The British love their tea, and therefore it’s not surprising that a recent trade mark opposition regarding tea rooms was publicised by the press. The Willow Tea Rooms in Glasgow are run by Anne Mulhern. Ms Mulhern first opened her tea rooms on Sauchiehall Street, meaning 'Willow Tree Street/Alley of the Willows'. The building, which was home to The Willow Tea Rooms, was designed by Charles Renee Mackintosh in collaboration with Kate Cranston in 1903. Kate Cranston famously ran Miss Cranston’s Tea Rooms from the historic building. However, the building had not been used as a tea room since the early 20th Century, until Ms Mulhern opened The Willow Tea Rooms in 1983.
Ms Mulhern has been very successful and her tea rooms are somewhat famous. The business has featured in the Sunday Times Top 20 Spots for Tea in the UK, and is a tourist attraction for visitors from all over world. Anne applied to register 'The Willow Tea Rooms' as a UK trade mark in 1986, and the registration is still in force today.
In 2014, The Willow Trust bought the building on Sauchiehall Street in the hopes of restoring it. As a result the building was closed, and Ms Mulhern moved The Willow Tea Rooms to a new location and carried on her business.
However in April 2015, The Willow Trust applied to register the trade mark The Willow Tea Rooms. Ms Mulhern opposed their application, on both the basis of her earlier registered rights, and passing off rights. After considerable evidence rounds, a 73-page decision was issued. The Willow Trust claimed that the name had been used as a trade mark prior to Anne’s first use in 1983, and that Miss Cranston’s Tea Rooms and more specifically the building, were known as The Willow Tea Rooms.
The Willow Trust was unable to show any proof of this, and the Examiner agreed with Ms Mulhern that it would be illogical for people to refer to the business as something other than its name. Further, The Willow Trust claimed the goodwill associated with The Willow Tea Rooms mark belonged to the building designed by Charles Renee Mackintosh, and not to Ms Mulhern’s business. This was a key argument in the case, and was rejected by the Examiner. Goodwill can only be gained through business activity, and therefore could not be associated solely with a building.
Another interesting consideration was that Ms Mulherns’s registration is for a series of eight stylised marks. Anne was required to show proof that she used each of the marks in relation to all of the goods and services within the specification. Whilst she was not successful in showing use in relation to all goods and services, due to a lack of evidence, the Examiner considered that all of the marks in the series were in use. The Examiner deemed that the mark was predominantly known as the words ‘The Willow Tea Rooms’, and that the slight differences in stylisation did not alter the mark’s distinctive character.
Anne successfully opposed The Willow Trust’s application and was granted an award of costs. The Willow Trust’s application will proceed for goods and services in relation to architecture and business research.