Business Law & Compliance

Company name disputes that resulted in lawsuits and rebrands

10 min read

05 July 2017

Former deputy editor

You’ve given your brand a unique moniker, only to receive an official legal letter from a big business that’s taken offence. It’s a nightmare entrepreneurs dread, but company name disputes are seemingly inevitable.

Company name disputes

Sainsbury’s did not see the funny side of a local store’s branding

Brainstorming business ideas can be a fun experience. Especially in the early stages when you’ve got the concept, but just need a memorable title for the firm – one that will stay in the minds of your customers. So, imagine all that hard work then resulting in company name disputes.

It would be frustrating to say the least, not to mention intimidating for many – receiving an official legal letter through the post from a large corporate would likely be unnerving for many.

One such scenario secured the headlines in June 2017 as a supermarket took exception to a corner shop owner’s creativity. With that in mind, these are the company name disputes that have left businesses out of pocket and going back to the drawing board.

(1) Sainsbury’s

I know what you’re thinking. Sainsbury’s? Sainsbury’s would never do such a thing, look how it renamed tiger bread to giraffe bread to make a three-year-old child happy.

Well, who knows the thought process behind this scenario, but in 2012, the supermarket launched a legal assault of the company name disputes variety against a corner shop owner.

Jel Singh Nagra, owner of a local shop in the Newcastle area, felt the wrath of Sainsbury’s officials, who were displeased with the name of his store – Singhsbury’s.

“While I was away on my honeymoon in September 2012, I got a letter saying that Sainsbury’s was threatening to take me to court. In the letter they stated how much this would cost,” Nagra told The Northern Echo.

As a result, his family removed the sign during his absence, fearing costly legal repercussions.

The shop has remained nameless over the past few years, but that was all changed in June when he renamed the shop Morrisinghs.

“A lot of the customers come in here for the banter more than the actual service. The sign makes us a talking point,” Nagra added, rebealing that there isn’t a lot of passing trade due to a dead end on the road, though he believes the sign is bringing more bisiness in.

“If I get asked to take this one down I will fight for it,” he said.

There’s no sign of more company name disputes heading his way though – Morrisons has given its blessing.

According to The Guardian, there are several Singhsbury’s stores across the UK and they’ve never been on the receiving end of company name disputes, so it’s unclear why the Tyneside business was targeted.

On the next page, find out which dating app took the company name disputes war to a service designed for threesomes.

(2) Tinder

The swipe-centric dating app may be all about spreading the love, at least where its customers are concerned, but woe betide any firm’s that even hint at riding on its coattails.

In May 2016, 3nder, the app for people seeking threesomes – yes, that’s a real thing – revealed that Tinder had issued legal proceedings citing company name disputes.

However, 3nder refused to be dominated and take it lying down. Instead of accepting defeat, the company launched a social media campaign against Tinder to drum up support for its unique offering – indeed 23 sexualities are listed within the app to support all needs.

Entitled #TinderSuckMySocks, 3nder attempted to rally its diverse customers “for the most awesome people to send Tinder their dirty socks”.

3nder founder, Dimo Trifonov, said: “There is a robust history of large companies attacking small businesses. 3nder acknowledges the impact Tinder has had on the world by introducing ‘swipe dating’ but harbours zero ambitions to be similar. We target an audience with completely different needs.

3nder

3nder is now known as Feeld

“Our members seek something else entirely when they come to us – to explore their sexual curiosity and date in an open-minded space. With so many sexualities and relationship structures left out of Tinder and the Match Group offerings, there is room for all of us. No one should have a monopoly on love.”

Tinder clearly disagreed, or maybe it received one too many dirty socks, and pushed ahead with the company name disputes.

3nder rebranded to Feeld in August that same year.

“A future rebrand has always been part of my long term thinking for the company,” said Trifonov.

The apps can be downloaded on the App Store and Google Play – just in case you want more background information.

On the next page the tables are turned as it was a well-known online retailer that fell foul of company name disputes, which worked out to be rather costly. Overleaf, we also recall how one social network made it clear the brand name was sacred.

(3) ASOS

In September 2016, just a month after Tinder ensured 3nder was no more, ASOS admitted defeat in a clothing clash.

The online fashion retailer had been embroiled in company name disputes for six years, facing off a dual attack from Swiss cycling clothing business Assos and German menswear retailer Anson’s Herrenhaus.

Global trademark debates had been taking place in the US, UK and Germany, with numerous cases held in court over ASOS’ sale of sportswear.

Company name disputes ASOS

The payout was dubbed the “right commercial decision for our business”

The 1976-launched Swiss firm had been trying to get 2000-founded ASOS to change its name in the UK, but lost the battle in 2015.

However, the final outcome meant that ASOS was forced to pay a £20.2m settlement, but that will allow its fashion range to include own branded sportswear – though that excludes cycling clothing, which remains the realm of Assos.

“We are pleased to have put this litigation behind us. Entering into this settlement at this juncture is the right commercial decision for our business,” said Nick Beighton, ASOS CEO.

(4) Instagram

Perhaps company name disputes weren’t something on Instagram’s radar as a startup, but after being acquired by Facebook in 2012, it had an infinite amount of legal power behind it.

As such, it clamped down on third party apps including Insta and Gram in the names in 2013, insisting it was harmful for the brand.

Company name disputes Instagram

According to TechCrunch, one such app called Luxogram received the following email, which read: “We appreciate your interest in developing products that help people share with Instagram. While we encourage developers to build great apps with Instagram, we cannot allow other applications to look like they might be official Instagram applications or endorsed or sponsored by us.

“As we hope you can appreciate, protection of its well-known trademarks is very important to Instagram. For example, it has always been against our guidelines to use a name that sounds or looks like “Instagram” or copies the look and feel of our application.

“Similarly, as we have clarified in the new guidelines, use of “INSTA” and “GRAM” for an application that works with Instagram is harmful to the Instagram brand. It is important that you develop your own distinctive branding for your applications, and use Instagram’s trademarks only as specifically authorized under our policies.”

A search of Luxogram and the service appears to be no more, with the website declaring the service is still in beta and the last post sent from its Twitter account in August 2013, suggesting the company name disputes saga was the kiss of death.