- Prime Catch of the Day: Amazon’s legal attack on London fishmonger
Prime Catch of the Day: Amazon’s legal attack on London fishmonger
Prime Catch of the Day: Amazon’s legal attack on London fishmonger6th July 2021 - Published by Kuits IP team
The owner of a small chain of fishmongers in London has recently received a cease and desist letter from Amazon’s legal team demanding that he stops using the term “Prime Day Boat Fish” on his website in connection with a sales event. The basis for Amazon’s cease and desist letter was that it is the proprietor of a trade mark registration for the words “Prime Day”. Amazon’s legal team also argued that consumers are likely to associate the references on the fish seller’s website with Amazon’s annual two-day event offering shopping deals to its members.
Owner Robin Moxon’s position was that “Prime Day Boat Fish” has a specific meaning in the context of the fishing industry, as it denotes top quality fresh fish caught on boats which only spend a day at sea. He also explained that fish sellers started using this term many decades ago and, in any event, long before 1994 when Amazon was established.
Although Amazon’s approach towards the seller has been criticised as being heavy-handed, it is not unusual for big players to launch legal attacks against smaller companies to enforce their intellectual property rights in this manner. However, the above serves as a useful reminder that, regardless of the size and reputation of a brand, the words or names which it is seeking to register as trade marks should be distinctive and, if possible, not have any known meanings.
If a proprietor of an unregistered mark does choose to use a common or generic phrase, they may seek to develop acquired distinctiveness by using that phrase or logo in connection with a particular service or goods; this would then result in that common phrase or logo having acquired a secondary meaning beyond the meaning used in a specific industry. It is possible for this to then lead to a successful trade mark registration. Once registered though, proprietors of such marks should be mindful of the restrictions in enforcing these marks against third parties with prior use who may have a defence to an action for trade mark infringement.
It would be worthwhile for brands looking to register a name or word to carry out an in-depth search prior to making a trade mark application to ensure that third parties are not likely to exercise earlier rights.