Own name defence

[Busy291]

Hi everyone. I am a very small entity and I started a trademark application for my company name back in September. However, a very big company has come back saying I must stop using the name altogether or they will lodge a formal objection against application. Thing is, their trademark is for a product that is spelled differently and my trademark is a word, followed by my surname. It is in the same class of products (cosmetics) but it’s not the same product (I.e. I am soap and they are perfume). My solicitors tried to engage with them and say that it is my name but they’ve come back saying they still want mi to sign their letter. Now I’ve done a bit of research into the own name defense but I wanted to find out how likely it would be I’d be successful. I do not have the funds for a bitter legal dispute but I also do not have the funds to start my business from scratch. What is really getting mi is the spelling and pronunciation is completely different.

 

[ethical PR]

How long have you been trading? Why are you so wedded to this brand name?

In the vast majority of cases it is cheaper and easier just to change the brand name you want to trademark.

 

[Busy291]

Thank you for your reply. I have been going since October 2018. Not long but I have invested a lot of our savings to make packaging and products which will all have to be turfed and remade and branded. This is in the region of a few thousand pounds so to start again it would have a big cost. Not to mention my domain (which I've just renewed). I wouldn't say I'm wedded to the name but it is my surname and every single product name has my surname (the branding being that everything is part of our family). Can they really stop mi from using my own surname?

 

[Mr D]

Thank you for your reply. I have been going since October 2018. Not long but I have invested a lot of our savings to make packaging and products which will all have to be turfed and remade and branded. This is in the region of a few thousand pounds so to start again it would have a big cost. Not to mention my domain (which I've just renewed). I wouldn't say I'm wedded to the name but it is my surname and every single product name has my surname (the branding being that everything is part of our family). Can they really stop mi from using my own surname?

You checked out the name before you started spending money on packaging and products?

And yes, you can be stopped from using your own surname.

Question is, how much do you want to spend to keep the name?

 

[Busy291]

I didn't check out the name before spending on packaging but when myself and my solicitors checked the register there was nothing similar. As mentioned, their trademark is spelled differently to my surname so it wouldn't have yielded any results on the search.

Thing is, I'd happily change my business name but I still want to use my surname, I think this is what has gotten to me. It feels like they want to own my name which isn't a common surname as it is.

What would happen if I let them officially lodge their opposition?

 

[The Byre]

1. Large cosmetics companies are usually part of an even larger group and so they can draw on the legal resources of the entire group - they will just push your case further and further up the legal ladder.

2. Name is everything. You can call it Nivoa, Nivnoah, NivNiv, or Veaniv and Beiersdorf will still hand that case straight to their in-house legal team and they just keep going until you run out of money and go away.

3. Name is everything. The slightest encroachment on a name sets a precedent for future encroachments - so the owners of a name must defend that name to the utmost extent - otherwise, they may be subject to a creeping loss of title.

4. Name is everything and creating a brand can cost millions. Cipriani is a relatively unusual name - but the name is branded by Guinness for 'Hotel Cipriani' in Venice, so when a Guiseppi Cipriani wanted to open a restaurant called Cipriani London, the court found that the trademark was not being used by his company in accordance with “honest practices in industrial or commercial matters”; indeed the court thought the use amounted to unfair competition with Hotel Cipriani. In addition, the London restaurant was being run by his Ltd. Company and not Guiseppe personally.

5. You got off to a bad start as far as branding and doing the basics are concerned. It is better to find out now and regroup than to find out when a rebrand can cost so much more!

 

[Deleted member 59730]

If you were born Fred Rolls-Royce you would have great difficulty using your name as a business.

 

[Newchodge]

If your name was MacDonald do you think you could use it for a burger business?

 

[Busy291]

Fair point, I understand those arguments but what if your name was MaucDonald? or Roulls-Royce? And again their trademark is for a product, their company name is (ironically) their own name. Would it not fall under honest commercial practice since I truly just wanted to use my own name? That being said, does that mean I can not use even part of my name then? So using McDonald as an example, could he use MacMan?

 

[alan1302]

Fair point, I understand those arguments but what if your name was MaucDonald? or Roulls-Royce? And again their trademark is for a product, their company name is (ironically) their own name. Would it not fall under honest commercial practice since I truly just wanted to use my own name? That being said, does that mean I can not use even part of my name then? So using McDonald as an example, could he use MacMan?

Then the name and sound of the name are different so you could use that

 

[NickGrogan]

Please read this again.

Name is everything. You can call it Nivoa, Nivnoah, NivNiv, or Veaniv and Beiersdorf will still hand that case straight to their in-house legal team and they just keep going until you run out of money and go away.

And the rest of the post.

You're focusing on whether it's "fair" or "right", but that doesn't matter, what matters is you can't win.

 

[Newchodge]

Fair point, I understand those arguments but what if your name was MaucDonald? or Roulls-Royce? And again their trademark is for a product, their company name is (ironically) their own name. Would it not fall under honest commercial practice since I truly just wanted to use my own name? That being said, does that mean I can not use even part of my name then? So using McDonald as an example, could he use MacMan?

McDonald and MacDonald would be seen by a customer as the same. There is no way MacMan would be seen as the same. What matters is the trademark registration. If your name has been registered, with the same or indistinguishable spelling, you cannot use it in the same area.

 

[billmccallum1957]

Generalisations won't help you in any way, what exactly your name is and the competitors name are the important issues, the trademark and classifications covered should inform you as to what can be used.

But if you didn't check out trademarks before you branded, you only have one person to blame.

 

[Busy291]

The funny thing is I did do searches and I did look - and my attorneys searched and said their was a good chance it would go through. Their name and mine are spelled and pronounced differently. Our products are different, our brands are different.

 

[The Byre]

my attorneys searched and said their was a good chance it would go through.

Go through what? The courts? The IPO? What exactly?

I know one thing that it will go through and that is tens of thousands of pounds of YOUR money - and that is even if you win! Then they appeal and any judgement is set aside, pending that appeal and you have to find even more money.

but what if your name was MaucDonald? or Roulls-Royce?

Then (assuming your trading in the same category) you definitely would lose!

The essence of trademark registration law is "First come - first served!" The courts have to find very compelling reasons to not adhere to that principle and find an overriding doctrine that would allow them to find otherwise.

 

[Newchodge]

my attorneys searched and said their was a good chance it would go through.

There are no attorneys in the UK.

 

[obscure]

Now I’ve done a bit of research into the own name defense but I wanted to find out how likely it would be I’d be successful.

There is no own name defence. It is your name but that doesn't mean you have any legal right to use it for other things.

When it comes to business the law (trademark law) gives rights to those who use a name first (and who register the trademark). The purpose of trademark law is to avoid confusion for customers. That means avoiding duplicates and names that are similar enough that they may be confused. If this company believes your variant is similar enough to cause confusion then they will take action which will result in an expensive legal battle that will cost way more than rebranding your business.

 

[Chris Ashdown]

Could you add a description to the offending name smiths of oxford or smiths home made soap, or frederick smith soaps, try it with them and see it they would accept it before you bother with lawyers etc, There are plenty of A1 taxi firms all around the UK. Also I believe sometimes its just the brand logo thats trademarked and not the company name

 

[Mr D]

The funny thing is I did do searches and I did look - and my attorneys searched and said their was a good chance it would go through. Their name and mine are spelled and pronounced differently. Our products are different, our brands are different.

Then take it up with your attorneys for doing a poor job.

 

[MOIC]

There are no attorneys in the UK.

Patent Attorneys are in the UK!

 

[fisicx]

If they don't want you to use you name they will just keep pushing until you run out of money.

If there is even a whiff of infringement they will pursue you. Like they did here:

https://www.telegraph.co.uk/news/uk...cafe-of-copyright-infringement-over-sign.html

The cafe lost and is now closed

 

[Mr D]

Patent Attorneys are in the UK!

We got rid of the patent lawyers?

 

[MOIC]

We got rid of the patent lawyers?

In the trademark and patent field, they are actually known as Patent Attorneys.

 

[Newchodge]

Patent Attorneys are in the UK!

Sorry, you are right. But they are not, necessarily, lawyers.

 

[MOIC]

Sorry, you are right. But they are not, necessarily, lawyers.

Who said they were?

The OP has mentioned she has engaged with solicitors as well as attorneys.

When I apply for a trade mark, I use a patent attorney. If I receive correspondence from a solicitor with a potential litigation case, I’ll use a solicitor as well as a barrister.

The OP has not stated that the attorney she used for advice on registering the trade mark was in fact a lawyer.

A patent attorney does not need the qualifications of a solicitor, or a lawyer, as they only deal in the field of trade marks, copyright, patents etc etc.

We are side tracking from the thread . . .

 

[surreyaces]

There are no attorneys in the UK.

Actually, there are. Trade mark attorneys have a Royal Charter.