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In the wake of chef Alyn Williams losing his job, Patrick Wheeler and Andrew Granger look at the steps chefs can take to protect their name in the event of dismissal.
15 January 2020
A professional chef who generates excitement and comment about the dishes they create enhances not only the reputation of the restaurant where they work, but also their personal professional reputation. They quite literally make a name for themselves and the business where they work.
The reports of how Alyn Williams lost his job at the Westbury illustrate why chefs and whose names become synonymous with the restaurants they preside over and whose dining rooms come to be viewed by staff and customers alike as their personal domains, can run into serious difficulties where not they but their employers own the real estate in question and when they use it for a purpose which does not meet with their employers’ approval.
When such an individual leaves the restaurant where they have first established that reputation, the goodwill that has been created does not belong entirely to the restaurant. Some of the goodwill stays with the restaurant, which is presumably still offering high quality food, service and ambience, but the chef will retain their own personal professional reputation and goodwill which they will aim to enhance further in their next venue.
This trading goodwill can be legally protected against misuse by a former employer or others. The law of passing off enables a trader (in this case, a chef) to prevent others from misleading customers, investors and the like into believing that the chef still works for that entity or has some other business connection with it. The legal remedies include an injunction to bring an end to the deceptive statements, financial compensation for any loss that the chef suffers, a public statement by the infringer to acknowledge their wrongdoing, and legal costs.
It is rare for such disputes to get to court. In most cases, once a letter of claim has been received, the infringer gives undertakings to stop the activity that is being complained about and may offer a payment towards damages and costs. However, if a claim is disputed, then the court will have to decide whether the chef has a sufficiently significant reputation in their name, whether the defendant’s actions are causing or are likely to cause deception of customers, and if so, what damage the chef has suffered.
Strange though it may seem, the use or association of an employee’s name with a property or business does not confer on the employee any automatic contractual rights or benefits. Much depends on what’s in the written contract of employment.
Even in the case of a well-known chef therefore it’s important to ensure that the contract covers the use which the chef wishes to make of the room or property in question and, where it doesn’t, that permission from the employer is sought and obtained in advance.
Just as a chef will wish to make use of the employer’s property, both parties may wish to make use of a chef’s name. This too is a matter which should be covered in the contract, but principles of intellectual property also apply.
Managing the exit
What can a restaurant owner do if their star chef decides to leave? If the departure can be managed amicably then the chef and the restaurant may be able to shape the publicity to the benefit of both sides. An agreed press release can be prepared in which each party wishes the other well in its future activities. If the restaurant has promoted one of the chef’s team to be the head chef, or if they have employed an outside chef, this can be included in the publicity to ensure that a message of continuity and continuing high quality is conveyed. The goodwill that each side enjoys will be enhanced in such circumstances.
If on the other hand the split is acrimonious, then both sides are best saying nothing at all in public, or the bare minimum. Each should take great care in any criticism of the other, since the comments may be defamatory and result in a court claim, and in any case a ‘sour grapes’ complaint rarely puts the maker in a good light.
Registered trade marks
A chef who is getting ready to start their own business and who wishes to use their name as part of that business should consider applying for a registered trade mark. If granted, a trade mark registration will last for an initial period of 10 years and can then be renewed as often as needed. Gordon Ramsay, the late Gary Rhodes, Jamie Oliver, Marco Pierre White and others have all obtained trade mark registrations for their names, covering a wide range of goods and services.
The advantages of the legal protection given by a registered trade mark are that so long as the mark is being used for the goods or services in question you don’t have to prove your trading reputation. It is also something that you can highlight on advertising and promotional material: that you do have a registered trade mark. The costs to apply for and renew a trade mark, whether for the UK alone or for other countries, are individually quite modest. However, a big portfolio of trade marks in many different countries can be expensive to maintain and protect.
Some disadvantages of a registered trade mark are that if anyone else has an identical or similar name and has been using it in a similar field of business from an earlier date than the application, they can oppose the trade mark application, or may have a defence to a claim for infringement. The process of applying for the mark is also potentially complicated. Drafting a suitable specification of goods and services is best done by a professional trade mark attorney. In addition, a chef may have to provide evidence to show that their name is distinctive as a trade mark in respect of the specific goods and services for which they have applied.
The relationship between this requirement for distinctiveness, and the consequences of the fame that a chef has generated is a difficult one and the validity of such registrations has not yet been tested in the courts. Ironically, a chef’s fame can be the very reason why it is not possible to register their name or image for certain classes of goods or services and, even where their name is registered as a mark, it can be argued that the degree of protection afforded by the mark is limited. However, unless and until such a challenge is made and succeeds, it still makes good business sense to apply for a trade mark.
This article was originally published in Chef & Restaurant magazine: https://www.flipsnack.com/chefmagazine/chef-restaurant-december-2019-fu32v0f97/full-view.html
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Partner - Head of IP & Data Protection