Friend stole our business name

[Brasso]

Hi

I need some advice regarding a friend who is using my business name. We are call ourselves Rake Mark and we are a limited company called Rake Mark Solutions Limited. A friend of ours was having coffee in our lounge and asked how we came by the name and so I told her.

A few years on and she has started a child care business (not a registered charity as she claims) to look after disabled children during the school holidays and called is Rakemark Respite.

We have trade marked the name but now we don't know what we should do next. Both businesses are in the same area and press stories have started to pop up for Rakemark Respite.

Any advice would be appreciated.

Thanks
Phil

 

[deniser]

How can a web design company be confused with respite care for the disabled?

Is your trademark not registered just for the web design field?

 

[Brasso]

How can a web design company be confused with respite care for the disabled?

Is your trademark not registered just for the web design field?

Quote from local news story...
Rakemark is an Ofsted registered holiday club and will operate on Monday, Wednesday and Friday during summer holidays.

This is not correct, Rake Mark is a website design company. When we do marketing and attempt to get our name in the local press people may become confused. At the very least it damages our brand, no? Am I over reacting? I am after genuine advice from the forum.

 

[lyndonio]

Get a grip you are over reacting your friend is not competing with you and may have called her business this out of respect you may have inspired her. Maybe ask her before coming on a forum that may be easier...

 

[Brasso]

Get a grip you are over reacting your friend is not competing with you and may have called her business this out of respect you may have inspired her. Maybe ask her before coming on a forum that may be easier...

So, given the quote I have previously posted from the local press, as a PR and Marketing expert if one of your clients came to you with something similar to this you would advise them that this is a repsect thing and that their is no confusion to the brand we have built over the last five years and that our local marketing efforts are not being effected.

Thank you

 

[Brasso]

Thank you to those who have replied.

Advice from a PR stand point is appreciated, but I have posted this in the legal section and I am also interested in advice from a legal point of view. Of course asking them to stop using our name is step 1. This step has been taken.

So from a legal stand point, what do we do next?

Thank you in advance

 

[VeryMark]

If you have registered your name as a trade mark and you have a reputation and somebody else is trading under the same or similar name in a such a way as to take unfair advantage or be detrimental to that reputation or the character of your name, then they are guilty of infringement even though there may be no direct likelihood of confusion.

(Section 10(3) of the Trade Marks Act 1994)

For example, Every Ready batteries sued Every Ready condoms for trade mark infringement but lost, whereas the Visa credit card company sued Visa condoms and won - in the first case, the words "Every Ready" have a natural meaning of their own which is what the judge thought would be called to mind first and foremost, whereas in the second case the judge thought that it would be the credit card which would be called to mind as the word "Visa" does not have an ordinary meaning in relation to condoms.

If you email me (see link below) and send me the details I can advise you further.

 

[Brasso]

A few years on and she has started a child care business (not a registered charity as she claims)

Having spoken to the Treasurer for this business tonight he has assured me that registered charity status has been applied for some time ago. I stand corrected. I was, however, unable to find any information regarding this today when I searched online and spoke on the phone to the charity commission.

I post this for fairness and clarity

 

[deniser]

Your trademark has only recently been registered and it is only registered for Class 42 (website design etc).

This was the question I asked above.

The experts will be along shortly but I thought that a trademark only protected you in the category it is registered in.

I have sympathy though; it must be very irritating.

 

[VeryMark]

No, it doesn't only protect you in the class you registered in - see my post above.

 

[deniser]

No, it doesn't only protect you in the class you registered in - see my post above.

I couldn't see that in your above post but thanks for clarifying.

 

[VeryMark]

Well, yes, even at minimum without a reputation, you get protection against infringement for any use of the same or similar trade mark for the same or similar goods or services where there is a likelihood of confusion, regardless of class.

So for example, a trade mark registration for the name BLOGGO for electronic books in Class might be infringed by the use of the same or similar name for e.g. paper books (Class 16) or online publications (Class 41).

 

[deniser]

Well, yes, even at minimum without a reputation, you get protection against infringement for any use of the same or similar trade mark for the same or similar goods or services where there is a likelihood of confusion, regardless of class.

So for example, a trade mark registration for the name BLOGGO for electronic books in Class might be infringed by the use of the same or similar name for e.g. paper books (Class 16) or online publications (Class 41).

Now I'm confused. You refer to use for the same or similar class of goods which was my point. The OP is in web design and the offender is a charity ie. completely different goods/services.

 

[jules12345]

Now I'm confused. You refer to use for the same or similar class of goods which was my point. The OP is in web design and the offender is a charity ie. completely different goods/services.

Visa credit card services - visa condoms different services and class are they not ?

The answer to the ops query is in the VM's earlier post.

Regards
Jules

 

[deniser]

Visa credit card services - visa condoms different services and class are they not ?

The answer to the ops query is in the VM's earlier post.

Regards
Jules

But there seems to be a distinction between a business with a reputation such as Visa and one which is not such a well known name. Or not?

 

[jules12345]

But there seems to be a distinction between a business with a reputation such as Visa and one which is not such a well known name. Or not?

Of course and that is the whole point...!

Regards
Jules

 

[deniser]

Of course and that is the whole point...!

Regards
Jules

So what is the answer for the OP? Does his trademark protect him against the charity or not? I would suggest he is not a household name.

 

[Dawg]

Lets look at the core.

Two very similar but not identical names.
Two very different businesses.

Web design company has a pop at kiddies charity for alleged abuse of name, harming webby PR etc etc.

That's going to get a shed load of sympathetic PR in your local press isn't it?

"Local web site company bullies kiddies charity into expensive reprint and rebrand. No holidays for kiddies this year."

Whatever the rights and wrongs you are going to be seen as wrong. Move on, and hope nobody has noticed.

 

[paulears]

If you look at the Companies House Website - there are always companies with the same or very similar titles. As long as one doesn't attempt to pass itself off as the other, I don't think you can do very much.

For what it's worth Rake Mark Ltd and Rakemark Respite have very different web presences. I really cannot imagine anybody getting them mixed up!

 

[bizz whizz kid]

hi i am just new to the forum i was actually seeking advice for copyrighting an idea of mine but i found yours instead,i have heard of things like this before and i was sick to death of thinking people were my friends sitting telling them this and that,and the nxt thing they are away and stole it,geezo. u probably would have felt better if they had just stole your life savings ne way for wot it is worth u should be clever...u don't have to do this but this i wot i would do..but .. first and fore most if that was a bad turn towards u then that will come back to them,but what i would do is turn this to my advantage,even if it meant being the best of friends with said person and actually using the fact that they are also tryn to get publicilty so u should be jumpin on ther band wagon and also getting it.yous are completley diffrent business's so yous are no fighting for business or competing you's could have way much more contacts 2gether and bye the way u have probably impressed them so much that they want to be like yous so take that as a compliment and personally any one who gives time to help vunerable peolpe wouldn't be capable of intentionally doing a bad turn...hope this helps a bit...x al pop on ur web page later...x

 

[The Resolver]

For example, Every Ready batteries sued Every Ready condoms for trade mark infringement but lost, whereas the Visa credit card company sued Visa condoms and won - in the first case, the words "Every Ready" have a natural meaning of their own which is what the judge thought would be called to mind first and foremost, whereas in the second case the judge thought that it would be the credit card which would be called to mind as the word "Visa" does not have an ordinary meaning in relation to condoms.

If you email me (see link below) and send me the details I can advise you further.

Just looked up the Visa case which is here. (great title to the article) Worth a read to explain what VM is saying.

Philip - is it true that it was also argued that Visa credit cards should be the only Visas used to sc**w people with the result at the end of the month?

 

[jules12345]

But there seems to be a distinction between a business with a reputation such as Visa and one which is not such a well known name. Or not?

There most certainly is a distinction in regards to the potential offender being a charity as opposed to a condom company.

You have heard of moral rights which would be in line with trademark usage and/or a copyright infringment potentiality, and in line with reputation. The fact that you may use your Visa card to purchase condoms however is irrelevant.

Imgagine in a world as many would see 'gone mad' where people were encouraging heterosexual sex as opposed to homosexual sex, in that world you had a heterosexual condom company called sleep easy - then a homosexual condom company called themselves sleepeasy also, of course you would claim that the reputation to promote heterosexual sex was being negated, is it your reputation without one having to consider morality ?

The two are intrinsically linked in some regards.

Regards
Jules

 

[jules12345]

There most certainly is a distinction in regards to the potential offender being a charity as opposed to a condom company.

You have heard of moral rights which would be in line with trademark usage and/or a copyright infringment potentiality, and in line with reputation. The fact that you may use your Visa card to purchase condoms however is irrelevant.

Imgagine in a world as many would see 'gone mad' where people were encouraging heterosexual sex as opposed to homosexual sex, in that world you had a heterosexual condom company called sleep easy - then a homosexual condom company called themselves sleepeasy also, of course you would claim that the reputation to promote heterosexual sex was being negated, is it your reputation without one having to consider morality ?

The two are intrinsically linked in some regards.

Regards
Jules

Have you heard of the old saying divide and conquer ? That is what the courts attempt to stop from the enemy doing else chaos would ensue and religion would rule the roost for eg.

Regards
Jules

 

[Dawg]

Have you heard of the old saying divide and conquer ? That is what the courts attempt to stop from the enemy doing else chaos would ensue and religion would rule the roost for eg.

Regards
Jules

Have you been toking on that there whiffyskunk?
What enemy? What chaos will ensue, when? And what is this 'eg' you talk of?
(Apart from the slightly strange idea that there are different condoms for gays and for straights, and the alleged differences are a question of reputation and morality.)

 

[jules12345]

Have you been toking on that there whiffyskunk?
What enemy? What chaos will ensue, when? And what is this 'eg' you talk of?
(Apart from the slightly strange idea that there are different condoms for gays and for straights, and the alleged differences are a question of reputation and morality.)

Morality like law (comes from philosophical thoght) is a philosophical construct...higher than religion. creativity is of the highest level and as such only the highest disciplines are able to determine laws and rights, and thus moral rights.

Regards
Jules

 

[Dawg]

A simple yes would have done.

 

[VeryMark]

If you have trade mark registration with a reputation (which doesn't mean you have to be well known), you can sue successfully in e.g. a Visa-type case (see my earlier post) - and the fact that the other party may be a charity is not directly relevant.

If you have trade mark registration without a reputation, then you can still sue successfully if the same name/logo and goods/services are involved or there is a likelihood of confusion - regardless of the trade mark class(es) involved.