What restaurant sells peri peri chicken, has red, yellow and black branding, and sounds a lot like Nando’s…? Let’s go to Fernando’s!
This recent case demonstrates that brand owners must be prepared to weather possible adverse publicity when dealing with clear cut cases of trade mark infringement.
Nando’s, the casual dining chicken restaurant founded in Johannesburg in 1987, has over 1,000 restaurants across 30 countries. Nando’s has instructed its lawyers, (the appropriately named) Bird & Bird, to help protect its famous trade marks and branding. It’s taking action against Fernando’s, a small chicken restaurant in Reading that opened in September 2017.
Fernando’s received the Cease and Desist letter at the beginning of March 2018. The owner, Asam Aziz, then posted the letter on social media. He claims that Nando’s is bullying him into changing his restaurant’s name and branding. The letter claims trade mark infringement of Nando’s registered trade marks, including the UK trade marks for its name and logo, the Barcelos Cockerel and the ‘Peri-ometer’, used to measure the spiciness of its food. The details of these trade marks are as follows:
3170707 NANDO’S in classes 9, 29, 30, 38, 39, 41 and 43;
1467109 NANDO’S in classes 29, 30 and 43;
3146017 in classes 9, 29, 30, 38, 39, 41 and 43;
3146016 in classes 9, 29, 30, 38, 39, 41 and 43;
3061848 in classes 29, 30 and 43 and;
3146012 in classes 29, 30 and 43.
On inspection of Fernando’s website, it’s clear that there are many similarities between the established restaurant chain’s branding and that of Fernando’s.
Legally, based on its registered trade marks and 30 years of reputation, Nando’s has an action for both trade mark infringement and passing off.
Mr Aziz claims that he took inspiration for the name of the chicken shop from ITV’s dating programme ‘Take Me Out’, where contestants go away to the fictional ‘Isle of Fernando’s’.
However, with four Nando’s restaurants in and around Reading — and supposing Mr Aziz had conducted market research before opening Fernando’s — it’s difficult to see how he didn’t know about (or rather, how he didn’t think he was running too close to) the Nando’s brand.
Mr Aziz’s use of defensive language on social media, such as “small independent business” and “I’ve invested every penny”, appears to be an attempt to try to persuade the public to side with him.
For brand owners and their advisors wanting to enforce their trade mark rights, social media and possible adverse consumer reaction must be taken into consideration (see the woes of Brewdog) when preparing Cease and Desist letters. However, brand owners should not be afraid to take steps to protect their business in such clear cut circumstances of infringement as this, when their concern is avoiding damage to (or dilution of) their brand.