Nando's v Fernando's: Food for thought

This Kat is originally from the provincial town of Reading [said Red-ing not Read-ing] in which, like many high streets, there are some questionably branded restaurants and shops. One restaurant in particular has often been the topic of discussion about whether or not it was an infringement of another well-known eatery. As it would happen, this issue has just appeared in the news as being the subject of an IP dispute.

It has been reported that lawyers of popular chicken restaurant Nando’s, Bird & Bird [natural choice of lawyer to protect your chicken] have sent a Cease and Desist letter to the Reading based Fernando’s restaurant, earlier this month. This Kat would like to chew ponder over the issue…

The Parties

As readers may be aware, Nando’s is a popular Portuguese Peri Peri Chicken restaurant, which originated in Rosettenville in Johannesburg, South Africa in 1987 and now has 1186 Nando's in the world, 392 of which are in the United Kingdom.

Fernando’s Reading is also a Portuguese Peri Peri Chicken restaurant, open since 15th September 2017. Fernando’s director, Asam Aziz claimed that he got the idea for the restaurant from ITV’s dating show Take Me Out, where couples take a trip to the Island of Fernando’s. [Take Me Out is an ITV dating game show - the original TV Format of which came from an Australian show Taken Out, now franchised out to over 30 countries. However, Fernando’s is not a real place and some say that Fernando’s was a term coined by the Take Me Out show, as a play on words - that the couples would take each other out on a date ‘for-a-Nando’s’…Fernando’s. The couples who are selected to go on a date in the TV show in the first season went on a date at Fernando’s which was actually Club Bijou in Manchester, after that it was Cyprus and now the contestants go to the Canary Island of Tenerife.]

Trade Mark

An image used in the media of the Cease and Desist letter shows Nando’s claiming infringement of a number of their trade marks. The company - Nando’s Chickenland Limited – own 39 trade marks listed on the UK Intellectual Property Office website, in class 43 which includes restaurants, fast-food and take-away. Their marks include the name, a logo in the form of Portugal's Barcelos Rooster [the unofficial symbol of Portugal] and a multi coloured chilli, together with words “Extra Hot/Hot/Mild/Lemon & Herb” amongst others. Nando’s states that their marks are infringed on the outside sign, inside the Fernando’s restaurant and on the menu.

Aziz claims that he is being bullied into changing his company’s name and had no intention of copying Nando’s - he wanted to sell Peri Peri chicken, being of Portuguese origin, using the Portuguese chicken as a symbol of the cuisine.

It could be that in relation to the Portuguese chicken is “indicating characteristics of the goods or services.” This is a defence that allows traders to describe the characteristics of their products or services such as used in the case of Gerolsteiner Brunnen GmbH & Co v Putsch GmbH where the Court considered the trade name ‘Kerry Spring’ which was intended to identify the geographical location of the water. The CJEU held that the test was whether the geographical location was used within honest practices. Aziz claims he had no intention to infringe, but whether or not he could prove honest practice is another thing...

Incidentally, a quick search on the UK trade mark register also revealed a registered mark for a FERNANDO’S in class 43 - restaurant, cafe, etc. So even if Reading Fernando’s are not infringing the marks of Nando’s, they may still be infringing this registered mark.

Passing off

Since Nando’s argue that Fernando’s is trying to “benefit from some of things that make us who we are—our menu, logo and even our name,” they may also bring an action for be passing off. In order to establish passing off Nando’s would need to show the following:

1. Good will in the relevant location - there are two long standing Nando’s restaurants in Reading, as well as others in neighbouring towns

Is this a Nando's or a Fernando's though?

2. Misrepresentation - False statement of fact as to origin, quality, or nature of the goods which requires that there has been, or likely to be confusion about the trading links between the claimants and defendants. As explained in the case of United Biscuits v Asda [1997] RPC 513, customers might be misled by the similarities of get-up, confusion has a broad interpretation and does not require an intention to deceive. The test for which is as set out in Neutrogena Corporation & Another v Golden Ltd [1996] RPC 473 is whether on the balance of probabilities a substantial number of members of the public would be misled into purchasing the defendant's product in the belief that it was the plaintiff's. The standard for confusion is rather low, as eloquently explained by Justice Foster in Morningstar Corp Society v Express Newspaper [1979] FSR. 113: “if a moron in a hurry would be misled.”

3. Damage – such as through loss of custom (actual and potential); attraction of custom by the defendant using the claimant’s goodwill; damage to the claimant’s reputation, and hence goodwill, through false association [Stringfellow v McCain [1984] FSR 413].

Food for thought… this Kat is interested to hear what readers think would be the likely outcome?

Personally, she believes that the owner of Fernando’s will concede and that the case will not proceed. A Nando’s spokesperson said: “We are really proud of our brand and we know it means a lot to our customers. That’s why whenever we think there is trademark infringement we try to sort it out amicably.” However, Aziz’s interviews with media may not necessary be good press for Nando’s. Making statements such as “I’m just a small independent business man” may attract sympathy from the public – as has been seen to be the case when a large beer company dropped a case the public sided with a small family run business, for example [Brewdog here].

Cat image: Michael Frank Franz