Trademark issues

[Spirit09]

Hi, i've come across a potential issue. A couple of words in my company name (example : Brown Paper Europe Limited) are also used in a registered figurative trademark for a similiar product in the same industry (example : Brownpaper - quality coated material) . Not a text mark. Apologies for the terrible examples !

So question is, am I legally allowed to use the words "Brown" and "Paper" in my company name (I haven't yet branded my sole product itself but it could have a completely different name if needed)? Or should I be changing my company name to avoid any conflict?

The words are generic words which are used frequently in our sector. I sell into Europe and not the UK and the company in question only sell in the UK currently.

Alternatively can anyone recommend a trademark attorney?

Many thanks

 

[The Byre]

What you are 'allowed' or not 'allowed' to do depends on the owner of the TM and their desire to have to stop trading under a name that they own. The company name, an informal trading name and a TM are three interconnected but at the same time different issues!

TM issues are always down to the details of each and every individual case.

 

[2020Lawyer2020]

I agree with TheB above.
It depends eg Coca Cola is such as well known name that even if you sold Coca Cola T shirts (not drinks) you could be stopped under the Trade Marks Act.

If you sell in different countries that still might not sole the issue eg UK law on passing off does not require a registered trade mark t bring an action and even just having a UK website which aims to sell to people not in the UK but instead in the EU would not work as currently we are still in the single market with the EEA states.

Fact the existing registered trade mark is figurative does not remove the infringement by you - I won a trade marks case in the IPEC not too long ago where my client had a registered figurative mark for a word and the infringer misused "our" word.

Your company name does not have to be your the name of your product but if the company name is too close to a trade mark it might be wise to use a different one.

It just depends on the words. eg if you were going to open a bread shop with the word bread in the company name it is generic and you should be fine. If you wanted to start a pharma company and happened on Glaxo even if just one of 3 words you would be stopped. I do IP law so you could certainly contact me on here (if that is technically possible)

 

[Spirit09]

Thank you both for your advice, much appreciated. I think i'll be best off changing it, to avoid any future issues. I've only been running for 6 months and people are starting to know the name, so best I change it quickly.

 

[The Byre]

It is far more important to get your trading name right and to subsequently register that trading name as your trademark with the IPO and get the domain name. My company has a totally different name to the trading name that we use. We have the TM and the domains for that name but I can't be bothered to get the TM for the company name.

 

[SARDA]

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[SARDA]

It is far more important to get your trading name right and to subsequently register that trading name as your trademark with the IPO and get the domain name. My company has a totally different name to the trading name that we use. We have the TM and the domains for that name but I can't be bothered to get the TM for the company name.

Hi there,
I've found this post incredible informative, so thanks for the direction you've already shared.

I'm in the process of setting up a new catering company and am facing some confusion regarding a potential trademark issue. Very similar to the original example already shared.

I'll make an example; Let's say I want to start a business (Trading as) The Good Bread Company.. however I've since seen there is a company called 'Good Bread ltd' with branding / logo 'Good Bread'. They have filed for a figurative trade mark detailing their logo - GOOD BREAD in a circle etc. Am I able to trade as 'The Good Bread Company' with a completely logo not similar in any way? Note, their application is yet to be examined. Additionally years ago they submitted an application for a Word trade mark Good Bread that was refused.

Would appreciate some clarification.