized this and acted accordingly – protecting its public reputation. 

Whilst there is a concern that social media can too often be a force for bad, it can be a force for good too. Where possible, companies should regularly review their trademark portfolios in line with the latest online trends, and use social media as a tool to protect and even enhance their reputation. The world is rapidly evolving and the potential impact on trademarks is widespread. However, with a little foresight, dynamic thinking, and a considered approach, companies can keep a tight grip on their trademarks, business, and brand reputation. 

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