Identical Business Name

[chrisd09]

Hi, I've been looking for a new business name online and found the perfect one.

Unfortunately someone has the same name, with similar products and the only difference is that they're a distributor and I'll be a retailer.

I've got all the domain names for it i.e name.com and name.co.uk and they have thename.com thename.co.uk.
I chose the name and then did a search for the domain names. When both .com and .co.uk were free I "assumed" that no one had the name otherwise they surely would've registered these names seeing as there is no play with words, additional words / letters etc.

There is also no trademark registered for it either online but this company is registered as "the name ltd".

What can I / they do if we push forward with this? Customers cannot get the companies confused because any end user going to their site can't purchase from them and anyone coming to my site obviously will be buying at SRP and not at the distributor pricing that they sell at.
I'll also have a whole different range of products as well and brands but they fall in the same category.

Nowadays it's so hard to get domain names without adding "the" or adding a hyphen to the name so this at the time did seem too good to be true but is what i'd consider the ideal name and perfect matching web addresses.

Thanks in advance
Chris

 

[mahutchinson]

I would simply forget it and start again. Using a near identical name when you are already aware of the existing name is asking for trouble.

 

[saxondale]

I`m sure if the name had orange (or I - something) or even Virgin in it you`d soon find out

 

[littleladybird]

I have a similar problem except I am the 'the' guy.
We registered a domain name as 'thesoandso.co.uk' earlier this year and since then have basically built the website, are in the process of setting up a company (outside UK) and have got all our marketing materials. A couple of days ago we received an email from soandso.co.uk saying they owned this and soandso Ltd in the UK and we were in breach and had to change our branding. They do not have the .com.

We are in similar niches but offering different services. Our logos are different, our websites are very different but we do both operate in a similar field and similar area. I do not see there could be much confusion as someone landing on our site instead of theirs cannot book though us as they could through them.

We presume they are claiming passing off as they do not have a trademark. We have tried to offer a solution by saying we will put a disclaimer on our site and give them free prominent advertising but whilst initially they said they would think about it, now they say no.

I do feel it is a case of the big boy trying to bully us and I know this company have done similar to another last year, threatening legal action, being nasty and unreasonable....

We do not want to have to rebrand as our domain and website fit in well with our other business interests and we have already started our marketing and building up our reputation and brand in the area.

 

[Astaroth]

Customers cannot get the companies confused because any end user going to their site can't purchase from them

How does that stop people from getting confused or thinking that they are one and the same company? There are plenty of organisations that have both wholesale and retail sales operations and some do host these under different websites.

Ultimately you know they exist, you know you have a good chance of running into problems. Down to you to decide if its worth a punt or if you should start looking for new domain.

 

[interestedinip]

hi there. the domain names (and who does/doesnt own them) are not always the key issue. what is important is whether the company complaining owns a trade mark and/or whether it has a reputation under the name.

depending a little bit how unusual the name is, the company that owns the trade mark or has the reputation can stop other companies using the same or similar name in the same or related sector. that can include using the domain name.

for example Lloyds Bank own the trade mark LLOYDS for banking services and have a reputation in this sector so will be able to stop someone else using the same or similar brand /domain name in this sector. they can not stop eg people in the insurance (Lloyds of London) or retail chemist sector (Lloyds Pharmacy).

applying this to the scenarios here, it does sound like there is a problem for Chrisd09 if the other company has been around for a while and has any kind of reputation. there may be a distinction in being distributor/retailer but as Astaroth says it is often the case that companies do both and certainly the customers might think the distributor has branched out.

prospects may be better for little ladybird as simply owning a domain name and company name does not in itself give rights to stop others. however it looks like the name is used as a brand for the website and so the other company may have a reputation under the name to enable them to complain. the fact that you are in similar niches rings alarm bells. it does not always help much that the logos/websites look different as the court will consider the average customer not an expert in the trade. having made a significant investment in the brand i would recommend taking some advice for a solicitor which specialises in IP. you are right not to give in too easily and it is expensive and risky to bring a Passing-Off action.

that said if you are in a weak position it is best to find out and change sooner rather than to find yourself restricted in how you develop the brand further down the line.

hope this is helpful.

 

[JoTheEntreprenette]

Chris,

I know how you feel, it has happen to me. At the time, I thought I could not go any further with that business idea as I really wanted that name.

Thankfully, I went ahead with the business idea with a different name and in hindsight, it has made no difference that I didn't have the name I wanted.

Stick with your idea and go for it!!

Regards

Jo

 

[VeryMark]

If a company has reputation and goodwill in a name or getup and somebody else uses the same or similar name for the same or a related business in the same territory, then you can sue for passing off if you can show that a connection is being made in a way which will damage your business.

This is a harder test than trade mark infringement, but still actionable ....... with a registered trade mark you don't even have to show a likelihood of confusion if the names are the same and their business is covered by your registration.