On a drizzly morning somewhere in Cambridgeshire last week, Tesco opened its first discount store Jack’s. The first of 13 planned stores Jack’s is intended to rival German discounters Aldi by being not only the cheapest in town but by also promoting Britishness in its limited product lines and name.
The launch of this budget store is a major undertaking and risk and the investment in the project to date will have been colossal. At first blush therefore it is surprising to read that by the time of launch Jack’s had failed to secure trade mark rights in the UK and EU. Not only that but to date there are some 15 oppositions already filed against the name and a month still to go for the trade mark office to receive further objections. Is this a massive oversight (aka mess up by Tesco)? Maybe not. A closer inspection of available data reveals that Tesco has been planning this move into the budget supermarket space for some time. The EU trade mark application is based on a filing in Sri Lanka which appears to be a country which Tesco has used to secure early rights without attracting too much attention. The fact that there will be opposition to such a mark is obvious and to be expected. The name is widely used on all sorts of products and services and Tesco’s application seeks protection in all classes of goods and services.
We cannot know what searches Tesco will have made to access the risk of not securing protection in essential classes before filing but the fact the first filing was in Sri Lanka as early as June 2017 shows that work on the branding has been underway for some time and that the risk taken is calculated. This strategy of filing despite the fact that opposition is highly likely is not unknown, but is not a strategy that more modest businesses should adopt. Fighting multiple oppositions is going to be costly. Some opponents may have to be ‘paid off’ in some way.
For the smaller business the best advice remains to look for a name that is distinctive and unlikely to conflict with names already in use and to be sure that your investment in the name will not be wasted and money is not spent fighting avoidable battles.