Registering a trademark

[percolated]

I have an idea for a business and have decided on a name, let's say softeqs and I own the domain softeqs.com. I would like to register Softeqs as a trademark and can see, having had a fairly extensive look on the Government's IPO website, that no one currently has anything similar to it so feel pretty confident I will be able to get the trademark registered.

Whilst I was doing my Google due diligence I spotted that there is already a company on Companies House using the same name Softeqs Limited and has the .co.uk domain name and also there is also another product, actually a Wordpress theme which calls themselves something similar Softeqswp. I'm happy to be called Numpty Limited t/a Softeqs so the company name isn't an issue.

The question is, before I embark on spending several £100, if I am successful with the registration, is that trademark then mine and no one can question me using the name. I'm worried thinking it may work along the line of Patents when if there is prior art, they can be challenged.

Any advice would be gratefully received and Softeqs is not the actual name, although similarly not a real word.

 

[Mark T Jones]

A few considerations

Registering a trademark won't give you rights to stop someone who can demonstrate that they are already using the name

Is it really a good idea to market the same brand as someone who is established? (how similar/conflicting are they?)

You could potentially still be accused of 'passing off'.

And finally, brand names are seldom as valuable or important as their owners believe. What is important, always is the view of your customer

 

[HFE Signs]

For several reasons, I would avoid trademarking a name when someone else has the same name registered as a Ltd company.

 

[percolated]

For several reasons, I would avoid trademarking a name when someone else has the same name registered as a Ltd company.

Could you help me understand what those reasons are please?

 

[HFE Signs]

Could you help me understand what those reasons are please?

You're competing with a someone who is already established.
Your customers may be accidently lost to them.
You are really going to pee them off by trademarking a brand that they will see as theirs
Customers may see your brand as ripping off someone else's

My view is, you'd be better off to go back to the drawing board and think of something original.

 

[percolated]

A few considerations

Registering a trademark won't give you rights to stop someone who can demonstrate that they are already using the name

Is it really a good idea to market the same brand as someone who is established? (how similar/conflicting are they?)

You could potentially still be accused of 'passing off'.

And finally, brand names are seldom as valuable or important as their owners believe. What is important, always is the view of your customer

OK understood. If the other limited company didn't have the same name registered and was only using the .co.uk domain, would that make a difference? I.e. I'd own the .com domain, the limited company and have a trademark?

 

[Mark T Jones]

If they are using a name and you copy it, you can expect them to take action

 

[percolated]

If they are using a name and you copy it, you can expect them to take action

Thank you this has been really helpful. Just so I am clear, if a sole trader were to trade as a name let's say www.percolised.co.uk and I subsequently registered Percolised Limited, had the trademark and the www.percolised.com and even though one was cleaning test tubes and the other was creating coffee makers, I could expect them to take action against me?

It seems a stretch but that's why I thought it safe to ask on here as I don't know what's best. Is this something I should consult a legal professional about?

 

[Mark T Jones]

Nobody knows the answer. What I do know for certain is that if you name a business 'Easy' - whatever segment you are in, you will promptly get a legal letter from Stelios.

They will decide whether they want to take action.

The courts will decide whether to uphold it.

My point is, why take the risk when there are a billion other brand names available?

 

[The Byre]

The question is, before I embark on spending several £100, if I am successful with the registration, is that trademark then mine and no one can question me using the name?

No.

I'm worried thinking it may work along the line of Patents when if there is prior art, they can be challenged.

And you would be worrying for good reason! All the IPO does is look up if you are infringing or close to infringing an existing TM that is registered with them - it cannot see if there is another TM that could claim infringement of their common law TM rights.

A TM should be original, registered and used for proper protection.

 

[DontAsk]

Thank you this has been really helpful. Just so I am clear, if a sole trader were to trade as a name let's say www.percolised.co.uk and I subsequently registered Percolised Limited, had the trademark and the www.percolised.com and even though one was cleaning test tubes and the other was creating coffee makers, I could expect them to take action against me?

Will your geographical area of operation overlap with the sole trader?

Identical trademarks can exist in different classes so maybe cleaning coffee makers is catering but cleaning test tubes is laboratory supplies, for example.

The devil is in the detail.

At the end of the day, why bother? it will just cause confusion over .com and .co.uk. A customer looking for you remembers the name and goes to .co.uk. It's not you so they move on and you lose a customer.

 

[MOIC]

1. Customer confusion will be an issue, that you won't be able to overcome, given the history of the company with the similar name.

2. Classification will also need to be determined whether they have the trademark in the same classification as you.

Point 1 will be the determining factor.

Edit: Overlapped with @DontAsk post above! (Second time this evening, I'm getting slow)

 

[DontAsk]

Edit: Overlapped with @DontAsk post above! (Second time this evening, I'm getting slow)

Perhaps because it's morning where I am

 

[percolated]

Thanks for all your input, I'm going to get some legal advice.

 

[percolated]

1. Customer confusion will be an issue, that you won't be able to overcome, given the history of the company with the similar name.

2. Classification will also need to be determined whether they have the trademark in the same classification as you.

Point 1 will be the determining factor.

Edit: Overlapped with @DontAsk post above! (Second time this evening, I'm getting slow)

I thought I explained there is no other trademark the same or similar to the one I am suggesting and in my second example there is no company either. I own the company name, I have the relevant domains except .co.uk which is currently being used in an unrelated sector.

My plan is to get legal advice and register the trademark shortly. Having read several solicitors sites it would appear unless I am attempting to pass off, which will clearly not be the case, there is little anyone can do but thanks for all the input.

 

[MOIC]

Perhaps because it's morning where I am

Bloody China, ahead with everything!

 

[MOIC]

I thought I explained there is no other trademark the same or similar to the one I am suggesting and in my second example there is no company either. I own the company name, I have the relevant domains except .co.uk which is currently being used in an unrelated sector.

My plan is to get legal advice and register the trademark shortly. Having read several solicitors sites it would appear unless I am attempting to pass off, which will clearly not be the case, there is little anyone can do but thanks for all the input.

A trademark can be contested at any time in the future.

The domain .co.uk is already in use, so that will be another issue.

As mentioned before it's the confusion that's your issue, which can be contested when you start trading..

Taking legal advice is what you should always do for these matters, but IP lawyers don't come cheap. People on forums give their advice and opinions, often based on similar experiences.

Every situation is different.

 

[japancool]

Why not just pick a different name?

 

[percolated]

I see it as a great brand which is currently unheard of, doesn't show up in Google and if I gave up everytime there was a hurdle I wouldn't do what I do. Plus I wanted a quick sanity check before I paid for legal advice.

 

[japancool]

I see it as a great brand

A great brand is made up of the product and marketing behind it. The actual word or name almost never matters.

 

[percolated]

A great brand is made up of the product and marketing behind it. The actual word or name almost never matters.

As I said I just wanted to sanity check before I paid for legal advice, I don't need any what is a brand 101 guidance.

 

[japancool]

As I said I just wanted to sanity check before I paid for legal advice, I don't need any what is a brand 101 guidance.

Judging by this thread, you apparently do.

Good luck with your court cases.

 

[BlueAvatar]

As I said I just wanted to sanity check before I paid for legal advice, I don't need any what is a brand 101 guidance.

Hello. Iv came across a similar situation and wondering how have you got on? Do you have any advice?

 

[Lucan Unlordly]

Whilst I was doing my Google due diligence I spotted that there is already a company on Companies House using the same name Softeqs Limited and has the .co.uk domain name and also there is also another product, actually a Wordpress theme which calls themselves something similar Softeqswp.

Having taken appropriate legal advice and paid in excess of £1k I registered a trade name that is very similar, as in one letter difference, to that of a major international grocery brand, albeit it in a completely different sector, clothing. Despite this had I used the same spelling the likelihood of a successful application was greatly reduced.

Both trade names are widely used within the titles of multiple registered companies, but not in ours or the retail brands business sectors.

In the unlikely scenario of the retail brand putting their logo on fashion clothing for retail sale I technically and legally have the upper hand. In reality their brand is worth $1.2 billion, the parent company $79 billion

 

[fisicx]

I see it as a great brand which is currently unheard of, doesn't show up in Google and if I gave up everytime there was a hurdle I wouldn't do what I do. Plus I wanted a quick sanity check before I paid for legal advice.

I thought you said there was a .co.uk with the same name. Are you suggesting Google doesn’t show this domain on a search for this brand name?

 

[DoolallyTap]

I have an idea for a business and have decided on a name, - do you want to call it Softeqs?
let's say softeqs and I own the domain softeqs.com. I would like to register Softeqs as a trademark

SOFTEQ UK LIMITED Company number 06491630 was dissolved November 2011

Why bother with a trademark now, research the market, set the business up, get the service/product out there, sell some, get moving and while you do that you can fiddle about with trademark requirements.

 

[The Byre]

Why bother with a trademark now, research the market, set the business up, get the service/product out there, sell some, get moving and while you do that you can fiddle about with trademark requirements.

That is disastrously bad advice.

You are perfectly right to state that market research comes first - I never cease to be amazed by the number of people who just jump into the deep end without finding out if anyone actually wants their offerings!

BUT - Researching and subsequently registering your TM is something you must do BEFORE you begin trading. You do NOT need to consult an IP lawyer if your research is sound. You just have to make sure that NOBODY is using that name ANYWHERE on Planet Earth within your field of business.

Registering a TM costs just £170 and it lasts 10 years - so protecting that name costs just £17 a year - is that too much?

 

[percolated]

I thought you said there was a .co.uk with the same name. Are you suggesting Google doesn’t show this domain on a search for this brand name?

I'm not suggesting that, I am stating that as a fact. I haven't checked beyond page 10 but who would. As much as you think you know what you're talking about, it's generally based on your opinion.

 

[AlanJ1]

That is disastrously bad advice.

You are perfectly right to state that market research comes first - I never cease to be amazed by the number of people who just jump into the deep end without finding out if anyone actually wants their offerings!

BUT - Researching and subsequently registering your TM is something you must do BEFORE you begin trading. You do NOT need to consult an IP lawyer if your research is sound. You just have to make sure that NOBODY is using that name ANYWHERE on Planet Earth within your field of business.

Registering a TM costs just £170 and it lasts 10 years - so protecting that name costs just £17 a year - is that too much?

Can't echo this enough.

Don't wait until it's too late!

 

[fisicx]

I'm not suggesting that, I am stating that as a fact. I haven't checked beyond page 10 but who would.

Ok. Just wasn’t sure. It there a website attached to the .co.uk? If so, has it been indexed?

If you do develop your brand is there a chance the .co.uk could compete on Google should the brand name be searched for?

 

[percolated]

Hello. Iv came across a similar situation and wondering how have you got on? Do you have any advice?

My situation was that (real names changed)

- An existing sole trader was trading as a cleaner on monkify.co.uk
- monkify in the UK does not come up as the sole trader on at least the first 5 Google search results
- Other websites I do not own already trade in other territories as monkify.co as well as monikywp.com etc
- I have a product unrelated to cleaning or what the other monkify companies are selling
- I own monkify.com
- I have the company Monkify Limited
- I have a trademark in process for Monkify (no objections to it yet although no other trademarks are for Monkify)

The advice I was given, and to be clear it was not a binary yes or no, was that on balance this is unlikely to cause me any problems.

I would recommend getting your own legal advice though.

 

[percolated]

Ok. Just wasn’t sure. It there a website attached to the .co.uk? If so, has it been indexed?

If you do develop your brand is there a chance the .co.uk could compete on Google should the brand name be searched for?

Sorry if I sounded like a c ock, long day! There is a website yes, doesn't appear unless I type in the full name i.e. abc123.co.uk into Google, abc123 doesn't appear in the first 10 pages as of 2 minutes ago, in fact I already rank which I'd yet to even check until just now.

 

[DontAsk]

- An existing sole trader was trading as a cleaner on monkify.co.uk

- I own monkify.com

You don't own a domain.

Regardless, this is just going to confuse punters. The first thing I would enter would be <some name>.co.uk if looking for UK business. I would find the sole trader, not you.

Choose another name and register both .co.uk and .com

 

[percolated]

You don't own a domain.

Regardless, this is just going to confuse punters. The first thing I would enter would be <some name>.co.uk if looking for UK business. I would find the sole trader, not you.

Choose another name and register both .co.uk and .com

No need to be a pedant, I understand how domains work. To all intents and purposes the domain is mine as it's my company name, trademark and website.

Given you know absolutely nothing my business, what I sell, how I sell it, what it does or indeed how customers find me, I'm really not concerned about how you would search for the business.

 

[DontAsk]

No need to be a pedant, I understand how domains work. To all intents and purposes the domain is mine as it's my company name, trademark and website.

Given you know absolutely nothing my business, what I sell, how I sell it, what it does or indeed how customers find me, I'm really not concerned about how you would search for the business.

Another long day?

 

[perec4stor]

No need to be a pedant, I understand how domains work. To all intents and purposes the domain is mine as it's my company name, trademark and website.

Given you know absolutely nothing my business, what I sell, how I sell it, what it does or indeed how customers find me, I'm really not concerned about how you would search for the business.

People are here to help you, try to calm down and respect the community who dedicated free time to give you advices! If you still have issues and still have a bag of energy, let us know so we can give you others tips !
I may have someone in my contact that can helps you !