Advice regarding a business name issue

Discussion in 'Legal' started by itsbeenoneofthesedays, Aug 12, 2019.

  1. itsbeenoneofthesedays

    itsbeenoneofthesedays UKBF Newcomer Free Member

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    Hello everybody, I've been browsing the site for some time now and have to say that it's a treasure trove of valuable information.

    Unfortunately, I've came across an issue with my own business and not sure how to proceed with it. I've sought the advice of a free business adviser but they can't get back to me until next week.

    I'm self employed as a sole trader and just over 3 years ago I set up an eCommerce website so I could sell online. A few days ago I received an email from a director of a business about 30 mile away to let me know that some of their customers thought my business and their business were somehow linked. In the 3 years I've been running the website I've never heard of any concerns from any customer or anybody else for that matter that there was any connection between my business and theirs.

    The business name on my website is 'my name t/a business name' and their name is ' their company name ltd' it even states on my terms and conditions that I'm a sole trader based at 'my home address.' I would rather not mention the names on the forum.

    The registered address on their website is the industrial unit they operate out of and the address on my website is my home address. My website also bears no resemblance to their website.

    Other than the first word in my trading name I don't even believe the names are similar.

    I communicated with the director of the other business by email and told him I wasn't aware of this situation until now and that I need to seek advice. The director replied this morning that it was one of their largest customers who thought my website was linked to his business and that he needs to consult his legal team.

    When I was made aware of this situation I did some research online and couldn't find any link between my business and theirs. I checked for any trademarks and couldn't find anything. However, I searched Companies House to check if the director maybe had another company with the same name as my trading name, there was no company registered with my trading name but the directors company did have my trading name registered but changed it to their current company name more than 20 year ago.

    I've worked hard to build up my small customer base and also worked hard to get the suppliers I have, especially as most were very reluctant to work with a sole trader who doesn't have trade premises. I don't have a big income from my business, I barely break even but it's my intention to continue building my customer base.

    I discussed this situation with a friend who did admit they don't have much knowledge on this subject but their advice was that as the other company has considerable bigger pockets than mine I should be wary that their legal team don't take me to court or issue a cease and desist letter. I don't know what they could take me to court for but do know I couldn't afford it if they did as my finances are very tight at the moment. My friend advised that I should seek the advice of a lawyer, unfortunately I'm not in a position to afford a lawyer at the moment.

    Considering I rely on the business to pay my rent, bills and feed me and also considering the amount of work I've put into building up my customer base I would be very reluctant to just close my business. A name change could be possible but at the moment not affordable as i would need to change the domain on my website as well as change the name on all the marketing materials I use.

    What would you do if you were in this situation?

    Any advice would be greatly appreciated and please accept my apologies for the long winded post.
    Posted: Aug 12, 2019 By: itsbeenoneofthesedays Member since: Aug 9, 2019
  2. MBE2017

    MBE2017 UKBF Enthusiast Free Member

    920 239
    First off, don’t panic.

    A lawyer will often have a free chat/meeting for say 30 minutes or so, so worth taking advice.

    Without more details it is hard to say much more, some guys who will have encountered this will be along shortly. Are you in the same industry, dealing in the same line of goods and services?

    I assume the company is suggesting you are passing off as themselves, they would have to prove this to a judge, it all falls on them.
    Last edited: Aug 12, 2019
    Posted: Aug 12, 2019 By: MBE2017 Member since: Feb 16, 2017
  3. nexuser

    nexuser UKBF Contributor Free Member

    31 3
    Do you or they have any registered trademarks associated with a disputed name or brand?
    This could be an important detail.
    Posted: Aug 13, 2019 By: nexuser Member since: Aug 11, 2019
  4. MikeJ

    MikeJ UKBF Big Shot Free Member

    5,643 1,609
    Are you in the same field? Do you compete with each other? Is the common name a brand (eg. Kipling), or something linked to what you sell (eg, cakes)?
    Posted: Aug 13, 2019 By: MikeJ Member since: Jan 15, 2008
  5. Chris Ashdown

    Chris Ashdown UKBF Legend Free Member

    10,419 2,108
    My first thoughts are to take a copy of all the other guys sites so you have proof of the difference as of today, there is also a way of looking up old site images but i have forgotten how

    Do not talk to the other person again do all correspondence by either email of letter so you have a record of all correspondence

    I would myself send them a actual letter to there registered address and ask for exact clarification of where they see a problem
    Posted: Aug 13, 2019 By: Chris Ashdown Member since: Dec 7, 2003
  6. itsbeenoneofthesedays

    itsbeenoneofthesedays UKBF Newcomer Free Member

    3 0
    Thanks for the replies.

    Neither myself or the other company have any registered trademarks. I also checked for any trademarks in the directors name, the registered companies postcode and the directors home postcode and couldn't find anything. I checked the companies other director (and previous director) and still no trademarks registered.

    We are in a similar field although the majority of what I sell are different and the product they retail is their own brand which I believe they manufacture themselves in house.

    The goods I sell I've been importing directly from the manufacturer. I'm also listed on the product manufacturers website as an authorised distributor. For some of what I sell I believe we do compete although the other company doesn't sell to the public. They sell wholesale to various distributors and also export a lot of their goods whereas my goods are mostly sold locally through my website to the public and I have two trade customers (both local businesses owned by friends). I don't even think the other company sells online as none of their product have prices listed and the only way to purchase is through a distributor and there is none listed on their website.

    I've took screenshots of their website and my own and I also went through both their website and my own page for page and can't find anything that would suggest either business is linked.

    I found a way of looking at cached copies of websites, while my own website shows there the other companies doesn't show at all. I couldn't find cached copies of their website anywhere.

    The only other company I could find with a business name the same as mine is in Austria and they aren't link to either of our companies and are in a completely different field.

    I haven't heard anything else from the director of the company although his last email said he would need to discuss this with his legal team so I guess I may be hearing from him soon.
    Posted: Aug 15, 2019 at 2:33 PM By: itsbeenoneofthesedays Member since: Aug 9, 2019
  7. The Byre

    The Byre UKBF Ace Free Member

    8,741 3,411
    When it comes to names and other issues of intellectual property, the devil, as Goethe stated, is in the details.

    That said, however, assuming the other enterprise has been trading uninterruptedly under the contested name longer than you have, they will have the rights to the name.
    Posted: Aug 15, 2019 at 3:22 PM By: The Byre Member since: Aug 13, 2013
  8. surreyaces

    surreyaces UKBF Regular Free Member

    183 29
    If they don't have any registered trade marks then they can't claim trade mark infringement; they could however attempt to take action against you for passing-off, potentially.
    Posted: Aug 15, 2019 at 3:55 PM By: surreyaces Member since: May 31, 2012
  9. Darren_Ssc

    Darren_Ssc UKBF Regular Free Member

    379 78
    This guy emails you directly despite having a 'legal team'? Sounds like typical bully boy behaviour to me?

    I'm betting he makes liberal use of exclamation marks to get his point across.
    Posted: Aug 15, 2019 at 3:58 PM By: Darren_Ssc Member since: Mar 1, 2019
  10. The Byre

    The Byre UKBF Ace Free Member

    8,741 3,411
    This is not (strictly) true.

    A trade mark in a common law jurisdiction must either be registered (in which case it becomes far easier to defend) or have been used for a period of time so that it has acquired local distinctiveness (so-called Prior Rights).

    In this case it would appear that neither has registered, so the doctrine of Prior Rights will almost certainly apply. In such a case, using the principle of 'passing off' is one of the instruments available to the wronged party.
    Last edited: Aug 15, 2019 at 5:42 PM
    Posted: Aug 15, 2019 at 5:25 PM By: The Byre Member since: Aug 13, 2013
  11. surreyaces

    surreyaces UKBF Regular Free Member

    183 29
    That's exactly what I said. No one has registered so there can be no infringement, but there could be passing-off.
    Posted: Aug 16, 2019 at 10:01 AM By: surreyaces Member since: May 31, 2012
  12. itsbeenoneofthesedays

    itsbeenoneofthesedays UKBF Newcomer Free Member

    3 0
    Would it still be considered passing off if both their and my trading name are not similar, it's obvious from looking at both websites we are two different businesses and don't even serve the same market?

    Thanks for the advice received so far, I really appreciate it.

    I haven't heard anything from the other company but have managed to get an appointment with an IP Lawyer on Tuesday next week.
    Posted: Aug 16, 2019 at 12:05 PM By: itsbeenoneofthesedays Member since: Aug 9, 2019
  13. The Byre

    The Byre UKBF Ace Free Member

    8,741 3,411
    Well, if what you say is true, then if your names are different and you are serving different markets, the whole issue goes away.

    The key here is going to be here the question of just how different the names really are - that's where your IP lawyer comes in. He or she will see the names and from experience be able (one hopes!) to tell you if the other party's claims are in any way justified. We're back to Goethe, details and the devil here!

    There are important legal differences between passing-off, TM infringement and copyright. You can have passing-off without TM infringement and you can have TM infringement without passing off - and of course, you can have both simultaneously. A slogan or catchphrase can be protected by TM law or by copyright or even both and lead to a passing-off claim.

    When both parties are unregistered, the most likely outcome is that the party with Prior Rights will be able to apply the doctrine of passing-off and issue a cease-&-desist letter. In that case, the party with Prior Rights will be able to assert that their TM was already established and therefore any subsequent use of that TM is infringement leading to a possible claim for passing-off.

    Some legal journalist has written a whole essay on this and other related subjects just for you!
    Posted: Aug 16, 2019 at 12:29 PM By: The Byre Member since: Aug 13, 2013
  14. Chris Ashdown

    Chris Ashdown UKBF Legend Free Member

    10,419 2,108
    Don't be overly stressed as there are probably hundreds of "AA taxi" firms. "Smith plumbers" and so on

    A simple solution worth considering is to add your town name or profession etc to the present one something like "G Plumber of Southampton" you can keep the old domain but just change the header

    I am sure you can come to a reasonable compromise if needed
    Posted: Aug 17, 2019 at 9:02 AM By: Chris Ashdown Member since: Dec 7, 2003