Company Name & Trademark dispute

[Merriwinkle]

Hello, I am writing on behalf of a family member (FM) and looking for advice

My FM set up a UK Ltd company and trademarked the name and logo of their business. A company in USA with a similar name and similar product is opposing my FM’s trademark and the IPO have indicated they are likely to win their case. My FM is a 20 year old student, the opposition company is a massive multi-million dollar business. We are worried that if opposition win and impose costs on my FM, which he will be unable to pay, this could affect his credit score, ability to get a loan or future investment in his company.

What I would like to know is this; if my FM withdraws his trademark registration but remains a ltd company, can he still use the name the ‘opposition’ are disputing?

 

[fisicx]

Opposition just means they object to the registration. There are no costs. It just means your FM will lose their application fee.

Have a read of this:

Trade marks: standard opposition

Opposition is the legal procedure that allows you to try to stop a published trade mark going on to become registered.

www.gov.uk

 

[Paul Kelly ICHYB]

The opposition is to registering the name, not you using it in the UK, although that might follow.

The limited company is probably safe, but depends on what the FM trades as and in what sector (is it competing).

 

[fisicx]

The opposition is to registering the name, not you using it in the UK, although that might follow.

If the name and product is similar they will almost certainly complain with a solicitors letter. And that's when the costs can impact the FM.

Far simpler to just change the name to something else.

 

[Trademarkroom Ltd]

The opposition relates only to the trade mark application. Your FM can withdraw the application to limit their exposure. However, if they continue to use the name, there is the risk of further legal proceedings for trade mark infringement that may be an issue. Please feel free to get in touch at [email protected] or 02380000190 to chat through it further. Kind regards Ellis