The recent challenge raised by Nando’s International Holdings Limited (Nando’s) against the use and Application made in respect of a highly similar trademark and for identical goods has now reached a decision. The UK Intellectual Property Office (UK IPO) has given its judgement in the opposition proceedings in favour of Nando’s. We intend to watch the activities of both parties, to see whether any infringement proceedings are entered into.
The Issues
In reaching their decision, the UK IPO took into account all relevant factors and found that the Marks share a reasonably high level of similarities, given their visual, phonetic and conceptual elements. Combined with the identical/highly similar nature of the goods and the reasonable degree of visual attention that the average consumer will pay to these, use of NDINOS trademark is expected to lead to confusion in the mind of the public such that the goods will be mistaken for one another or at the very least, it will be assumed that the products emanate from the same source.
The opposition challenge was brought by Nando’s, the Portuguese chicken giant, against the following trademark application, filed by Ndinos Peri Peri Limited, in respect of Class 30 “Peri peri sauces, condiments, marinades, salad dressings”:
The Background
It is argued by the Applicant’s (Ndinos) that their trademark can be distinguished given the differences in stylisation, font, and the inclusion of the pepper as dominant element. The trademarks relied upon by Nando’s all include an apostrophe, adding further distinction.
Furthermore, the Greek owner of Ndinos is of the opinion that since the trademark is simply a stylised version of his name, use and registration should not be restricted. From a trademark perspective, it is clear that the own name defence will only protect honest practices, as opposed to confusingly similar use where an extensive reputation is enjoyed. In any event, this own name defence will not apply if the use relates to a forename as opposed to the owners actual full birth name which, would not include a pepper as its dominant element.
The rights being relied upon by Nando’s in respect of the opposition proceedings are as follows:
- NANDO’S
- NANDINO’S
As the reader may be aware, protection for word Marks in block capitals, i.e. NANDO’S and NANDINO’S, will provide the broadest scope of protection. These versions of the Marks will protect uses of both the word and in combination with stylised elements.
Whilst it is contended that the Nando logo bears close similarities to Ndinos, from a trademark perspective NANDINO’S is highly similar. It possess the same distinctive characteristics and dominant elements to the Applicants trademark. For any readers uncertain as to what NANDINO’S refers, you are not true NANDINO’S! This term is reserved for regular Nando’s consumers, as well as being the chosen name for their children’s menu.
When assessing the likelihood of any confusion, the UK IPO must take into account the characteristics of the marketplace and the impact of the trademark(s) on the average consumer.
The products to which the trademarks are being applied are “sauces”. Despite the Applicant presenting witness statements of its suppliers, showing no instances of confusion, the average consumer must be construed as being a reasonably well informed member of the general public. The purchase of the goods in issue will be made based primarily on visual elements at the point sale. For the goods of interest to both parties, the point of sale will be made either on a website or a retail shelf, where goods are presented side by side.
Whilst a reasonable degree of attention will be paid to the ingredients and the strength of flavour, or lack of, the fact that the products can be differentiated by their main ingredients will be immaterial since the products are highly similar. Put simply, whilst the Peri-Peri sauces taste distinctly different, there is a likelihood of confusion given the similarities between the packaging and respective branding.
In reaching their decision, the UK IPO took into account all relevant factors and found that the Marks share a reasonably high level of similarities, given their visual, phonetic and conceptual elements. Combined with the identical/highly similar nature of the goods and the reasonable degree of visual attention that the average consumer will pay to these, use of NDINOS trademark is expected to lead to confusion in the mind of the public such that the goods will be mistaken for one another or at the very least, it will be assumed that the products emanate from the same source.
Summary
In this case the UK IPO decided in favour of Nando’s; the earlier rights owner as a consequence of the Opposition proceedings being brought. However, it should be remembered that a trade mark right needs to be asserted and enforced against later-filed/conflicting Applications or uses. If not, then the value of the brand will be diminished or lost as the relevant market place becomes “crowded”.
Why not contact Albright IP and let us help you?
The trademark attorneys at Albright IP can advise you on how best to protect your brand and the likelihood of encountering an objection or challenge post filing. Simply fill out the contact form on the left hand side of this page. Alternatively, give us a call.
