Name taken !!

[Tanc]

Hi Crossguard, thanks for your swift reply. They don't appear to have a trade mark registration (checked the database) and I'm not sure to what extend my business may be confused with theirs. I've never heard of them and I'm assuming they've only heard of me because of a domain name search as the letter they sent me was to my home address which is where my domain is registered, rather than my business address as per my company's registration information.

So I guess the next step is to file for a trade mark registration which they could in theory oppose.

I have no idea how to test whether their business has built up an exclusive reputation through the use of a particular identity. How can I determine whether their business could be damaged by confusion with my own business? We trade under different names, but my business contains one word which is the same as theirs (although they have split it into two words with a space). Our logos look different but are based around the words that comprise our business names.

I am quite happy to change my logo but changing my business name would be a bit of a pain.

 

[VeryMark]

Are you in the same kind of business. How long have you both been operating?

I'd suggest seeking trade mark registration as soon as possible, as this will strengthen your position.

Moreover, if anybody else were to seek trade mark registration before you, this would be likely to instead weaken your position legally.

 

[damo_j]

Hi ive got a similar problem. I sent up a registered company with compaines house called Cheeky Butler, when i set it up i did a lot of checks an there was no company trading under that name. The company got put on hold with the tax office as dormmant, due to family problems but the tax office was imformed this month would the the start of my trading and tax year.

Anyway a company has used the exact name for a website and called it cheeky butler. I spoke to companies house n they said that only my name was registered with them under cheeky butler. the site has just registered a domain name similar to mine. my web page isnt loaded on the web yet but its nearly finished.

i have a logo with the name cheeky butler in a fancy typeface and was using this as my co-oportate indentiy.

my company is already well known around my city and i have a lof of bookings coming up.

Do i have a legal leg to stand on to tell this company not to use my registered trading name. i never trademarked the name, i did try to but the trademark comapny i got in tocuh with said somone tried to trademark cheeky butlers a few years back and cos mine was so simalir they didnt advise me to apply. i just assumed no one esle could set up an exact same comapny with the same name if i had.

I already ahve a web site nearly finished and all the outfits printed so using a different name is going to cost me money and customers.

i know iv got on a bit but wanted to give ll the information i could. if any1 can help me with this i would be most greatfull

 

[Deleted member 13430]

You could have problems depending on which party used the mark - CHEEKY BUTLER - first or registered it first.

In your post there seems to three Cheeky Butler firms - you CB1, the company which registered the name as domain first - CB2 and the trader who owns a registered trade mark for the mark - CB3.

You seem to have set up a company under the name, but it remained doormant for a while and you never traded until recently. A company name registration in itself gives you no trade mark rights whatsoever. Trade Mark rights are established in the UK in two ways (a) based on use/trading activity under the name/mark (common law passing off rights) and (b) via trade mark registration (statutory rights).

You may have a problem, as the CB2 may have actually traded under the name before you and thus has the prior common law rights and it seems that CB3 registered the brand first. I am assuming CB1, 2 and 3 all trade in the same services/goods. Who has the prior rights between CB2 and CB3 is open to question, depends who registered or used the mark first whatever is the earliest.

At least from an online presence you seemed to have used the mark last out of CB1, CB2 and CB3 and have never registered the brand and thus have no statutory rights. You state you are well known in your town presumably via 'off line' use, did this use occur before CB2 and CB3 used and registered the marks? If so you may be able to trump them. Common law passing off rights can be geographically limited so, one or more of the parties may have built up concurrent common law rights in different parts of the country. The worrying thing for you would be if CB3 registered the mark before you used the mark at all, as a UK Trade Mark Registration would cover the whole of the UK including your home town and CB3 would have the prior rights in your home town even if he has never traded there.

Thus you need to supply more information to get an accurate answer but on the face it appears that CB2 and/or CB3 may have the better rights, even though you registered the name first as a company name, the problem is you delayed use of the mark and never registered the mark as a trade mark. Golden rule register as a trade mark as early as possible.

The link below may help:-

http://www.pinsentmasons.com/Default.aspx?page=1205

If need detailed advise consult a trade mark attorney.

Hope that helps.

 

[damo_j]

sorry my fault im rubbish at explaining things, the name isnt trade marked. somone tired to years back but it got refused by the trade mark place. i found that out when i applied for a trademark.

The issues between me who registered the company name with companies house, and an online site, tradeding under a diff name, using the cheeky butler as there web site name n domain.

I got in touch with the copmpany n they bascialy said if i trade under the company name there going to take legal action agasint me as there saying under some sort of web or domain law she owns that name for tradeing.
they was using a diff company name and have only just set up a web page using the name i registered, but they have a client base from there other company n there saying cos they have a larger client based aswell i dont stand a chance if takend to court

Now when i applied for the name, there was no web site using it, i applied for a domain name but .com and .co.uk had been bought but where not being used. i bought .net and started to set up the web page. its not set up online yet, but i have been advertising via flyers, business cards, word of mouth etc around the east midlands.

i also have a logo using the cheeky butler name.

Think is i set all this up not realying knowing a great deal about setting up companys and the ins and outs.

end of the day i set the company up to try and earn some moeny n realy wasnt expecting all off this. If they have more right over the name then i will have to re think my name, but just pissed me off how there main piont was cos they bought the domian name ages ago but never used it and are only using it now after the formation of my company, that they have more rights over it.

i might be in the wrong n them in the right i dont realy know the ins and outs of legal stuff with all this

 

[Deleted member 13430]

Assuming no one has registered rights to the mark or similar marks, then who has the prior rights will come down to first use and the extent of that use. I would argue the use a domain name does consitute trade mark use, but if the other site is not branded under Cheeky Butler and the domain which incorporates that name is not the main domain name for the site, then you could argue the use is low level and thus there is not goodwill in the mark. Really all depends on first use and the extent of use by either party.

You state you tried to register the mark as a trade mark, but presumably that failed, why? Was it becuase someone had prior rights? If so you have a problem possibly.

 

[Staffydog]

Interesting, I wonder if someone could tell me if the same applies to me. I purchased a domain name intending to trade as such, before I did this I checked with Co. House and there was nothing similar registered (I'm not sure if we'll go LTD with it yet). We started work on the website, but a little later found out that someone is using the exact same name already, on a big auction site.The user name is identical to our URL, say for EG. thetyreshop.co.uk, we sell identical items, they have been trading on this auction site for a number of years, so would they be able to stop me using same as my business name/URL? This would purely be an online presence with no shopfront at present.

As far as I'm aware there is no RTM for the name.

Any pointers would be much appreciated.

Thanks

Sean

 

[Deleted member 13430]

Seems their use began before you. The question then is whether their use is sufficient to establish common law rights to the brand. You suggest they are using the name simply as a user name and not so much as a brand. Whether that use is sufficient to give them common law rights to the brand would depend on their sales under the name and whether people would identify their user name as a brand as such. If the name is identified as a 'badge of origin' of them and see as a brand as such and their use predates yours you may have problems.

 

[benmurphy247]

I've read thought this thread and it certainly makes alot of things clear. Thankyou.

I have been delaying registering my trading name as a trademark, and registering the company under the same name for as long as possible. Alot of other people may say the same as me that the money is needed elsewhere, as frankly, registering anything seems to be a pricey job. Too pricey to ease the blow for start-ups in my opinion.

I was aware of some protection if you have been trading under a name for a period, but the bottom line seems to be to register your trademark ASAP. One thing I am weary of, including the letters TM with your logo or name surely tells everybody that you are yet to register, and therefore informs eveyone that they have a chance to do it before you? Surely better not to put any symbols or letters anywhere until you have it done and dusted?

B

 

[Deleted member 13430]

Ben,

I think a realistic view on registering a trade mark is that you should do it if you can afford it. It is a very desirable thing to achieve and it is protecting one of the most important assets of your business, your good name.

However, its a balancing act. For start ups especially as you say there are often other things on which you can spend money on. Also you will have some protection for a brand via use under the common law tort of passing off. However, if you have the money to register your brand I strongly recommend it is registered.

On the TM symbol issue, I am not sure that someone would think that means the mark is definitely not registered. The R in a circle can only be used in relation to registered marks and it is a criminal offence to use this R symbol when a mark is not registered. However, if your mark is on the borderline of distinctiveness and you need to educate the public the mark is indeed a brand name, I think there is a great benefit from using the TM symbol just to make it clear you are claiming some rights in the brand, albeit common law rights.

Hope that helps. I am a trade mark attorney so you might say I am pro-registration, but I think most people would accept it is a desirable property right.

Anyway if anyone has any question on trade marks happy to provide some free initial advice, just drop me a pm.

All the best.

 

[a varilone]

you may want to consider registering it as a trademark too including any logo!

al varilone solicitor

Hi all,

Cannot believe what procrastination can do to one's business!
I've been meaning to register with companies house for some time but someone has recently taken the name I wanted. I would like to think it a coincidence but I am a little paranoid I'm afraid.

Have just registered a new but similar name to the one already registered and I hope I will get it passed through companies house.

My one is 'Loop Cards Publishing Limited' their one is 'Loop Cards Limited'

Fingers crossed.

I've also had to register my trading name with the National Business Registrar because I've been using it since last year and I've already told Inland Revenue that this is my trading name (Loop Card Games). So if anyone decides to sue, I'm ready :x

 

[Deleted member 13430]

Just to clarify again and although its been made clear on this thread to date, a registration on the National Business Register gives you no additional legal rights beyond common law rights. NBR is a commercial register. Common law rights are established simply by use, you do not have to register them with the NBR.

You register your marks at the UKIPO, Community Trade Marks Office or other foreign IP Register.