If you are ‘gallinivorous’ (someone who eats chickens), it is fair to say you are having a rough time. In February, the national Kentucky Fried Chicken (KFC) shortage temporarily closed almost two-thirds of the United Kingdom’s KFC branches.
In the recent weeks, another ‘chicken story’ has made the headlines. NANDO’S, a popular high street Peri-Peri chicken restaurant originating in South Africa, has taken action against FERNANDO’S, an independent Peri-Peri chicken restaurant from Reading, Berkshire.
NANDO’S v FERNANDO’S
NANDO’S, which has over 392 Restaurants in the United Kingdom alone, has alleged that FERNANDO’S is infringing its UK and EU Registered Trade Mark rights.
The owner of FERNANDO’S in Reading, Asam Aziz, claims he had no intention of imitating NANDO’S Trade Mark, and has stated the idea for the name FERNANDO’S is from ITV’s dating show ‘Take Me Out’. The basis of the show is that a single man chooses a date, and the couple are sent to the fictional ‘Isle of Fernando’s. Interestingly, the word ‘Fernando’s’ is purported to be a play on the words, going “for a Nando’s”.
Further, Asam Aziz has stated that his use of the ‘Rooster of Barcelos’ is simply an indication that the Peri Peri chicken he is selling is in the Portuguese style. Peri Peri being a form of cuisine of Portuguese origin and especially prevalent in Angola, Namibia, Mozambique and South Africa.
With regards to the use of the ‘Rooster of Barcelos’ device, FERNANDO’S could potentially rely on the defence that their use of the ‘Rooster of Barcelo’s’ device is merely a descriptive indication of the goods and services provided, such as the geographical origin. However, to be able to rely on this defence, the would-be infringer must show that he has used the indications in accordance with honest practices.
At this early stage, we can only speculate how this dispute will play out. Large companies often experience a public relations nightmare if they adopt a heavy-handed approach against small independent businesses. Here at Albright IP, we endeavour to offer pragmatic commercial advice when dealing with Trade Mark infringement, and for a further commentary please refer to our recent article: https://zurl.co/EBD3y
Until there is further news, we will keep an eye on who will ‘rule the roost’ in the UK’s latest chicken story.