By Eric Mayzel
Great recipes, inviting décor, and inspired presentation can help a restaurant thrive in a competitive environment. Likewise, a number of intellectual property (IP) rights can help develop and protect the restaurant’s brand. Restaurant owners and operators who hope to develop their businesses’ brands should learn about and understand their IP rights and, where possible, take active steps to maximize the value of those rights.
What is IP? Generally speaking, IP refers to creations of the mind. IP can be protected by one or more classes of legal rights, including trademarks, copyright, patents, and trade secrets. In essence, these rights allow creators and owners of IP to control the use of their IP assets in order to derive financial and other benefits.
Trademarks and restaurants
Trademarks are vital to the branding of a restaurant. A trademark is a word, phrase, or design, among other things, that distinguishes the goods and services of one business from those of another. In a nutshell, the owner of a trademark may be entitled to stop another business from using a mark that is the same or confusingly similar, or from passing off the other business’s goods or services as being associated with the trademark owner.
It is not necessary to register a trademark, but registration offers significant benefits. A registered trademark is typically protected Canada-wide and is often easier and less costly to enforce than an unregistered mark. Registration can also increase the restaurant’s sale value and facilitate the licensing of the trademark. Registration is practically essential for franchising.
If international expansion is in the mix, a restaurant should consider whether its trademarks are already being used or otherwise “registrable” in foreign jurisdictions. Retaining foreign IP counsel is often a necessary step for those looking beyond Canada’s borders.
Following are some aspects of a restaurant that may be protected as trademarks.
- Restaurant name: When choosing a name, it is important to consider its strength as a trademark. As a general rule, the more distinctive the name, the greater the trademark protection. Naming the restaurant after a chef or founder may not be ideal for IP purposes. This is because a person’s name generally cannot be protected or registered as a trademark unless it has already acquired a sufficient reputation. Of course, choosing a name that is already in use by a third party can lead to disputes and possibly litigation down the road. A law firm can conduct searches and provide advice regarding a proposed name.
- Logos and Slogans: For best results, display logos and slogans consistently, both on-site and in printed and online materials. Including the symbols ® and TM, for registered and unregistered marks, respectively, is not mandatory in Canada, but can help strengthen your claim to these, and all other, marks.
- Dish names: Unique names given to dishes may be treated as trademarks. Restaurants may wish to review their menus for such opportunities: is there a more distinctive name for your signature dessert offering?
- Layout and décor: The overall appearance of a restaurant, known as its trade-dress or get up, may also be protectable as a form of trademark. For example, a series of court cases protected the distinctive décor of Mr. Submarine restaurants, which included a red and white striped exterior, wallpapered interiors, and signage bearing a certain font and colours. In a more recent decision, the franchisor of a system of cafés owned a registered trademark for the appearance of the café’s interiors, which included a prominent mural. The court ordered the defendant, who had taken over some of the café locations but not the franchise agreements, to remove the mural, on the basis that it was the dominant aspect of the franchisor’s trade dress. A restaurant can help protect its rights by depicting its trade dress in advertisements, posting appropriate notices on-site, and registering its trade dress.
- Non-Traditional Marks: Amendments to the Trademarks Act expected to come into force in 2018 will permit the registration of scents, tastes, textures, and other “non-traditional” trademarks. Restaurants may wish to consult with a lawyer about this development.
Copyright for restaurants
Copyright broadly refers to the exclusive legal right to copy, and to engage in other protected uses, of original artistic, literary, dramatic and musical works. Logos and signage will often be protected as artistic works. In the café case mentioned above, the franchisor’s menu was protected by copyright, as the franchisor had used skill and judgment in choosing and describing the menu items and in selecting and arranging the menu’s layout.
A lawyer can help identify additional elements of your business that may be protected by copyright. A restaurant should ensure that it will own the copyright in any work prepared by any person or agency. Registration of copyright is not required, but can be very beneficial, particularly if it becomes necessary for a restaurant to enforce its exclusive rights.
Protection for recipes
Recipes may be protected as trade secrets. A trade secret is business information that derives value from its secrecy. The owner of a trade secret must take all reasonable measures to protect its secrecy. A restaurant should consider notifying any recipient of the recipe that the recipe is a trade secret, and requiring them to sign non-disclosure and non-competition agreements. Franchise agreements will have specific terms in this regard. Restaurants and chefs should also decide early on who will own any trade secrets in recipes.
Food preparation processes may potentially be patentable, if they are novel, useful and not obvious, which a lawyer can help to assess. But don’t count on copyright to protect your recipes. While it may be a copyright infringement to copy the original words in which a recipe is expressed, it is not an infringement simply to prepare the dish.
Protections for plating
IP protection for the plating of food has become a hot-button issue. Some commentators suggest that plating should be protected as form of trade dress if it has earned a sufficient reputation to indicate the source of the dish. Others suggest that plating, if original, may be protected by copyright as an artistic work. This may require clarification from the courts as to whether plating is in a sufficiently “fixed” form to receive copyright protection, as it has historically been required that a work be in a material form of some permanent endurance.
The nature and availability of IP rights may differ from restaurant to restaurant. Restaurant owners, operators, and chefs are encouraged to consult with legal counsel to assess their IP portfolios and optimization strategies.
About the author:
Eric Mayzel is an intellectual property and franchise lawyer at Cassels Brock and Blackwell LLP, a Canadian law firm of more than 200 lawyers, and a national leader in intellectual property, franchise, and other areas of law. For more information, visit www.casselsbrock.com.