Passing Off between Canada and UK?

[Diggerboy]

Hi folks,

I'm in the process of starting a new business in England (I live here), and I'm checking the following potential legal issue. The names below are for demonstration purposes only.

Our proposed name is "Red Store" and will be a UK limited company. (Red Store Ltd)

We have discovered a business operating in Ontario, Canada called "A1 Red Store"

Our businesses provide very similar services to our local customers (theirs: Ontario and ours: Manchester). It's almost inconceivable that we would be in competition.

Our only motive is that we thought we had an original name that we liked, and don't wish to cause them or ourselves problems.

I know there are issues of goodwill, confusion and damage, but perhaps someone has a quick answer based on experience or even the difficulty of them bringing a claim in Canada?

Thanks in advance!

 

[logicfusion]

Do they have a registered trademark in the UK?
Have they ever traded in the UK to your knowledge?

 

[Diggerboy]

Do they have a registered trademark in the UK?
Have they ever traded in the UK to your knowledge?

1) Not that I've found through IPO
2) No

?

 

[logicfusion]

I'm not qualified to give an 'official' answer to this, however I would probably proceed on what you have said.

I don't see how they could bring an action of passing off against you if they are in another country and not trading here and with no registered trade mark.

If you are really concerned, why not speak to a trade mark attorney? I would actually recommend a guy on here called VeryMark.

 

[MrMichael]

Ok, so in terms of rights in a name, they will be territorial. A consumer in Canada is not likely to be confused between a service provider in Canada, and one in the UK. The internet blurs the dividing line somewhat due to its global reach, however, you would need to show you had actually established some form of goodwill in Canada i.e. by supplying Canadian customers. This obviously depends very much on the services/goods you provide and the reach of your business.

From what you have said, it's probably unlikely that either company would be able to establish goodwill in the other's territory (although further information would be necessary to give a more informed view). Of course, if either business was to grow in the future, and was to impede on the other's territory, problems may begin. Again, the likelihood of this depends on your respective business model.

You would potentially be advised to secure stronger rights in the name, at least in the UK, by registered a trade mark. If you secured a registration, you would be in a better position if the Canadian company ever expanded.

I work with some Canadian agents and it has a developed legal system but from the sounds of it, both companies should probably just remain happy operating in their own territory. Of course if you can point to clear examples of customers being diverted from your business to the Canadian business as a result of their mispresentation, then do advise below.

 

[VeryMark]

The only way of being sure is to get a proper legal similarity search with detailed advice to check for any conflictions - there might be somebody else other than the one you've found.

........ and trade mark rights are not invariably territorial - if you have a well-known name, you can take action even in places where you don't trade.

Our website has plenty of free information too by the way.

 

[Diggerboy]

Folks,

Thanks so much for the guidance on this. Will act on the advice given and maybe buy you all a drink someday. Assuming we don't get sued for every penny...