Name taken !!

[Faith28]

Hi all,

Cannot believe what procrastination can do to one's business!
I've been meaning to register with companies house for some time but someone has recently taken the name I wanted. I would like to think it a coincidence but I am a little paranoid I'm afraid.

Have just registered a new but similar name to the one already registered and I hope I will get it passed through companies house.

My one is 'Loop Cards Publishing Limited' their one is 'Loop Cards Limited'

Fingers crossed.

I've also had to register my trading name with the National Business Registrar because I've been using it since last year and I've already told Inland Revenue that this is my trading name (Loop Card Games). So if anyone decides to sue, I'm ready :x

[fastfences]

How many times do we hear that? Mentioning a 'proposed' name to ANYONE is a sin! Hope you do ok with your new one.
cheers, Nigel

[Faith28]

I agree...I feel so foolish :(
Well, I bought the company report for a quid and got their details. I don't know why it makes a difference but I feel better knowing who they are and where they are based. I suppose it's keeping an eye on potential competition.

[bwglaw]

Have just registered a new but similar name to the one already registered and I hope I will get it passed through companies house. My one is 'Loop Cards Publishing Limited' their one is 'Loop Cards Limited'

Companies House will register virtually anything until someone objects.

I've also had to register my trading name with the National Business Registrar because I've been using it since last year..

Waste of money. The National Business Registrar is not a statutory body and offers you absolutely NO protection whatsoever.

I do suggest you get the name registered as a trademark at the earliest opportunity.

[bwglaw]

Just noticed that you have registered the name as a trademark. I would then suggest you make a notice of objection at the Companies House and inform them that the name is a trademark and that the Loop Cards Limited should be amended or de-registered.

Sorry...had a few red wines ;)

[Faith28]

Really?

I recommended that by a reputable business advisor (at least that's the impression I get from East London Small Business Centre).

I will be looking at trademark and intellectual property asap.

It seems I've got lots of work to do hey handsongroup...website, contracts, trademarks... :?

Since I've joined this forum I've been more involved in sorting out my business.... :P

[Faith28]

No...I haven't officially registered the trademark..only TM. TM can be used to denote that this is your trademark automatically. R or RTM means it's registered.

[Alpha]

No...I haven't officially registered the trademark..only TM. TM can be used to denote that this is your trademark automatically. R or RTM means it's registered.

No official registering of trademark = no protection therfore complete waste of time.

Also National Business Register as Handson says is a complete waste of time.


Not been your week so far has it :)

[Faith28]

Alpha, yes. That's my point. TM is just there as an automatic copyright by law. If I want to take it further then I could sue them and use my standard way of copyright registeration i.e. my sealed registerd envelope sitting in my business file. But I doubt it is necessary.

As for not being my week...quite the contrary my dear...I'm having a fab business week...never been working so hard at getting myself sorted out. This is actually a good thing...it's getting me to get on with tasks that should be done anyway. At least I'm still in my early stages.

I have a major launch within schools in England coming up so will be getting the exposure then. Can't wait :lol:

[bwglaw]

Alpha is correct. You cannot sue Loop Cards Ltd because they have used the 'name' because it is not protected as a trademark. Copyright law only protects you as far as the design aspect of your logo is concerned. I think adding TM is rather misleading.

There is nothing to stop Fred Bloggs from designing a completely different logo but using the same name provided it is not too similar in font, colours etc so as to cause confusion.

[Faith28]

I agree with you. But even if you registered the name there is still no one to stop you from using the same word designed in a different way.

TM is not misleading. It is legitimate form of ownership. It says that the logo is automatically copyrighted to me. Not registered formerly just using the copyright law in place.

Have a look at http://www.patent.gov.uk/tm/howtoapply/faq.htm
Where I quote this:
"Am I breaking the law by using "TM" on my trade mark?
No, as this does not indicate that your trade mark is actually registered, only that it is being used in a trade mark sense. "


Hope that makes sense.

[Faith28]

The R sign means that it is registered trade mark which means that it is a commodity that can be bought and sold.

This is my understanding of the information given.

[Faith28]

Also my understanding of the National Business Registrar was that it doesn't protect you as such but it gives you the legal finance if /when someone does sue you.

Is this not so?

I only registered with them knowing this to be the case i.e. that my name is not protected directly but that should some big company come along and tell me to shove off I can at least insure myself from financial damage if they take me to court i.e. legal fees will be paid.

[bwglaw]

TM is not misleading. It is legitimate form of ownership. It says that the logo is automatically copyrighted to me. Not registered formerly just using the copyright law in place.


As a lawyer, I do find TM to be misleading and does not serve its purpose because virtually everything on the internet, one way or another, is a TM. The layperson may not know the difference.

Our logo does not have TM and we can still assign the ownership of the logo to another party regardless of whether it has TM or not.

This is just my opinion that TM serves no purpose since everyone knows that artwork (etc) is protected by the Copyright Design and Patent Act 1988

[Faith28]

TM is equivalent to the copyright symbol c.

For the same reason you place the c symbol at the botton of the website page business place TM at the end of the logo. Even Microsoft have the TM inserted.

I don't see why I can't use it. But if that's your opinion then ok. However legally it's fine so why not? :wink:

[bwglaw]

Also my understanding of the National Business Registrar was that it doesn't protect you as such but it gives you the legal finance if /when someone does sue you.

Is this not so?

I only registered with them knowing this to be the case i.e. that my name is not protected directly but that should some big company come along and tell me to shove off I can at least insure myself from financial damage if they take me to court i.e. legal fees will be paid.

It is the first I have heard of them offering such a service. I would check the terms and conditions of registration (etc) to see what you are entitled to. If they are offering some kind of insurance, they will be known by the Financial Services Authority (if they regulate insurance)

I will look into the National Business Register out of interest.

[Faith28]

It seems to me that it isn't only the layperson that does not know the difference :wink:

[bwglaw]

I don't see why I can't use it. But if that's your opinion then ok. However legally it's fine so why not? :wink:

Don't get me wrong, I did not say you can't use it. I am just speaking generally that I find TM misleading. It is perfectly legal. The layperson will find TM/R/(c) rather confusing.

[bwglaw]

It seems to me that it isn't only the layperson that does not know the difference :wink:

That is correct. I did not know the difference hence my earlier opinion. I do not specialise in intellectual property law and do not represent myself to. However, the litigation point still correct. Yes, I do cover litigation ;)

[Faith28]

I appreciate your comments. Like every industry there's a specialist for each field. You're an expert in a separate field to this topic entirely. So thanks for your time to discuss this with me.

[VeryMark]

Trade marks and copyright are two entirely different things:

1. Copyright does not protect names, only artwork (including logos), advertising copy, music, plays, films, books, sculpture and other creative works.

2. Trade marks protect business and product identifiers including names, logos, get-up and things like the shape of the Coca-Cola bottle, the Rolls-Royce radiator grille, the shape of the classic Mini automobile, and the Direct Line red telephone and jingle.

3. Trade marks protect against confusion regardless of intent -and if the name is identical to what you have registered, you don't even have to prove confusion, even if you are in a different parts of the country or the designs are different for example.

4. Copyright only protects against copying, but regardless of what the copy is applied to.

5. Trade marks are only effectively protected by registration. (Use only gives you a very limited local right.)

6. Copyright you get automatically, provided you can produce evidence of origination and ownership. (Keep all your working documents, artwork, updates, etc, date and sign everything, create a document trail and keep it safe.)

7. Trade mark rights can last for ever - the first trade mark registered in this country (the Bass triangle design) is still registered, but copyright expires after a time. (70 years from the death of the author in most cases.)

Logos can be protected both as trade marks and by copyright, but the protection is different.

Companies House will not do anything just because you have a prior trade mark right or a similar company name, and it's a waste of time asking them - the only thing they will take action on is where you have a previously registered company name which is basically identical (not just similar) or the name is inherently deceptive.

You should always register your business or product name as a trade mark if possible - if you don't do it, someone else might.

And don't let someone else copying you get entrenched - the longer you leave it, the more difficult it will be to get them to change.

Trade mark registration provides a monopoly over everything else: company names, product names, domain names, business names, website addresses, shop names, anything used for business purposes.

And use of your registered trade mark on a counterfeit product is a criminal offence - but only if you are registered.

Our free certified virus-free Guide to Trade Marks, Brand Protection & Related Copyright And Design can be downloaded from:

http://www.crossguard.info/new/downloads/crossguardvirtualbrochure.exe

[bwglaw]

Companies House will not do anything just because you have a prior trade mark right or a similar company name, and it's a waste of time asking them - the only thing they will take action on is where you have a previously registered company name which is basically identical (not just similar) or the name is inherently deceptive.

Well Philip, I was involved in a matter where another company registered an identical name to ours, and following a complaint, it was removed. The only difference in the name was a 'space'

[VeryMark]

Yes, if it's identical except for a space, then it's basically identical, and Companies House will do something.

But 'Loop Cards Ltd' and 'Loop Cards Publishing Ltd' are only similar and not identical.

[bwglaw]

Yes, I see your point and agree there. Rather leave intellectual property law to those who know ;)

[Faith28]

Phillip - thank you for your very detailed information about trademarks. In fact on another thread Jonathan (Handsongroup) had recommended your site so I had a very good look into it.

I am now in the process of looking into protecting my logo and possibly the name. I hadn't thought about the name before I read about this on your site.

Would it be possible to register all of it i.e. "Loop Card Games - Making learning fun" with 'Loop' as a logo. Or do they have to be separate.

And if someone decides to set up as 'Loop Card Games' or have the same logo does this mean I would not be protected? i.e. would I need 2 or more separate registrations made to cover each 'bit'.

[Faith28]

BTW I called the accountant of 'Loop Card Ltd' to ask for the nature of the business. He told me to send a letter requesting this and they will discuss. He also asked me 'why'? (naturally :P ) and I don't know why I told him that I was thinking of a similar name just wanted to check if we were in the same industry!?! Was this stupid. I couldn't lie...every time I lie I start to stammer and it's obvious I am not coming clean so I don't.

:oops:

[VeryMark]

Can you tell me if the word 'Loop' has any particular meaning for your products, Eiman? Why did you choose the name?

Can you also email me some info on what you are selling?

This will help me to advise further.

I'd advise just applying to register the name 'Loop' if possible, but I need to look at the foregoing and do a little more research first - Did you check whether anybody else had registered 'Loop' or anything similar as a trade mark for card games or the like before using the name?

And yes, 'TM' is fine if you want to use it, Eiman.

[Faith28]

E-mail sent :lol:

[VeryMark]

Thanks, Eiman. The info you've sent helps tremendously - I'll look at this and put together the info you need after I've done a little more research.

[VeryMark]

.... oh, and can I just reiterate something Nigel said:

If you've got a proposed name, please, please, please don't mention it to strangers before launching your business and, preferably, applying to register it as your trade mark.

This helps a lot!!

Also, if you need to ask anyone to sign a Non-Disclosure/Confidentiality Agreement to protect you prior to launch, or a Copyright Assignment to make sure you own the rights in whatever you've commissioned, let us know.

[cjd]

"Am I breaking the law by using "TM" on my trade mark?
No, as this does not indicate that your trade mark is actually registered, only that it is being used in a trade mark sense. You would only be breaking the law (Section 95 of the Trade Marks Act 1994) if you used the registered symbol ® or the abbreviation "RTM"

[VeryMark]

Correct.

[Faith28]

Hi Cjd - the question you are refering to was not my own...it was taken from the government patent office FAQs on trademarks. I use TM too as I know it's ok.

[Faith28]

Phillip - thanks, I look forward to hearing from you. BTW apparently a guy called Adrian Pinel coined the phrase "loop cards" http://www.adri.pinel.btinternet.co.uk/aboutframeset.html

I literally just found out. Again it is only for maths.

[VeryMark]

Snap, I just found the same thing.

[Faith28]

Unfortunately I can't find a way to contact him. Through his website anyway.

[Faith28]

Well, I am officially the Director of Loop Cards Publishing Ltd. :lol:

Now I will be putting an application for my logo registration.

I look forward to receiving the quotes Philip :wink:

[VeryMark]

Yep, upcoming Eiman!

[Tanc]

Hi, I'm wondering if anyone can advise me on my situation. I have a limited company that was established in 2004 and I've recently been somewhat rudely approached by an individual or company in a nearby town requesting that I change my trading name to something which distinguishes my business from theirs "with immediate effect".

I've checked with Companies House and they don't appear to be registered under any similar business name, the letter I received didn't have a company number on it and they didn't specify which areas they service and how my business infringes upon theirs.

I am a web designer and clients are based all over the world, I have none in the town this 'rival' company is from, nor do I advertise there or anywhere.

Can somone advise me whether I am in trouble or whether this person is just bluffing. I'm not sure what my rights are. Although I live in the same county as this person, my company is registered in another town entirely. There are also numerous other companies with very similar names.

Any advice greatly appreciated.

[VeryMark]

Do they have trade mark registration? To what extent is your business likely to be confused with theirs?

Being in a different town isn't the determining factor - if you have trade mark registration, then you have national right regardless of whether you are well known elsewhere or not. If you don't, then the test to establish if passing off has occurred is whether a business has built up an exclusive reputation and goodwill through the use of a particular identity which is likely to be damaged by confusion as to the origin of a third party’s goods or services marketed under the same or similar identity.

[Tanc]

Hi Crossguard, thanks for your swift reply. They don't appear to have a trade mark registration (checked the database) and I'm not sure to what extend my business may be confused with theirs. I've never heard of them and I'm assuming they've only heard of me because of a domain name search as the letter they sent me was to my home address which is where my domain is registered, rather than my business address as per my company's registration information.

So I guess the next step is to file for a trade mark registration which they could in theory oppose.

I have no idea how to test whether their business has built up an exclusive reputation through the use of a particular identity. How can I determine whether their business could be damaged by confusion with my own business? We trade under different names, but my business contains one word which is the same as theirs (although they have split it into two words with a space). Our logos look different but are based around the words that comprise our business names.

I am quite happy to change my logo but changing my business name would be a bit of a pain.

[VeryMark]

Are you in the same kind of business. How long have you both been operating?

I'd suggest seeking trade mark registration as soon as possible, as this will strengthen your position.

Moreover, if anybody else were to seek trade mark registration before you, this would be likely to instead weaken your position legally.

[damo_j]

Hi ive got a similar problem. I sent up a registered company with compaines house called Cheeky Butler, when i set it up i did a lot of checks an there was no company trading under that name. The company got put on hold with the tax office as dormmant, due to family problems but the tax office was imformed this month would the the start of my trading and tax year.

Anyway a company has used the exact name for a website and called it cheeky butler. I spoke to companies house n they said that only my name was registered with them under cheeky butler. the site has just registered a domain name similar to mine. my web page isnt loaded on the web yet but its nearly finished.

i have a logo with the name cheeky butler in a fancy typeface and was using this as my co-oportate indentiy.

my company is already well known around my city and i have a lof of bookings coming up.

Do i have a legal leg to stand on to tell this company not to use my registered trading name. i never trademarked the name, i did try to but the trademark comapny i got in tocuh with said somone tried to trademark cheeky butlers a few years back and cos mine was so simalir they didnt advise me to apply. i just assumed no one esle could set up an exact same comapny with the same name if i had.

I already ahve a web site nearly finished and all the outfits printed so using a different name is going to cost me money and customers.

i know iv got on a bit but wanted to give ll the information i could. if any1 can help me with this i would be most greatfull

[SolsburyHill]

You could have problems depending on which party used the mark - CHEEKY BUTLER - first or registered it first.

In your post there seems to three Cheeky Butler firms - you CB1, the company which registered the name as domain first - CB2 and the trader who owns a registered trade mark for the mark - CB3.

You seem to have set up a company under the name, but it remained doormant for a while and you never traded until recently. A company name registration in itself gives you no trade mark rights whatsoever. Trade Mark rights are established in the UK in two ways (a) based on use/trading activity under the name/mark (common law passing off rights) and (b) via trade mark registration (statutory rights).

You may have a problem, as the CB2 may have actually traded under the name before you and thus has the prior common law rights and it seems that CB3 registered the brand first. I am assuming CB1, 2 and 3 all trade in the same services/goods. Who has the prior rights between CB2 and CB3 is open to question, depends who registered or used the mark first whatever is the earliest.

At least from an online presence you seemed to have used the mark last out of CB1, CB2 and CB3 and have never registered the brand and thus have no statutory rights. You state you are well known in your town presumably via 'off line' use, did this use occur before CB2 and CB3 used and registered the marks? If so you may be able to trump them. Common law passing off rights can be geographically limited so, one or more of the parties may have built up concurrent common law rights in different parts of the country. The worrying thing for you would be if CB3 registered the mark before you used the mark at all, as a UK Trade Mark Registration would cover the whole of the UK including your home town and CB3 would have the prior rights in your home town even if he has never traded there.

Thus you need to supply more information to get an accurate answer but on the face it appears that CB2 and/or CB3 may have the better rights, even though you registered the name first as a company name, the problem is you delayed use of the mark and never registered the mark as a trade mark. Golden rule register as a trade mark as early as possible.

The link below may help:-

http://www.pinsentmasons.com/Default.aspx?page=1205

If need detailed advise consult a trade mark attorney.

Hope that helps.

[damo_j]

sorry my fault im rubbish at explaining things, the name isnt trade marked. somone tired to years back but it got refused by the trade mark place. i found that out when i applied for a trademark.

The issues between me who registered the company name with companies house, and an online site, tradeding under a diff name, using the cheeky butler as there web site name n domain.

I got in touch with the copmpany n they bascialy said if i trade under the company name there going to take legal action agasint me as there saying under some sort of web or domain law she owns that name for tradeing.
they was using a diff company name and have only just set up a web page using the name i registered, but they have a client base from there other company n there saying cos they have a larger client based aswell i dont stand a chance if takend to court

Now when i applied for the name, there was no web site using it, i applied for a domain name but .com and .co.uk had been bought but where not being used. i bought .net and started to set up the web page. its not set up online yet, but i have been advertising via flyers, business cards, word of mouth etc around the east midlands.

i also have a logo using the cheeky butler name.

Think is i set all this up not realying knowing a great deal about setting up companys and the ins and outs.

end of the day i set the company up to try and earn some moeny n realy wasnt expecting all off this. If they have more right over the name then i will have to re think my name, but just pissed me off how there main piont was cos they bought the domian name ages ago but never used it and are only using it now after the formation of my company, that they have more rights over it.

i might be in the wrong n them in the right i dont realy know the ins and outs of legal stuff with all this

[SolsburyHill]

Assuming no one has registered rights to the mark or similar marks, then who has the prior rights will come down to first use and the extent of that use. I would argue the use a domain name does consitute trade mark use, but if the other site is not branded under Cheeky Butler and the domain which incorporates that name is not the main domain name for the site, then you could argue the use is low level and thus there is not goodwill in the mark. Really all depends on first use and the extent of use by either party.

You state you tried to register the mark as a trade mark, but presumably that failed, why? Was it becuase someone had prior rights? If so you have a problem possibly.

[Staffydog]

Interesting, I wonder if someone could tell me if the same applies to me. I purchased a domain name intending to trade as such, before I did this I checked with Co. House and there was nothing similar registered (I'm not sure if we'll go LTD with it yet). We started work on the website, but a little later found out that someone is using the exact same name already, on a big auction site.The user name is identical to our URL, say for EG. thetyreshop.co.uk, we sell identical items, they have been trading on this auction site for a number of years, so would they be able to stop me using same as my business name/URL? This would purely be an online presence with no shopfront at present.

As far as I'm aware there is no RTM for the name.

Any pointers would be much appreciated.

Thanks

Sean

[SolsburyHill]

Seems their use began before you. The question then is whether their use is sufficient to establish common law rights to the brand. You suggest they are using the name simply as a user name and not so much as a brand. Whether that use is sufficient to give them common law rights to the brand would depend on their sales under the name and whether people would identify their user name as a brand as such. If the name is identified as a 'badge of origin' of them and see as a brand as such and their use predates yours you may have problems.

[benmurphy247]

I've read thought this thread and it certainly makes alot of things clear. Thankyou.

I have been delaying registering my trading name as a trademark, and registering the company under the same name for as long as possible. Alot of other people may say the same as me that the money is needed elsewhere, as frankly, registering anything seems to be a pricey job. Too pricey to ease the blow for start-ups in my opinion.

I was aware of some protection if you have been trading under a name for a period, but the bottom line seems to be to register your trademark ASAP. One thing I am weary of, including the letters TM with your logo or name surely tells everybody that you are yet to register, and therefore informs eveyone that they have a chance to do it before you? Surely better not to put any symbols or letters anywhere until you have it done and dusted?

B

[SolsburyHill]

Ben,

I think a realistic view on registering a trade mark is that you should do it if you can afford it. It is a very desirable thing to achieve and it is protecting one of the most important assets of your business, your good name.

However, its a balancing act. For start ups especially as you say there are often other things on which you can spend money on. Also you will have some protection for a brand via use under the common law tort of passing off. However, if you have the money to register your brand I strongly recommend it is registered.

On the TM symbol issue, I am not sure that someone would think that means the mark is definitely not registered. The R in a circle can only be used in relation to registered marks and it is a criminal offence to use this R symbol when a mark is not registered. However, if your mark is on the borderline of distinctiveness and you need to educate the public the mark is indeed a brand name, I think there is a great benefit from using the TM symbol just to make it clear you are claiming some rights in the brand, albeit common law rights.

Hope that helps. I am a trade mark attorney so you might say I am pro-registration, but I think most people would accept it is a desirable property right.

Anyway if anyone has any question on trade marks happy to provide some free initial advice, just drop me a pm.

All the best.

[a varilone]

you may want to consider registering it as a trademark too including any logo!

al varilone solicitor





Hi all,

Cannot believe what procrastination can do to one's business!
I've been meaning to register with companies house for some time but someone has recently taken the name I wanted. I would like to think it a coincidence but I am a little paranoid I'm afraid.

Have just registered a new but similar name to the one already registered and I hope I will get it passed through companies house.

My one is 'Loop Cards Publishing Limited' their one is 'Loop Cards Limited'

Fingers crossed.

I've also had to register my trading name with the National Business Registrar because I've been using it since last year and I've already told Inland Revenue that this is my trading name (Loop Card Games). So if anyone decides to sue, I'm ready :x

[SolsburyHill]

Just to clarify again and although its been made clear on this thread to date, a registration on the National Business Register gives you no additional legal rights beyond common law rights. NBR is a commercial register. Common law rights are established simply by use, you do not have to register them with the NBR.

You register your marks at the UKIPO, Community Trade Marks Office or other foreign IP Register.