Fowl play? NANDO's v FERNANDO's

Is Nando’s simply bullying the little guy, or do they have a genuine complaint?

You may have seen the recent story about Nando’s allegedly bullying a restaurant owner in Reading, over his use of the name FERNANDO’S, for a similar style chicken restaurant. Being a trade mark attorney who represents the interests of many SME’s, I am all for the little man and don’t think that big brands should always jump on the use of a similar name by a one-man band, where there is clearly no harm, particularly where it is just going to generate bad publicity. However, we have trade mark laws in place for good reason and companies should be able to protect their marks and the reputation/goodwill they have acquired through a huge amount of investment, without encountering criticism. Why shouldn’t a company shout when there is a danger that someone is trading off their reputation and potentially infringing their trade marks?

This story isn’t just about the similarity between NANDO’S and FERNANDO’S, it also concerns the fact that the names are both used in red and are accompanied by a highly similar cockerel logo. You might question why a chicken shop shouldn’t use a chicken/cockerel logo, but when it looks like almost the reverse mirror image of an existing brand, then surely that’s just not cricket? It can be seen below that both cockerel logos are primarily black, contain a red heart on the body and contain dots around the edge of the tail. Both logos also appear to have only one leg. I appreciate that a large majority of the public would recognise the difference between the names NANDO’S and FERNANDO’S, but if you came across these logos independently, and without the accompanying name, would you notice that there was a difference between the two? As far as trade mark use is concerned, we rarely have the chance to view two marks side by side and we have to consider the impact of imperfect recollection on consumer perceptions.

In addition to the above, Fernando’s uses a highly similar chilli logo. Again, a chilli may be an obvious choice for a restaurant selling spicy food, but can we really believe that Fernando’s has acted in good faith in adopting a logo which looks so remarkably like Nando’s Peri-ometer logo?

The similarities between the branding of Fernando’s and the well-known brand Nando’s is simply too close for me to believe that it was all adopted independently. Mr Aziz has stated that he is “baffled” by Nando’s claim of infringement, but if you sail to close to the wind, then you should be prepared to accept the consequences. If the branding has been copied then seeking PR on the basis that you are the victim of bullying is the wrong way to go. Clearly Nando’s isn’t “bullying [Mr Aziz] because [his] chicken is better than theirs”, they are just trying to protect their brand and prevent him from trading off their reputation.

You may ask why Nando’s are so concerned by a single restaurant in Reading, particularly when a large percentage of the relevant public would not confuse Nando’s and Fernando’s. However, even where the public are aware that there is no link between the respective restaurants, because the restaurants branding has a familiar look (being similar to Nando’s), consumers will feel a certain amount of affinity with Fernando’s, even though they have never eaten there. They are, therefore, more likely to eat in Fernando’s, than another chicken restaurant which has a completely different name and look, because of the subconscious connection with the famous brand. This is why supermarkets have so many own brand look-a-likes. They are not there to confuse customers into thinking they are buying branded products, but they know that if a customer wants a cheaper version, they are more likely to buy the product that resembles the branded product, than a product which looks totally different.

I should also like to pose the question of what happens when Fernando’s is suddenly not just a single restaurant in Reading, but a group of restaurants with sites around the country, opened either by Mr Aziz and his business partner, or perhaps as a result of franchise agreements with third parties? If Nando’s just sat back on its laurels and ignored the first restaurant, should they just allow a raft of new restaurants to open? If they then complained at that point, would it be considered unfair, because they didn’t voice any concerns over the first restaurant?

Mr Aziz claims that he was inspired to adopt the name FERNANDO’S by the TV program Take Me Out, where people go on dates to a fictional island, Fernando’s. People are inspired to adopt trade marks for all sorts of reasons, but if a third party already has the same or similar name registered then unfortunately, you cannot adopt that mark and have to go back to the drawing board.

Your intention behind the choice of mark is irrelevant, as unlike copyright where you need to prove that there has been actual copying to be successful in a claim of copyright infringement, trade mark infringement can occur even if the act of adopting the allegedly infringing trade mark is entirely innocent and without knowledge of the earlier mark(s). As such, whether or not Mr Aziz had any intention of copying Nando’s trade marks, the fact remains that there does appear to be a similarity between the marks he uses and those which have been registered by Nando’s.

The above demonstrates why it is so important to carry out initial checks and trade mark searches to ensure that your chosen trade mark has not already been registered, before you spend money on marketing collateral, otherwise you may have to spend even more money rebranding. A trade mark attorney can help provide you with the advice you need, so that you can avoid ending up in the situation Mr Aziz and his business partner have recently found themselves in.