Is Your Trademark Available?

Is Your Trademark Available?

MORRISONS is in trouble over its new branding and trademark for its fresh fish products and it is being challenged by a small family-run fish wholesaler which claims their new branding is too like its own.

Morrisons applied to register The Big Fish Company as a trademark for its own-label fish ranges in July of this year (can be viewed here) https://www.ipo.gov.uk/tmcase/Results/1/UK00003116120  The link shows that Morrisons’ trademark application is being opposed.

However Grimsby-based fish wholesaler JCS Fish has objected to the trademark application, claiming that Morrisons' branding is too similar to its own Big Fish brand which it registered in 2010.

Their  MD said: "We have been in touch with Morrisons and its legal team and they have said that they don’t consider the two marks to be similar. They haven’t withdrawn their trademark applications and are still selling the products. We are a small family firm and have worked hard over the past six years to build up our BigFish brand, including investing some £700,000 this year in our factory. Together with our marketing efforts, this has helped fuel brand growth of around ten per cent in the past 12 months. We strongly believe the existence of another very similar brand in the fish category is a direct threat to the future success of our own business and have no option but to oppose these trademarks with all the means at our disposal. We don’t understand why, when they surely knew about us, Morrisons would want to choose a brand which is so close to ours. It just feels like they are trampling on a smaller business, particularly since when they first applied for the mark, the Trade Mark Registry told them that our mark may be identical or similar, at which point Morrisons could have withdrawn their application." A Morrisons’ spokesman said: " We decided to brand our fish ranges as The Big Fish Company to cater for customers who prefer to buy branded goods. We have had legal and other advisors compare the two brands and have concluded that they are not similar."

This example demonstrates that importance of pre-filing trademark searches and checks. Trademark infringement can occur when there are two similar marks in similar or identical goods/services PLUS a risk of confusion. Here we have two similar brands in identical goods and services. The Big Fish Company and Big Fish. We would look only at the most dominant part of the brand, in this case this would be Big Fish as the and company are considered non dominant. If a client had come to us with this case and wanted to file The Big Fish Company we would advise them that there is a strong risk of opposition and even a risk of trademark infringement being brought before the courts.

It’s always worth paying for a full trademark search and advice report BEFORE you file a trademark application.

Contact jane@trademarkroom.com for more information if you would like to file a trademark application