Blog: What’s in a name?

Megan Briggs comments on Morrisons’ savvy reaction to a shopkeeper’s pun in the wake of his David and Goliath encounter with a rival supermarket

When it comes to building a successful business having a strong brand which is instantly recognisable, is the “Holy Grail”. Once achieved, business owners will rightly fight tooth and nail to protect it. However, there is a fine balance between the dutiful enforcement of a company’s intellectual property rights, and (what some might perceive as) an over-zealous brand trying to bully the little guy.

A recent news story has highlighted the different approaches which right holders take when it comes to the protection of their beloved brands. Mr Jel Singh Nagra, based in North Tyneside, owns a small convenience store which he named “Singhsburys” – a play on the nationwide store Sainsbury’s. Perhaps unsurprisingly, Sainsbury’s did not see the funny side and after threatening to sue for IP infringement, Mr Nagra removed the “Singhsbury’s” sign, not wanting to get into a legal fight and the shop remained nameless for five years. Once bitten, twice shy? Not for Mr Nagra, who has now taken another stab at an eye-catching name, with the premises now known as “Morrisinghs”, (you can probably see where this is going) a play on another of the supermarket giants, Morrisons. So how did Morrisons react?

Well instead of threatening legal action Morrisons took a different route and applauded Mr Nagra for his creativity, noting that “Mr Nagra and his customers obviously have good taste so we wish him well.” The difference between two retailers in the same industry highlights the different approaches rights holders can adopt when it comes to enforcement. In deciding how to respond, Morrison’s undoubtedly considered the reaction that their competitor Sainsbury’s had received by threatening legal action against Mr Nagra. From a PR standpoint, Sainsbury’s have been portrayed as the big bad giant who rained on the corner shop owner’s parade when he came up with a witty name. A modern David and Goliath story where the shop owner is unlikely to have the funds to take on such a vast entity. Sainsbury’s understandably took the view that having invested a great deal of time and money developing their brand, a third party should not be allowed to benefit from it.

Morrisons response on the other hand may have seemed to some as more proportionate. The likelihood of this small corner shop having an effect on this national supermarket seems exceptionally slim. In wishing Mr Nagra well, Morrisons are seen as having a sense of humour and allowing the shop owner to enjoy his moment in the sun and the benefits that it may bring to his local business.

At the same time, it did no harm that all articles surrounding the Morrisons approach referenced Sainsbury’s previous actions in less favourable terms. The cynic in you might well question if Morrisons would have taken the same approach had Mr Nagra not already been in dispute with Sainsbury’s.

The PR side of IP enforcement is something our team are advising on more and more. Earlier this year, the largest professional house-buying franchise in the US, HomeVesters of America, issued a press release highlighting the range of legal actions it initiated in 2016 and pointed to its growing reputation for aggressive trade mark enforcement. The “aggressive” tag is one that a lot of brands are keen to avoid, and would point to the negative PR Sainsbury’s received following the dispute with Mr Nagra, as the reason why.

Others, however, would ask what is the point of taking IP enforcement action if you don’t tell anyone about it? For those types of organisations the Scottish IP Court offer a ready-made solution.

In Scotland, as part of court proceedings raised in the IP Court, rights holders who are successful in court, can ask the court to issue an order allowing them to advertise the fact that a final court judgment has been issued and that the right holders’ IP has been infringed. These advertisement notices can be published in newspapers or trade journals. And the best part? The infringing company has to pay for the cost of the adverts! In our experience this is an underused tool and appears to be more readily granted in the Scottish IP Court compared to those south of the border.

There will never be a “one size fits all” solution to these issues but if a company wants to shout about enforcing their IP rights, then the Scottish IP Court might just be the place to do it!