The media has recently caught wind of a trade mark tussle between tearoom brand Bettys and a café in the North Yorkshire coastal town of Whitby.
Bettys & Taylors of Harrogate operate a well-known chain of traditional tearooms in Yorkshire, and are also behind the widely-drunk brand of “Yorkshire Tea”. Bettys are the registered owner of UK trade mark registrations for inter alia the marks FAT RASCAL, YORKSHIRE FAT RASCAL and LITTLE RASCAL, which relate to the names of baked goods – specifically, fruity scones served/sold by Bettys. Interestingly, Bettys also own an EU trade mark registration for the 3D shape and appearance of their decorated “Fat Rascal” scones, which appear to have faces.
The café in Whitby, called Sandgate Coffee & Delights, have been serving/selling their own scones under the “Fat Rascal” name in the Yorkshire town of Whitby, and this has come to the attention of Bettys, who have now demanded that the café stop using their registered trade mark. Sandgate Coffee & Delights have complied with the demand and decided to rename their scones “Whitby Fatties”. In a similar story from 2014, the bakery Just Desserts apparently renamed their scones “Yorkshire Scallywags” after an objection by Bettys.
Comments by some news outlets that Bettys have “jealously protected” their trade mark in a “David and Goliath battle”, are somewhat unfair: Bettys are clearly justified in seeking to enforce their intellectual property rights. There is, however, an interesting point of contention to this story. The “Fat Rascal” scone is evidently an historic Yorkshire speciality, which is said to have originated in Yorkshire at least as early the 19th Century. The owner of Sandgate Coffee & Delights has said that, according to records, the first Fat Rascals were baked in 1855 on peat fires in the Whitby area, and she believes that those based in the town should be free to use the name as a generic term.
This raises a question as to the validity and enforceability of Bettys’ claim to exclusive rights in the mark FAT RASCAL. A trade mark should be refused registration, and can be invalidated at a later date, if the mark is non-distinctive in relation to the goods/services concerned, or is a generic term that has become ‘customary’ in the trade for the goods/services. However, Bettys’ registration will be safe from attack on such grounds if they are in a position to establish that, at the time they applied to register the mark FAT RASCAL, it was widely recognised as specifically designating their scones, or that the mark has come to be recognised as such in the time since it was registered. In the case of Bettys’ “famous” Fat Rascal scones, which they have apparently been making to a special recipe for over 30 years, this may well be the case. If so, their claim to exclusive rights in the name may well be valid.
This story might serve as a reminder to food and drink businesses to take care when naming their products, and as a warning that one cannot necessarily assume that certain names are fair game for public use. Trade mark searches can help to identify any lurking risks posed by third parties’ trade mark registrations. The story also perhaps highlights the benefit of registering not only one’s overarching brand, but also any distinctive names used for individual food and drink products.
