Supperclubs, trademarks and the London Underground

Many of you reading this will know Ms Marmite Lover. I expect several of you have been to The Underground Restaurant, her Kilburn supper club. I attended before I was a food blogger, and had a memorable day, chiefly because of the sweary biscuits she served. As the self-proclaimed “pioneer of supper clubs in this country,” Ms Marmite Lover is pretty well known. 

The Underground Restaurant launched in January 2009, achieving remarkable success extremely quickly. Supper clubs in London are two-a-penny these days, but Ms Marmite Lover (real name, Kerstin Rodgers) claims to have laid much of the initial groundwork for the current boom. From her home in Kilburn, she puts on dinners, lunches, afternoon teas, themed nights and recently, an Underground market, charging up to £50 pounds for the privilege. While she may not yet be making mega-bucks, it’s clear that what started as part-hobby, part-philosophical statement, is now a brand, generating revenue and a significant media profile for its founder.

Unfortunately for her, success means publicity, and with publicity comes scrutiny. Last week, the Evening Standard ran a story about Transport for London’s challenge to a trademark application for ‘The Underground Restaurant’, filed last year. Ms Marmite Lover confirms that she filed the application, and that TfL have sent her no less than three ‘cease and desist’ letters, demanding that she change the name or shut the restaurant down, on the grounds that she is infringing the company’s ‘Underground’ trademark.

The story met with howls of outrage from the foodie community, some of them justified, many of them not. Despite what some people have claimed, this has absolutely nothing to do with trying to ‘copyright’ the word ‘underground’ (that would be impossible), nor is it accurate to say that TfL has tried to ‘patent’ the word (patents cover inventions, not words). This piece is an attempt to look at the issue slightly more realistically, though I’m not a trademark lawyer, and none of what follows should be taken as legal advice of any sort.

TfL owns a trademark for the word ‘Underground’, registered in Class 43 for food services, restaurant booking services and the like – essentially, it’s the European-approved category for restaurants, catering and so on. This trademark entitles the owner to protection from anyone imitating it, passing off their services as the owner’s, gaining benefit by creating a false association with the existing brand, creating confusion about the origin of services or otherwise diluting the value of the initial mark. 

That said, for a trademark to be usefully enforceable, the owner must normally be able to demonstrate that it is being put to use in the category for which it was registered, and that someone else’s use of it is confusing or damaging in some way. Effectively, if challenged, TfL might be called upon to show that it not only provides some kind of food or restaurant service, but that it is branded with the Underground mark. I asked TfL if they have any such services, but didn’t get a reply.

Now, without going into whether ‘The Underground Restaurant’ actually infringes TfL’s mark – it would require more information than is available to someone not involved in the case – it is fairly clear why TfL are pursuing it. Any large corporation has a responsibility to its stakeholders (even if they are taxpayers) to protect its intellectual property. It’s sound commercial policy to stop people gaining benefit from a brand name that they don’t own. And while Ms Marmite Lover calls TfL’s own trademark “frivolous” (in as far as it covers food), for the moment, the trademark exists.

Does ‘The Underground Restaurant’ gain benefit from a false association with the London Underground? Probably not, but if the question is even worth asking, then it’s probably worthwhile for TfL to investigate it. Does ‘The Underground Restaurant’ create confusion among customers as to the origin of its goods and possibly dilute the TfL brand? Probably not, though Ms Marmite Lover’s house is not far from the Kilburn Underground station, so it’s easy to see why you might ask the question.

The more pertinent question might be whether it’s worth TfL investing money in tackling what is still a pretty small business. Many people would say no - it’s a clear waste of money that TfL could usefully spend on providing a useable transport service. Personally, I have quite a bit of sympathy for that view. But that said, it won’t cost TfL very much to send cease and desist letters, and the company knows that it has deeper pockets than its opponent. It might well be making a sensible calculation that it can nip a potential problem in the bud by throwing its weight around now. It’s not very nice, admittedly, but neither is it illegal. In fact, it’s probably good business.

So given the situation, where does Ms Marmite Lover go from here? Well, she could close down. That’s probably not an option. She could change the name of the restaurant (TfL have apparently suggested ‘Kilburn Underground’, though that doesn’t seem to solve the problem). That seems unlikely. She could wait it out and see whether TfL feels strongly enough to take her to court. The problem is, that could mean ending up in court. Finally, the two parties could reach an agreement.

“I have had reasonable discussions on the phone with TfL's lawyers. They said I'm sure we can come to an arrangement if you use a different font,” Ms Marmite Lover says. “They changed their mind. I'm hoping to come to an agreement with them,”

In all likelihood, they will come to an agreement. It’s in no one’s interests for the case to go to court. And if there’s a slight irony in a proud anti-establishment figure wanting to register a trademark in the first place, then no matter. As Ms Marmite Lover says, she’s “protecting [her] brand.” TfL would say the same, no doubt.