January 14, 2021
As reported by The Drinks Business, US-based hamburger restaurant chain, Smashburger, recently issued a cease and desist letter against The Colebrook Inn, a one-location pub in Plympton, England, asserting unauthorized use and infringement of the chain’s “smashed burger” trademark.
In hopes of increasing their takeaway offerings during the COVID-19 lockdown in England, The Colebrook Inn added “Howey’s Smashed Burgers” to its menu. The pub created a logo for its new burger menu and sought trademark protection through a formal application to the Intellectual Property Office (the “IPO”). While waiting for approval from the IPO, the pub was issued a letter from Smashburger requesting removal of any derivative of the phrase “smashed burger” from its branding.
Smashburger claims that the pub’s “product and logo is highly similar to Smashburger’s logo and branding”. It is reported that, in the cease and desist letter, counsel to Smashburger wrote, “[Smashburger] has taken very seriously the protection of its brand and … in light of the scope of our client's trademark rights and its reputation and goodwill, your use of the infringing mark in relation to services identical to those covered by our client's will create confusion”. Smashburger asserts that the pub infringes its rights pursuant to section 10(2)(b) of the UK’s Trade Marks Act, 1994, which prohibits use of a sign where the sign is used in relation to goods or services identical with or similar to those for which the trademark is registered and where there exists a likelihood of confusion.
In response, Rob Naylor, manager of The Colebrook Inn, reportedly stated that “a smashed burger is only a process of cooking, not a brand”.
Authors: Mark Leonard and Andrew Patel