Company Name Copied

[KC1]

Hello All,

So I'm currently a sole trader since september 2018. Before this I had setup a brand and domains etc, within the 12 months prior to my official startup and even some work done under my trading name.

The plan was after 1 year or so to convert to a LTD company, however someone has registered a LTD company under my trading name 5 months ago. They're also within the same sector as me and must have been aware of us when they set up their company. I've been warned that it could be a copy cat/trademark scam company as their website is very bones and they're using a forwarding mail address rather than an office. Their website has only been setup formally within the last week or so.

I was due to register this trading name as a trademark this month and start the process of becoming a LTD company but am now unsure where I stand as someone has taken that name and registered a business with it.

The following points I could really use advice on:

• The trading name has been taken, for example "peanuts", would it be safe to register as "peanuts worldwide" ? We have a subrand like that which I don't mind changing the core company name to but still trading under "company"
• If I register the company name to something that includes my current trading name in (Their new company name), am I at risk of being sued (example above)?
• Is it still worth trying to register my brand/trading name as a trademark even though someone has registered a company in the same sector with that name ?
• Would a trademark allow to me get the other company to change their name even though they've had it for 5 months + however long the trade mark takes to get setup?

Any advice on the above would be most appreciated !

 

[Mr D]

Ok so someone has a limited company. You didn't want it so they took it.

Nothing stopping them. You could offer to buy the company from them. Or you could use a different name.

 

[KC1]

Ok so someone has a limited company. You didn't want it so they took it.

Nothing stopping them. You could offer to buy the company from them. Or you could use a different name.

Well the plan was to just once I had been more established as a LTD wasn't ideal at the start.
Is there no way to fight it with proof of trading under that name and a trade mark or similar ?

 

[fisicx]

Nope. You have no rights at all. Even owning a trademark doesn’t automatically give you a right to the company name.

 

[Mr D]

Well the plan was to just once I had been more established as a LTD wasn't ideal at the start.
Is there no way to fight it with proof of trading under that name and a trade mark or similar ?

You chose for whatever reason not to take the limited company, means was available for anyone else to take.

Limited can be 'parked', kept dormant at minimal cost and effort. For years if need be.

You want that limited, buy it from the owner.
Usually cheaper to change your plans.

 

[KC1]

You chose for whatever reason not to take the limited company, means was available for anyone else to take.

Limited can be 'parked', kept dormant at minimal cost and effort. For years if need be.

You want that limited, buy it from the owner.
Usually cheaper to change your plans.

By the looks of of it im at a stale mate to this other company.

I can register a LTD company in dormant under the syntax of "companyname worldwide" as this is fine by companies house. Will this pose any issues in the future when we use just the "company" part trading or in or other sub brands do you know ? These are all "companyname service" etc.

Thank you for the advice so far. Im due to speak to a solicitor about it tomorrow but it looks like they're going to tell me the same.

 

[MBE2017]

If you are in the same field the other company could accuse you of passing off. Easier to get a new name, do it right this time.

 

[KC1]

If you are in the same field the other company could accuse you of passing off. Easier to get a new name, do it right this time.

Interesting point about the passing off part. I was told I could peruse them for exactly that as I’ve got evidence of working in this sector for 2 years where they’ve just started. Despite being a sole trader.

Is this true or just solicitor advice leading to a costly loss ?

 

[obscure]

I disagree with all the above advise. The Ltd co name is wholly irrelevant* and gives them zero rights over the trading name that you are using. Registration at Companies House is simply the act of creating an entity that CH can track. The name used is only relevant to CH and does not benefit from or give protection as a Trademark.

A trademark is a mark used to trade. It is not necessary to be a Ltd company in order to have a trademark... you just have to trade (or register the mark).

1. You can register any available name for your Ltd at CH and continue to trade under your existing trademark. They don't have to be the same.
2. You can and should proceed to register your trademark.
3. You could/should get a lawyer to send a letter to this company informing them of your prior use of the Trademark and that they will need to choose a different trading name.

 

[KC1]

I disagree with all the above advise. The Ltd co name is wholly irrelevant* and gives them zero rights over the trading name that you are using. Registration at Companies House is simply the act of creating an entity that CH can track. The name used is only relevant to CH and does not benefit from or give protection as a Trademark.

A trademark is a mark used to trade. It is not necessary to be a Ltd company in order to have a trademark... you just have to trade (or register the mark).

1. You can register any available name for your Ltd at CH and continue to trade under your existing trademark. They don't have to be the same.
2. You can and should proceed to register your trademark.
3. You could/should get a lawyer to send a letter to this company informing them of your prior use of the Trademark and that they will need to choose a different trading name.

This is definitely some assurance on the matter as this lines up with what I’ve been informally told only yesterday.

Its my understanding that it will take up to 4 months to get a trademark at which point I could the send a letter.

I’ll mention this as a plan of action to my solicitor tomorrow. Thank you

 

[obscure]

Its my understanding that it will take up to 4 months to get a trademark at which point I could the send a letter.

No you already have an (unregistered) trademark just by using the mark. Registration makes it easier to take legal action but there is certainly no reason why you should not send the letter now.

 

[KC1]

So spoke to a solicitor and they advised to get a trademark sorted now and either end a letter to them now or once its been registered.

But Im fine to carry on as I am until that point as I've got proof of prior trading well before they registered.

With the additional option to also register a dormant company which I can then change the name of later if Im able to remove theirs.

 

[Mr D]

So spoke to a solicitor and they advised to get a trademark sorted now and either end a letter to them now or once its been registered.

But Im fine to carry on as I am until that point as I've got proof of prior trading well before they registered.

With the additional option to also register a dormant company which I can then change the name of later if Im able to remove theirs.

Removing theirs?
Interesting idea, a new facility at companies house?

 

[KC1]

Removing theirs?
Interesting idea, a new facility at companies house?

Well I say remove but change.

I only need to secure my trading name really as I can register a similar one at companies house. The trademark both unregistered/registered + proof of my work over the last 2 years is apparently enough to stop them causing issues with my trading and secure my own brand.

There is still a very real option to this company being a scam as the director is not based in the UK nor resides here. They're also using a mail forwarding address.

This was the advice given earlier but have I have two more to speak to before concluding.

 

[obscure]

So spoke to a solicitor and they advised to get a trademark sorted now and either end a letter to them now or once its been registered.

You should do it sooner rather than later because the longer it goes on the more they will have invested into the name and the more likely they are to fight. Yes you would win but at a cost. It is better to write as soon as possible.

With the additional option to also register a dormant company which I can then change the name of later if Im able to remove theirs.

You can't remove theirs. As stated previously Ltd Co names and Trademarks are completely different. Just as their registration of the Ltd gives them no right to use the Trademark, your ownership of the trademark gives you no right to the Ltd name and no way to make them change it. Provided they trade under a different name the Ltd company registration is irrelevant.

Obviously you could pay them to change their Ltd Co name but what is the point?

 

[Mr D]

Well I say remove but change.

I only need to secure my trading name really as I can register a similar one at companies house. The trademark both unregistered/registered + proof of my work over the last 2 years is apparently enough to stop them causing issues with my trading and secure my own brand.

There is still a very real option to this company being a scam as the director is not based in the UK nor resides here. They're also using a mail forwarding address.

This was the advice given earlier but have I have two more to speak to before concluding.

Nothing you have said suggests its a scam. Nor does it suggest a way a scam can be run.
You didn't take the name so anyone else coming up with the name could.

You don't have to like the fact someone else beat you to the name. That does not mean its a scam.

 

[Alison Moore]

Personally I'd come up with a similar but new trading name and go from there - one that is available at Companies house and hasn't yet been trademarked. You could trademark your existing name but trademarking is expensive, plus you still wouldn't have the Ltd name at companies house.

 

[DontAsk]

Personally I'd come up with a similar but new trading name and go from there - one that is available at Companies house and hasn't yet been trademarked.

Companies House doesn't issue, nor care about, trading names or trademarks.

You could trademark your existing name but trademarking is expensive, plus you still wouldn't have the Ltd name at companies house.

You don't need "the Ltd name at companies house". You could buy an "off the shelf" company with some random name such as "Wongalonga Ltd".

You can then use any trading name you want subject to the various requirements to display the company details on websites, lettterheads, etc., and subject to the trading name not conflicting with other traders.

 

[Lucan Unlordly]

A bit of a thread hijack here but....many years ago in the early days of the web, I came up with and bought a domain name, went some way to creating the website but didn't go ahead. The domain wasn't renewed and is now available at $2395 dollars!

Grab your trademark as soon as you can!!

 

[KC1]

Nothing you have said suggests its a scam. Nor does it suggest a way a scam can be run.
You didn't take the name so anyone else coming up with the name could.

You don't have to like the fact someone else beat you to the name. That does not mean its a scam.

So there are more details that originally made this look like a scam quite easily. It wasn't until a baseline website with some non demo/default theme went live, did it start to look like just an overlap.

I've gone on the basis now that if it was a scam I would of heard from them already trying to sell me the name for instance.

Personally I'd come up with a similar but new trading name and go from there - one that is available at Companies house and hasn't yet been trademarked. You could trademark your existing name but trademarking is expensive, plus you still wouldn't have the Ltd name at companies house.

So a trademark under my original trading name has been put in today to try secure that.

Im going to most likely put a dormant LTD company with "Companyname Worldwide" as its a sub brand we already use to trade etc. This needs some thought as being a director of a company at this point causes other issues.

Companies House doesn't issue, nor care about, trading names or trademarks.


You don't need "the Ltd name at companies house". You could buy an "off the shelf" company with some random name such as "Wongalonga Ltd".

You can then use any trading name you want subject to the various requirements to display the company details on websites, lettterheads, etc., and subject to the trading name not conflicting with other traders.

I've realised this more and more when speaking to the solicitor today so totally agree. The steps now are to try secure my brand/trading name/trademark to keep that foothold.

They're technically overstepping over my brand due to the timing of when I was setup etc but hopefully I can secure that via the trademark route.

A bit of a thread hijack here but....many years ago in the early days of the web, I came up with and bought a domain name, went some way to creating the website but didn't go ahead. The domain wasn't renewed and is now available at $2395 dollars!

Grab your trademark as soon as you can!!

I've heard of people doing this for serious cash back in the early days ! Mainly around bank names and domains.

Trademark application has been sent today ! Luckily I have the best domains already . Might get a few more to be sure however.

 

[NickGrogan]

They're technically overstepping over my brand due to the timing of when I was setup etc but hopefully I can secure that via the trademark route.

If you are trying to trademark the name as words and they are already using that name, then they could either object to and block your trademark, or since they are using it first they may be able to claim the trademark from you.