cease and desist after trademark application

[albertramsbottom]

Hi

We have attempted to register the a trademark "Street Decals" in the UK. We received an opposition to this mark from a European Company with a similar mark selling in the same class as us, namely "Street One"

They have a number of similar marks all using the word "street"

Ok, so we can argue this, as there are another 573 Marks with the word Street in them in the class 25 (clothing). And we believe that opposing a mark on a generic word such as "Street" is a little rich to say the least.

But....

They have also asked us to stop selling t-shirts and/or bags on our website:
streetdecals.co.uk
streetpromotions.co.uk
streettees.co.uk.

All of which we have owned for 10 years or more. We do not trade currently on
streetpromotions.co.uk
streettees.co.uk

But have traded on streetdecals.co.uk for at least 8 years

They have also asked us to stop selling t-shirts on Amazon using the brand "Street Decals". We have been using Amazon for about 7 years.

Our arguments currently:
1. This is a UK registration and Street One own no UK specific marks
2. They do not own streetone.co.uk
3. Street is very generic
4. There are 573 other registered marks wit the word "Street" in them
5. We have traded using streetdecals.co.uk for 10 years
6.We have owned all the domains for 8 - 10 years
7.They sell fashion items, we sell custom made t-shirts and bags using our own designs

Finally we have no money, only home business and cant hire a solicitor!

Shall we write back with a bluff, with more detail, focusing on each issue they have and see what happens?

Cheers

 

[ecommerce84]

I think this is one of those where you need real expert advice. I’m presuming that if they are successful with their cease and desist, you would effectively be out of business?

They may have no case at all and be attempting to bully you in the hope you’ll concede and disappear. Or they may have a case and persist until you disappear anyway.

I feel that they would be more likely to back down or concede defeat if your responses were coming from a solicitor.

I know you’ve said you can’t afford one, these guys offer Pro Bono legal services for IP related cases, so at the very least they would be worth a tr, you just apply online with this application form: http://www.ipprobono.org.uk/

 

[AdamTMA]

It seems likely that they only found out about you because you filed the application. This suggests to me that in your years of concurrent use, there have been no instances of confusion - not fatal to their case, but good for you.

As suggested above, legal advice in this matter is a necessity

 

[The Byre]

As above - plus all IP questions are questions of detail. For example, how long have you been trading, how long have the others been trading, what other players are there in the market that also have been using these names and how long have they been trading - and so on - and on and on and . . .

 

[AdamTMA]

As above - plus all IP questions are questions of detail. For example, how long have you been trading, how long have the others been trading, what other players are there in the market that also have been using these names and how long have they been trading - and so on - and on and on and . . .

Exactly, although there are of course legal precedents, each case turns on its own facts. High Court judgements deciding whether or not one trade mark infringes another are often around 60 pages long!