Passing Off

[goodidea]

Hi all, just registered on the forum.

Im in the research stage of setting up a ltd company that will sell aftermarket car parts on the web.

Names have been changed as I don't want to give my ideas away.

I would like to name the new company Brilliant Tuning Ltd and have a web shop with brillianttuning . com and .co.uk. I have checked companies house and the name Brilliant Tuning Ltd isn't used, I have checked IPO and nobody has Brilliant Tuning as a trademark, all domain names are available in their different forms (i.e .com, .co.uk etc). The company will predominantly specialise in aftermarket parts for Italian cars, but will also sell parts for other marques.

To the problem, there is a company based in the north called Brilliant Vtec Shop Ltd that was formed in the early 90s, they are based in the UK, with their own garage/warehouse and to my knowledge have a very good reputation. They have not trade marked any part of their name/logo with IPO. They have a large online presence with brilliant-vtec . co.uk thats used as their web shop and are known on various car forums and ebay. They are known as vtec specialists i.e Honda, but also deal with and sell parts for all other makes of cars. Their advertising makes use of the word 'Brilliant' but also the fact that they are 'specialists' .

Before I commit to using the name Brilliant Tuning Ltd and brillianttuning . com etc I would like to know if it would be classed as passing off by using the word 'brilliant' and the fact that I would be selling very similar parts, but to a different audience?

Hope you can help.

John

 

[Rhodes100]

You cannot as I understand trade mark an action and tuning is an action so I would not expect the name to be trade marked.

You would be passing off if a customer decided to use your business believing that they were buying from this another business.

There are lots of variations available so why risk it?, if you have to change your name in the future because you get very successful and they decide that they dont like it, it will cost you money in rebranding.

 

[kulture]

It all depends on the actual words used. Not knowing them (and you are right not to say on a public forum) it is impossible to get an accurate reply.

A number of posters here are experts on trademarks and IP, it may be best to contact them and hire their services to give a considered opinion.

Passing off is not just a trademark or IP dispute. It is when a general member of the public can be confused as to the identity of the site on casual inspection. i.e. if at first glance your site looks like it is owned, or related to, your competitors. This COULD be on name alone, but not if the name is a generic term. If they had a web site and your logo was completely different, and the look and feel of the site also completely different, then the chances of you being accused of passing off is smaller.

The other way round should also be considered. If in a few years time you became very successful, and your web site was high traffic etc, then what if your competitor created their site to look and feel like yours? They could demonstrate that they had the name and used it long before you. It would make it harder for you to have a successful passing off challenge against them.

If you are convinced that you want to use the name, then why not talk to your competitor and get a written agreement that there will be no problem.

 

[goodidea]

You would be passing off if a customer decided to use your business believing that they were buying from this another business.

There are lots of variations available so why risk it?, if you have to change your name in the future because you get very successful and they decide that they dont like it, it will cost you money in rebranding.

Thanks for the reply. Does this mean that I should not use 'brilliant' in my business/trading name at all?

You say variations, what about Brilliant Tuning Parts Ltd and brillianttuningparts.com etc? Would that be classed as passing off?

 

[paulears]

If you go to the companies house website and do some searches - you'll find plenty of companies with similar names who are not linked. Try your new name there and see what the search reveals.