Masters Card vs MasterCard: Woolworths' Push Into Financial Services Creates Trade Mark Problem
Tuesday 4 November 2014 @ 11.31 a.m. | IP & Media
Woolworths’ move into financial services products has reached a stumbling block, with The Australian reporting that MasterCard has opposed its attempt to use the name of its Masters hardware chain on store cards and credit cards. A spokesman for MasterCard told The Australian that the company has been engaged in “discussion with Woolworths to ensure consumers do not become confused by different financial products in the market.”
The Australian writes that:
“The dispute highlights the challenge facing retailers such as Woolworths and other non-traditional financial services companies as they attempt to push their way into the consumer finance industry. Companies such as MasterCard and Visa, as well as the big four banks, are highly protective of their trade marks, which represent a key defence of their territory in the financial services space.”
Intellectual property experts interviewed by SmartCompany were divided on whether MasterCard would be able to object to the trademark. Finlaysons intellectual property, media and technology partner John MacPhail said that MasterCard has “generally been very assiduous with its trademarking”, but “would have no problem with Masters the hardware store, but when they start to go into the financial services area, there are more problems”. But Jane Owen from K&L Gates told SmartCompany that ‘Masters’ is a particularly non-distinctive term and it could be difficult to trade mark it.
However, The Australian reported that although the dispute has reached the Trade Marks Office, they believe the companies are in negotiations to work out a compromise.
Woolworths has recently announced partnerships with Visa and Macquarie Bank as part of its push into financial services using its retail names, including Big W, Thomas Dux and Dan Murphy’s. They currently hold a number of financial services related trade marks, including “Woolworths Money”, under which they offer a number of services including credit cards and car, home, life and travel insurance. It currently offers prepaid MasterCards under the “Woolworths Money” brand.
Woolworths have previously run into trouble by using the term “banking” without the necessary licence for more than two years. The Sydney Morning Herald reported that Woolworths “was forced to stop using the term “banking” in the marketing of its financial services, after attracting the attention of the Australian Prudential Regulation Authority”.
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