Similar Names

[greatwesterncms]

Hi All, I've seen a few threads already on similar details to this, just want some advice really.

Set up our self employed partnership in 2007, when we bought domain name, saw an accountant and reg'd with HMRC etc.

We never bothered to trademark (stupid i know) as at the time we were just running a small dog walking business in a market town.

Since then we have grown and established well and have a family member running a business of the same name etc in another town, although we have not officially franchised and have no plans to expand further.

Since then another company offering different pet related services has set up their business, they have a similar although not identical name (one letter different) and we have seen they only reg'd their domain in 2009 and trademarked in 2010.

Trademarks logos aren't similar visually and the services we offer are different although they have reg'd two of the same classifications as us. (they've reg'd nearly every class possible but we only needed two!)

We recently decided to see if it was worth trying to register our name as their are lots of dog walking businesses that use it around the country so reg'd with the IPO.

We've now had notice through the IPO this other company will be objecting to us registering our details and the company have written to us personally to tell us we must cease trading in our name or they will take legal action.

We don't want to stop using our name, (although if we can just keep things as they are without proceeding with the trademark/ipo we are happy to do so)
Can they really stop us using our name, as things are or can they only stop us if we want to proceed down the IPO route?

Any advice if someone has experienced similar?

 

[adamzany]

Hi,

If you have been using your brand continuously since 2007 and if their registration dates from 2010, then you might be able to claim that you have an earlier right to the mark based on the common law principle of "passing off". This could enable you to invalidate their registration.

There are usually three requirements needed to establish a passing off claim:

• Goodwill - Basically this means reputation. It is the benefit of the good name, reputation and connection of a business. The reputation in your mark has to be established earlier than the filing date of the other party's registration or date of use.
• Misrepresentation - Any misrepresentation must be made by a trader in the course of trade and it must have lead to confusion or the likelihood of confusion in the mind of the customer.
• Damage - This means establishing actual or likely financial loss. This could include loss of profit in an existing market, loss of reputation or loss of opportunity to expand.

The way forward would be to write to the other side pointing out your earlier use and reputation in the mark, and threatening to apply to invalidate their trademark registration if they do not drop their opposition. You could offer to enter into a co-existence agreement with them, which usually involves both parties agreeing to only use their marks in particular formats, or in particular locations, or for particular goods/services. It's a way for both parties to live alongside each other.



You need to be sure that you can prove earlier use though.


If you need any further advice please feel free to email me:


[email protected]

 

[fisicx]

... and the company have written to us personally to tell us we must cease trading in our name or they will take legal action.

What legal action?

Even if they were a registered company they can't do much because you were doing your thing long before them. There's a bloke near us called Amazon Books. He was in business before the mighty Amazon and has never had any problems.