A play on words can be an effective way of marketing a business. However, business owners should be careful when doing this as including words and/or creating words and/or logos which are the same as, or similar to, well known registered trade marks run the risk of trade mark infringement. On the other side, trademark owners need to consider whether they want to take action against this kind of infringement.
A recent example of this concerned Jel Singh Nagra, who owned a newsagent’s in North Tyneside. Jel Singh Nagra thought a good name for his business would be Singhsbury’s, creating a sign above his shop which looked as follows:
Unfortunately for Jel Singh Nagra, Sainsbury’s did not see the comical side of things and threatened legal action against him. Whilst the specific details of the threatened legal action are unknown, it is likely to have been primarily based on infringement of Sainsbury’s registered trade mark SAINSBURY’S.
Whilst we do not comment on the merits of any possible trade mark infringement claim that Sainsbury’s may have had against Jel Singh Nagra we thought it useful to recap on the three main ways you can run the risk of trade mark infringement in a commercial/business context. These are:
i) using a sign that is identical to a registered trade mark in relation to identical goods and/or services which it has been registered for
ii) using a sign which is:
- identical to a registered trade mark in relation to similar goods and/or services which it has been registered for; or
- similar to a registered trade mark in relation to identical goods and/or services which it has been registered for.
and which gives rise to a likelihood of confusion on the part of the public (which includes a likelihood of association).
iii) using a sign which is identical/similar to a registered trade mark in relation to similar (or dissimilar) goods and/or services it has been registered for, and such use (where the registered trade mark has a reputation in the UK) takes unfair advantage of, or is detrimental to, the distinctive character or repute of the mark.
In light of the impending legal action from Sainsbury’s, Jel Singh Nagra decided to rename his shop, but rather than steer clear of major supermarket brands, he adopted the name Morrisinghs as depicted below:
Fortunately for him, Morrisons appear to have seen the humorous side of things, and rather than resort to legal action, like Sainsbury’s, wished him well.
In deciding whether to take action against a potential infringer, trademark owners will need to weigh up the importance to them of protecting their brand and deterring others from using identical or similar signs to their trade mark, against the potentially negative publicity created by pursuing the “underdog”, who the public will see as simply engaging in harmless fun.