Sole trader - Ltd company created and using the same trading name

[Fifty667]

Hi all,

I've been trading as a sole trader for 5 years in London, using a trading name as a brand instead of my own name (let's call it ABC). So my real name is John Doe, but people that connect to my online shop see my logo which is ABC, and when I report to HMRC I quote John Doe - ABC.

I've recently randomly discovered that someone in London has created a ltd company called ABC LTD last year, and is trading in the same industry than me (clothe retailing), also using ABC as a brand (i.e. their logoalso read ABC) but with a different design.

It's consequently the same brand, while they are not trying to replicate my design elements, and they are not trying to copy my brand or sell the same items than I do.

I don't think they trade marked their brand, neither did I (I copyrighted it locally in France years ago but not in the UK).

I am worried that I will lose my trading name or will be forced to change it, is there anything I can do now to prevent that? Can I trademark my name now, knowing that someone else is now also trading under this name?

I am not trying to sue them because it rather seems like a coincidence and they're not targeting my clients, but am just worried about my own brand and would like to make sure I can safeguard it.

Any advice would vey much appreciate and I thank you very much in advance for your help!

 

[Ozzy]

If there is a real risk of confusion with customers then you could take the approach of them 'passing off' as you are in the same area and the same industry, and I am assuming you have a few years of evidence of use of the brand as you comment 5 years.

For this I would recommend approaching a solicitor with experience in this field and pay them to write to the company advising them of this, as an initial approach - threatening to take it further.

 

[Fifty667]

If there is a real risk of confusion with customers then you could take the approach of them 'passing off' as you are in the same area and the same industry, and I am assuming you have a few years of evidence of use of the brand as you comment 5 years.

For this I would recommend approaching a solicitor with experience in this field and pay them to write to the company advising them of this, as an initial approach - threatening to take it further.

Thank you very much for your reply Ozzy!

Is there anything that I could do to protect my brand going forward, and to have more ground in case of future disputes?
My nightmare would be for them to come to me ina. few years claiming this brand as their own and me being forced to abandon it

 

[Ozzy]

Is there anything that I could do to protect my brand going forward

Only by trademark; which comes with a cost associated with it to register and protect the brand. There is a trademark guys on here but haven't seen for a while so name escapes me, maybe someone else can help on that here.

 

[WaveJumper]

I agree with Ozzy here you need professional advice. Yes first step would be to trademark your brand, pretty much sure (if the others are on the ball) they will object or more likely it will be pointed out by the trademark people themselves which then puts you on the back foot proving your "rights" to the name based on history.

These situations always remind of those standing in the Dragons Den with great ideas and prospects only too fail getting any investment / help as they have not ring fenced their trade name, web domains etc a lesson I would suggest for anyone coming along and reading this thread in the future

I feel its now going to cost you, however as suggested you could go with the cease and desist route but this will of course alert them to your existence if they are currently not aware of you.

Welcome to the forum & the very best of luck

 

[WaveJumper]

Just come to me try our member @RevoMark

 

[fisicx]

Even having the trademark only gives you limited protection. That’s if it is granted in the UK. The person who owns the limited company may object. And if you then discover someone else using the name you have to take legal action which costs money.

 

[japancool]

they have not ring fenced their trade name, web domains

I have never seen anyone on Dragon's' Den fail to get investment because they have not ring fenced their trade name or domain. A patent, maybe, but even then. I seem to remember Trunki had a patent, but it wasn't worth anything, as the design could be easily copied and slightly modified.

 

[HFE Signs]

The other option is to rebrand under a new carefully selected name and save yourself the cost and headache

 

[Fifty667]

Thank you very much all for your replies, this is greatly appreciated!

If I understand well:
- I need to trademark my name and logo as soon as possible. This might be challenging given there is now a Limited company that uses the same name, but still possible if I demonstrate that I was using this name before?
- I can also ask a solicitor to go through cease and desist. Is that needed if this other company is not interfering with my business for now?

Also, why could I need to rebrand? Given I've used this brand for longer than anyone else, I believe I am "entitled" to keeping it, no? And by rebranding the same issue could very well happen again with someone else deciding to use a similar name?

 

[fisicx]

- I can also ask a solicitor to go through cease and desist. Is that needed if this other company is not interfering with my business for now?

Cease and desist what? You said they aren't trying to copy you so there is nothing they need to stop doing.

 

[Fifty667]

Cease and desist what? You said they aren't trying to copy you so there is nothing they need to stop doing.

This is what someone suggested above, although I'm not sure exactly how that works. I was assuming that it would be cease and desist from using the same name as mine for a business that is in the same industry and the same region?

 

[japancool]

This is what someone suggested above, although I'm not sure exactly how that works. I was assuming that it would be cease and desist from using the same name as mine for a business that is in the same industry and the same region?

How much money do you have to spend on lawyer fees?

 

[fisicx]

This is what someone suggested above, although I'm not sure exactly how that works. I was assuming that it would be cease and desist from using the same name as mine for a business that is in the same industry and the same region?

Nope. There is no law that says you can't both have the same name and do the same thing. You just can't pretend to be another business (passing off).

 

[Fifty667]

How much money do you have to spend on lawyer fees?

Really not much, I'm a small business with turnover below 50k per year...

 

[Karimbo]

The ltd company name isn't the issue. The trademark is the issue.

For a clothing brand, trading for 5 years. Did you not think about getting a trade mark?

 

[Fifty667]

Nope. There is no law that says you can't both have the same name and do the same thing. You just can't pretend to be another business (passing off).

Ok, understood. So there is potentially no issue if we both do our life separately?

So I guess what I can do:
- trademark my logo: should not be controversial as we have different visual identities
- Trademark my name: might be complicated but can prove that I was using this name for a while

And then I assume no solicitor / lawyer would need to be involved in the process

 

[Fifty667]

The ltd company name isn't the issue. The trademark is the issue.

For a clothing brand, trading for 5 years. Did you not think about getting a trade mark?

I did think about it, but the cost of doing so was too high compared to the size of my business. I do recognise the issue, but is a solution now just to register for the trademark?

 

[Karimbo]

I did think about it, but the cost of doing so was too high compared to the size of my business. I do recognise the issue, but is a solution now just to register for the trademark?

A trademark is £150 to file for UK only. More for eu/usa. But I would have just got the UK one.

 

[Fifty667]

A trademark is £150 to file for UK only. More for eu/usa. But I would have just got the UK one.

Thank you, I will try that shortly. I think last time I checked it was to cover UK and EU which might be why it seemed like a high cost, and there were a number of fees on top of the sole registration (using a platform to do it for me).
Thank you for your help, in think the best thing to do is to try and register a trademark. And, according to people here, if it's unsuccessful I would need to rebrand and register the trademark immediately for the new brand (which would be a huge blow for me, but so be it...)

 

[Karimbo]

Nope. There is no law that says you can't both have the same name and do the same thing. You just can't pretend to be another business (passing off).

That's not true, the one who owns the trademark can sue the other. I would quickly get the trademark. The logo is not that important the name is the most important thing.

You can have only one name in a classification. But the name can be used across multiple claffification which is why you protect the logo design. The logo design is not that important unless its a big brand which needs to protect their look, like the nike tick, or the adidas 3 stripe.

 

[Fifty667]

That's not true, the one who owns the trademark can sue the other. I would quickly get the trademark. The logo is not that important the name is the most important thing.

You can have only one name in a classification. But the name can be used across multiple claffification which is why you protect the logo design. The logo design is not that important unless its a big brand which needs to protect their look, like the nike tick, or the adidas 3 stripe.

OK, thank you! Then I will go for that first. If I understand, I should expect some push back from the registration office due to the fact that someone else already uses this name.

 

[fisicx]

That's not true, the one who owns the trademark can sue the other. I would quickly get the trademark. The logo is not that important the name is the most important thing.

But you probably won’t get the trademark if there are other businesses already using the name.

 

[Fifty667]

But you probably won’t get the trademark if there are other businesses already using the name.

Oh ok - isn't there a way to argue that I was the first using this name?

And does that mean that I'm left with only the following options:
1) Do nothing, as far as both businesses are not interfering (and presumably they cannot register a tradermark for the same reason that I can't)
2) Rebrand and register a trademark for the new brand

This would seem a bit unfair given I've been trading for year and they just created their company last year... but I appreciate that I should have registered a trademark