Clash with Company name - help!

[AS500]

I set up an employment agency in 2003, specialising in financial recruitment. It is a limited company, and has been since “day one”.

However, towards the end of last year, another recruitment company started trading, using an almost identical name. The company name has one word spelt slightly differently – which happens to be a “unisex” Christian name - they spell their’s one way – and I spell mine the other.

I am starting to get a great deal of calls from their frustrated candidates – because they are not being called back of handled properly. This worries me because it could effect my reputation.
The candidates are calling me because if you type their name into yell.com or google, my company pops up first (in fact their name isn’t even listed)!

I contacted Companies House, but they were not interested, because the other firm is not “limited”.

Where do I stand legally? Can I force them to stop using such a similar name?

PS Although we are in the same business, they specialise in a slightly different area.

 

Unfortunately, being a LTD Company doesn't give you ownership over the business name (although many people mistakenly believe that it will), the only way to protect yourself is to register as a trademark.

You could however have a claim against them for 'passing off', especially if you can prove that the public are being misled or confused as a result of the similarities between you both. Any legal action you take however is likely to be very expensive and potentially risky.

The best person to talk to on here would be Crossgaurd as this is defiantely his arena, he should be along soon.

good luck, let us know how you get on.

 

[AS500]

Thank you - I had a feeling that could be the case.

With respect to trademarks, is it a case of "first come first served". In other words, could they 'pip me to the post' and get their name trademarked first (even though I have been trading longer)?

Also, as they spell their name slightly differently to me, would that mean that the trademark would not effect them?

 

Yes, it is a case of first come first served, if i were you i would get a solicitor/trademark attourney to do it for you as it is much quicker and they will do a search to make sure it's not already registered.

The Uk Patent office wil not allow them to regsiter their name, if you have got there first, as you both offer the same or identical goods and services (classes), even if their name is slightly different, it's still probable that they wont allow it.

First of all you have to make an application, if it's accepted, it will sit on the journal for a period of 3 months to give others the chance to object or oppose it (so don't tell ANYONE you've applied to have it registered), if no-one opposes in the 3 month period, than it is automatically registered.

Also, it is worthwhile keeping an eye on the journals to make sure that no-one else is trying to register a conflicting mark, as you will have the chance to oppose their application and nip it in the bud, you can subscribe to a trademark watching service for this pupose.

Find yourself a trademark attourney now (avoid the National Business Registry at all costs though), good luck!

 

[lawspeed]

We specialise in contract, legal and commercial advice for recruitment companies and technology companies. Unfortunately this type of activity is increasingly common in the very fluid world of recruitment and we have helped a number of our recruitment company clients bring a claim against their competitors for passing off.

Please let me know if you would like to instruct us in this matter and we can discuss further directly.

 

[VeryMark]

We act for several recruitment/employment agencies.

There are two things you need to do in this case:

1) Apply for trade mark registration as soon as possible. This will cost you £200 for our fee and £200 for the official fee on filing plus £60 on completion for one class of the Register (recruitment and employment services all fall into class 35), excluding dealing with any objections to registration or official actions. This gives you ten years protection, renewable likewise.

I can provide further information regarding trade mark registration if you can email me details of the name concerned and your website address.

2) As trade mark registration in the UK takes at least 6/7 months, you may wish to consider taking action now for passing off under the common law.

Separately from trade mark infringement, legal action for passing off may be taken under the common law on the basis that someone else is trading off your reputation and goodwill in a manner likely to damage your business.

The main basis for such an action would be evidence of your having built up an exclusive reputation and goodwill under the name in question prior to such passing off, plus evidence of a likelihood of confusion or of any actual instances of confusion (which you should record in writing as soon as you become aware of them) – evidence of actual confusion is not mandatory however.

Many cases are in fact settled by negotiation between the parties without it being necessary to pursue proceedings to their conclusion. The chances of succeeding in this way are enhanced by:

a) having an obviously strong case, so that the other party can see immediately that you are likely to succeed, and

b) having a determination to press the matter if needs be formally through the courts, so that the other party can also see that delay and prevarication on their part is ultimately likely to cost them more than it gains.

If a letter of demand is to be prepared and sent, our charge for this work would depend on the amount of time taken. We suggest setting a starting budget of £500, which ought to cover the initial stages of the matter up to and including obtaining a response from the other side and advising you thereon, in respect of which we would ask for an initial retainer of £300. The actual amount of our fees depends on the time required, at an hourly rate of £180 per hour. (All figures given exclude VAT.)

The following would help in considering the matter further:

i. Copies of your literature and promotional material and/or details of your website address.

ii. A general indication of the extent of your reputation and goodwill – details of the magnitude of your turnover and advertising would assist in this connection, together with an indication of the degree to which you market nationally.

iii. Full details of the other party’s passing off, including copies of any literature and/or advertising.

iv. Written details of any instances of confusion.

We've been successful for several clients on this basis without having to go to court by being persuasive and forceful on their behalf.

Please give me a call if you'd like to talk this through.