Same name, different country!!!!

[JohnPeel]

I plan to start working from home with a small woodworking business.


I looked up to see if the name for my business was available to be my trademark on the UK and also looked up the name on the Companies House website to register as my business name.

In both cases the name I wanted was available and nobody else had registered it.


The problem is though, that when I typed the name into a search engine it showed that there was a company in the USA that had that name, and they had registered it there. They also run a similar style of business that I am wanting to do, with products being sold online too.


Where do I stand legally, can I still register with companies house the same name if it is available?


Can I still register the name as a Trademark with you if it is available?


Can I still buy the .co.uk domain name if it is still available?


And to conclude, can I be sued to death and forced to stop trading by the company in America, even though I dont plan to sell my items outside of the UK?


Please advise. Thank you

 

[adamzany]

Generally speaking, a trade mark is territorial in nature. That is to say, if you have registered the mark in the US but not anywhere else, then the mark only has protection in the US. There are exceptions to this for well-known/famous marks, but basically if the US mark is not used in the UK or registered as a UK or Community Trade Mark then it should be okay for you to use and register it.

Where do I stand legally, can I still register with companies house the same name if it is available?
Yes, there is nothing to stop you from registering the name with Companies House, assuming that particular name is available.

Can I still register the name as a Trademark with you if it is available?
Assuming that your proposed mark is distinctive and not descriptive/generic, you should be able to register your trade mark in the UK provided that there is nothing else that has already been registered that is confusingly similar. So you need to check that there are no identical or similar marks on the Register for the same or similar goods/services as those of interest to you.

However, you also need to bear in mind that in the UK any trader using his trade mark acquires common law rights simply by using the mark (under the law of passing off). If the US company is actively using its mark in the UK it could have common law rights in the mark and so might be able to oppose your trade mark application.

Can I still buy the .co.uk domain name if it is still available?
Yes.

And to conclude, can I be sued to death and forced to stop trading by the company in America, even though I dont plan to sell my items outside of the UK?
Subject to what was said above about common law rights acquired in the UK through use, you should not have any problems from this US company. However, you should have a proper trademark search done first.

For further information please visit www.trademarkregistration.org.uk

 

[BusinessDeli]

Didn't you already post this?

http://www.ukbusinessforums.co.uk/forums/showthread.php?t=295495

 

[silliker]

Didn't you already post this?

Oh,double posting?!? Hmm..