Demand to withdraw Trademark Application - Advice Needed

[elite73]

I run a dating site for casual adults and in October 2009 registered an application for a trademark in the UK.

The site name is made up of two words connected together to make one, for examples sake lets call it elitedating and this is how the trademark application registrar recorded the application mark, as one single word.

I have now received a demand from a established French company in an unrelated modelling/fashion industry who have the first part of my name 'elite' trademarked in different classes to my own application. In their legal letter they have separated my use of mark, so it appears in their text as 'elite dating' meaning it now forms two words, not one and take issue with the use of the first word 'elite.' in my TM application.

They demand that I withdraw the application and C&D in writing to use the sign 'elite dating' in any shape or form. They gave me a deadline of dec 31'st 2009 to comply, I only received the recorded letter today.

The IPO did a search at time of application and it came back clean so they accepted it, its status is currently pending registration. Now this company have essentially split my mark in two in their letter so it forms two words in order to make a complaint but presumably 'elite dating' is different to 'elitedating' at least when it comes around to trademarks?

They are asking me to withdraw my application else the letter goes on to say how they reserve the right to pursue and protect prior rights etc.

A quick search tells me that anyone can object to a trademark application by filing with the IPO directly but I suspect they are trying to lean on me directly to avoid any costs and hope I will just fold.

I never once associated this company with my venture or thought of them and in no way pass off or can be seen to cause branding confusion, the only similarities are in the use of the first five letters of the name.

My TM application is also clearly for one word, 'elitedating' The other company have taken it upon themselves to split it into two words which I believe is a aggressive manipulation to bolster their letter.

They also enclosed several copies of cases where they had been successful in gaining judgements against others, mainly domain squatters and the like.

At this stage how might I respond, surely this company should just object to the IPO if they feel they have basis to prevent my registration and they would inform me of an objection. I feel the claim is groundless but I do not have an IP solicitor.

What would be good advice right now and what can this company actually do to me beyond objecting to my application. Should I just write back saying they should object through the proper channels if they feel inclined to do so? Any suggestions please.

Thanks
Chris

 

[VeryMark]

The fact that your name shows the two words as one may not help you but it is not possible to be certain without knowing the actual facts (which you should not post on a public forum such as this).

If they wish to pursue the matter further, they would have to employ a UK trade mark attorney or solicitor. You could therefore wait and put them to the test - but whether you should be conciliatory or not I cannot say without knowing the facts in more detail - the fact that they are registered in a different class or classes is not determinative as it is the similarity of good/services and the likelihood of confusion which matters.

Apart from objecting to your trade mark application, they could separately commence court proceedings for trade mark infringement/passing off to stop your actual use of the name concerned. Again, whether this a real risk or not I cannot say without knowing the real facts.

 

[elite73]

Thanks for the reply - they are in a different industry and have marks in other classes to mine. My proposed mark is one word and does use part of their mark in the word, which is also a common use term.

However I am confused as to why they would threaten me when all I have done is apply for the trademark, surely if they feel it is encroaching they can just file an objection and go through the correct channels.

If they followed with legal action surely that is all they could do anyway, oppose the application but perhaps they don't want to as they know it will cost them? So they try and scare me instead maybe into folding and declaring in writing to not use the mark?

Regards

Chris

 

[VeryMark]

It helps that they are in a different industry but this alone is not determinative - the maker of Viagra was able to stop a "Viagrene" energy drink becasue of the confusing similarity.

The reason that you have received a 'cease and desist' letter rather than the matter simply being pursued through formal channels is that it may be cheaper and quicker to resolve the matter informally rather than becoming involved in a possibly expensive and time consuming trade mark opposition - and it provides the possibility of testing your resolve and the perceived strength of your position as a first step also.

 

[alistaird]

Hello
If they have goodwill in the UK they may be able to pursue you for passing off now or in the future though they would have to produce evidence of confusion.
We are solicitors and are happy to assist.

 

[VeryMark]

If they have trade mark registration covering the UK, action for trade mark infringement is likely to be more powerful than one for passing off based on goodwill as passing off actions tend to require greater evidence and have a greater hurdle to surmount, and thus tend to be more expensive.

..... if you have valid trade mark registration and someone uses the exact name or symbol you have registered for the same goods or services for which you have registered, then they are infringing and can be potentially stopped even though there is no confusion nor likely to be.

For example, if I register the name KINGFISHER for household fabrics and textiles intending to use it on curtains for sale in the West Country, and someone then starts selling KINGFISHER table cloths in Scotland, they are infringing even if there is no confusion nor likely to be.

Even if the names are only similar, e.g. KINGFISHER and KINGFISCHER, you still do not need evidence of confusion, you only have to show that confusion is likely with what you have registered, not with what you do .....

..... so a UK trade mark registration which covers the whole country, and can be wider than your actual business, can be quite powerful.

 

[lovemartinez35]

I'm really interested about it. A dating site, how can you start something like that. A site something like that. Can you teach me how.

_________

Love - trademark application