Accused of Passing Off. Do they have a case?

[macfanuk]

I have, today, received a letter from a disgruntled business accusing us of trying to steal their customers. I would therefore like some advice. Examples given below (not using real names).

They are trading as 'birmingham radiators' and using birminghamradiators.com. They registered birminghamradiators.com in April 2013. They have been advertising on Facebook since August 2013.

We are trading as 'birmingham radiators' and using birminghamradiators.co.uk. We registered birminghamradiators.co.uk in July 2013. We only started advertising on Facebook since November 2014.

I don't believe from April 2013 to July 2013 is sufficient enough time for them to have created sufficient identity to accuse us of passing off, so just wondering if anyone could offer some advice?

BTW neither businesses have the name registered as a limited company or trademark.

 

[ethical PR]

When you started up your business, I am suprised the fact there was another business trading with the same name that you wanted to use didn't come up when you searched online.

The bottom line is they were using the name first and customers could be confused by this, which isn't good for either of you.

It doesn't really matter what you believe, but what will stand up in court.

It maybe cheaper for you to alter your brand than fight the matter in court.

Perhaps speak to a commercial lawyer to get some initial advice.

 

[macfanuk]

Thanks for your post. When looking for a domain name, we looked for the .co.uk (which is common sense with a UK business). We didn't even consider the .com version.

There website still doesn't function (has very few products on and shows prices in dollars, not pounds) and they didn't start advertising on Facebook until after we had bought the domain name. Therefore, I don't believe they were trading at that time.

 

[ethical PR]

I meant an internet search for the business name ie Birmingham Radiators.

Just because someone wasn't using a particular advertising channel, doesn't mean they weren't running a business.

If you don't believe they were trading before you, then speak to a solicitor and get some initial advice.

 

[Charlie B ACS]

If it is Birmingham, are they Birmingham UK, rather than Birmingham Alabama (US)?

 

[privatedetective-s]

I can't get either of the sites to load?

 

[Charlie B ACS]

Examples given below (not using real names).

Think that sums it up in the OP

 

[sirearl]

I can't get either of the sites to load?

"Examples given below (not using real names)."

And you is a detective.

 

[Karimbo]

you came in second, you should change your name. Regardless of legality here - i dont know if the other copany has a right to claim over the name when he didn't have a TM in place and didn't snap a very cheap .co.uk domain.

BUT, you are better off changing to a new brand name and doing a 301 redirect to your new domain because it would be much better for your own sake (so your customers don't go to them and vice versa).

.com is more often used than .co.uk (even in the UK) so there's more of a chance of your customers going to them than the other way round.

Also if you're a real success and get 1M turnover, and the other company is still doing a sole trader operator. You dont want a no win no fee lawyer trying to persuade them to take some of your business.

 

[Karimbo]

also the other business is going to try to get your domain. Refuse it because he has no LEGAL right to it. Just come up with a brandable domain/company name and do a 301 redirect to your new domain and market the new one. You should not lose on any seo.

 

[MOIC]

Get the name registered, irrespective of who owns the right to the domain, which is ambiguous given the info provided.

 

[BusinessPlexus]

interesting thread... its all in the phrasing - would market type matter? if you were in two different markets but had the same names in different regions? out of curiousity

 

[F_B]

Without the genuine names it is difficult to make a sensible comment. I think your name will make a big difference, particularly if it is distinctive, rather than geographical.

Passing off

Passing off is a common law right, no registration is needed. It exists spontaneously. To be found guilty of passing off three things are required.
1. That there is a mark in which reputation has been built up (Birmingham radiators in this case). To show this the other side merely need to show they have used it in trade. This is where the name really matters. Birmingham radiators is not distinctive and cannot separate the goods of one supplier from that of another. I'm fairly sure there are more than one dealer of radiators in Birmingham. If you name is distinctive then goodwill may have already been built up by the other party in that name. I'll assume the worst that the name is really distinctive and that the other has built up good will in the name.
2. The mark has been misrepresented. This is straightforward, the other side just need to show you using the identical name for the sale of radiators.
3. Your use of the name has caused damage to the other party's goodwill and reputation. This one is very hard to demonstrate. If a customer has written to the other side complaining about your products then the customer is clearly confused between you and the other party. Your use of the mark would be causing damage to the goodwill of the other party. This rarely happens though. If you know you are in this situation then it is likely a passing off case would succeed (assuming the mark is distinctive) you should seek professional advice.

In order to prove passing off the other side would need to prove with hard evidence that each of those three items had been fulfilled. If your name is a generic geographical description then point 1 is unlikely to be fulfilled. If they can show point 1, they then need evidence that actual confusion has occurred to fulfil part 3.

Passing off is a territorial beast, as any IP right. Do the third party trade in the UK? If they do not, and you are not trading in their jurisdiction, they will not have accrued any rights in the UK to enforce against you.

Trademarks

The strongest defence against this sort of attack is to have secure rights in the UK. I strongly recommend you lodge a trademark application immediately if your mark is distinctive.Trademark rights are much more powerful than passing off, both as a deterrent and if anyone infringes your mark. Furthermore, trademark infringement is much easier to prove than passing off.

Even if the third party are trading in the UK, if they have not registered their trademark yet there is nothing stopping you from attempting to register it. The third party would have a local prior right use defence against infringement but would not be able to operate outside that area (so if they trade currently in Birmingham they would infringe your trademark if that operated outside of Birmingham). In other words your registered trademark would contain your competitor to a localised area.

An intellectual property lawyer will be able to advise on the likelihood of success of a registration and on the potential pitfalls of your current situation. Trademark specifications should be carefully thought out to ensure they provide the broadest scope of protection available to you. I strongly recommend getting professional advice as the particulars of your situation may provide you with some useful options.

If you do get a registered trademark do not threaten the other side with infringement proceedings. There are unjustified threats provisions in the trademarks act where the other side can sue you for making accusations.

Domain names
Karimbo above is right. If you registered the domain with a genuine intent to use it then the other party cannot seize it off of you. A domain name does not confer any trademark rights and I doubt it would contribute to passing off unless it was a very famous mark.

In summary, do the other party trade in the UK? Is their name distinctive or very descriptive? These details will really make the difference. If you don't want to disclose them here go to a trademark attorney who will be able to assess your position and advise accordingly.

 

[F_B]

interesting thread... its all in the phrasing - would market type matter? if you were in two different markets but had the same names in different regions? out of curiousity

Depends on the market, region and rights involved!

For passing off I think if you operate in different markets you will be unlikely to succeed in proving your claim. For example, Ferrari are unlikely to succeed in proving someone using their badge on a keyring is passing off. However, they would be far more likely to use copyright law instead.

With trademarks it all depends on the goods and how similar they are. In trademark applications there is a specification of goods. For example, Nescafe will be registered for "coffee". If say for example, I decided to start a New age funk band and called them "Nescafe" I would not be infringing the Nescafe trademark as the goods/services are completely different. However, someone like Ferrari, on the other hand, may have a registered trademark that includes "cars; promotional items, particularly key rings". As such if I started selling key rings using Ferrari's mark then I would be committing infringement.

Things can get really funky if the name is very famous, for example coca cola. The use of fictional TV product names has also been known to cause problems. In one case from 2007 a brewery decided to trademark the name of one of it's beers, "Newton and Ridley", which also happens to be the name of a beer sold in the Rover's Return on Coronation street. ITV successfully opposed the application, even though they themselves did not sell any beer under that name.