In our previous edition, we reported on a legal dispute involving a small independent eatery in Berkshire that landed itself in hot water, after restaurant chain Nandos objected to its name.
Reading-based ‘Fernando’s’ – which also serves Portuguese-style peri peri chicken dishes, claimed its name was not intended as a rip off of Nandos. Despite their protestations, lawyers for Nandos have ordered Fernando’s to either rebrand or risk facing legal action.
Now, another David and Goliath style legal dispute has made headlines – this time involving a local hairdressing salon in Scotland and a multi-billion dollar US department store.
Husband and wife, Jon and Kirsty Nelson, from Bathgate in West Lothian thought that naming their hair salon ‘Macy’s Lounge’ after their daughter, would be a cute name for their family business. Unfortunately, Macy’s department store didn’t think so and have claimed that use of the name is an alleged trademark infringement.
Writing on Facebook the couple announced: “We are changing our trading name [because] we received a letter from a law firm in London acting on behalf of Macy’s Inc from the USA “This multi-billion dollar company – whose closest store to [our salon] is more than 3,000 miles away, with a rather large pond between us – has filed a trademark Infringement against us.”
Macy’s Stores has a European trademark that covers an extensive list of IP protected products and services – from submarine parts through to rubber gloves, along with ‘Beauty and Hairdressing Salon Services.’
According to Mr and Mrs Nelson, the US retailer has claimed: “’Macys Lounge’ is confusingly similar to ‘Macy’s’ and relates to identical services to those in their registration. The fact that the name was chosen by you because it is your daughter’s name (as stated on the website), is no defence.”
The Nelsons capitulated and have changed their salon name to ‘Maciz Lounge.’
Luke Morgan, a Partner with Palmers who specialises in Intellectual Property (IP) law, said: “Trademark infringement relates to the unauthorised use of a trademark or service mark in connection with goods or services.
“IP infringement can be confusing, complex and costly – particularly if a small business has to go to the trouble and expense of producing new store signage and business stationery – so it’s worth taking advice from a specialist IP solicitor before creating a new brand name or logo.”
For help and advice with all aspects of intellectual property law, please contact us.