Existing sole trader with no trademark

[edwebb]

Hello,

I need a little advice if anyone can help me.

I plan to register a trademark name for my up and coming business, but someone else has just launched a business similar to mine using the same name . We both own different domain extensions, he owns .com I own .co.uk.

My question is, if I get a registered trademark (assuming they don't object) and then get my business up and running, as the other guy has no trademark can I ask him to change his name? At the moment he is just a sole trader, although my understanding is that this doesn't make any difference.

Many thanks for any help in advance.

 

[adamzany]

If the other party has only started using the mark very recently, then provided you get your trademark registration first, you should in theory be able to stop the other party from continuing to use the mark. However, it would depend on the exact circumstances of the case. There are many defences to trade mark infringement. For example, people are allowed to use their own name, provided the use is honest. So for example, if he is called John Smith, he is entitled to use this name as his business name provided he does so honestly.

[email protected]
www.trademarkregistration.org.uk

 

[markwilliamsweb]

Thanks for the reply Adam. I think he has been trading for a while, although I get the impression he is just doing it on the side. The annoying thing is that when I got the domain there was nothing on his domain, so I thought I was good to go. It wasn't until I got my branding done that he put something online, but digging further there are reviews for his service dating back a couple of years.

Do you think it's worth proceeding or should I move on?

Thanks

 

[adamzany]

If he has been trading for a while then he could have common law rights in the unregistered mark under the law of "passing off", which would in theory entitle him to oppose your UK trade mark application. Of course, he may never become aware of your trademark or your business, but it would be safer to adopt a new mark.

[email protected]
www.trademarkregistration.org.uk

 

[markwilliamsweb]

Yeah that is pretty much what I figured, but it's nice to have it clarified.

Thanks for all your advice Adam, much appreciated.

 

[Nord20]

If you do choose a new domain, I would recommend registering all extension (.com, .co.uk, etc) that you possibly can, to stop this happening to you again!