Sole trader using same name as my ltd company
- Thread starter scedminc
- Start date
- Original Poster
- #3
Yes we have been trading for a year and his actually company name is totally different. I think he is using it to list our company name under his address and telephone number on the internet so he can get extra business whilst the customers potentially think it is my company if you get what I mean.
100% definate that he would not have been using the name before us in any case as it is an unusual name that someone wouldnt think of in my line of business.
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It would be incorrect to think that the name of your Limited Company would prevent another from using the same name. The name of your Limited Company only prevents someone else forming an identical name as the name of a Limited Company.
You should seek advice on passing-off and possible trade mark registration.
I personally recommend Very Mark Limited who are Trade Mark and Copyright Attorneys, they are members of this forum also
http://www.ukbusinessforums.co.uk/forums/member.php?u=3388
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VeryMark
Registration of a name as a limited company at Companies House gives you no rights, it simply stops someone else registering the same name for another limited company.
Prior use of a business or company name affords a certain amount of protection under the common law against 'passing off '. Legal actions for passing off require evidence of likely confusion and damage to reputation (or, in more formal terms, "goodwill").
If you have trade mark registration for your name, this gives national coverage (unlike protection for passing off which is limited to your area of reputation) and it is also not necessary to show that confusion is likely for trade mark infringement to be established in the case of identicality.
As an example, if you only trade in Cornwall but have your name as a registered trade mark, and someone else then starts up in Scotland using the same name for the same kind of goods/services as you have registered for, then they can be guilty of infringement even though the geographical separation means that there is no confusion.
Actions for trade mark infringement tend to be quicker and cheaper than those for passing off.
Having said all that, if the competitor is using the same name as you to trade off your established reputation, and it is clear that there is or will be confusion which will damage your sales and/or business, then you are likely to have a strong case in law for passing off.
This is not a legal opinion, however, as I do not have all the facts and have not been formally instructed.
Our website contains more information and a variety of factsheets on naming, trade marks, copyright, designs, and protecting creative work.
Prior use of a business or company name affords a certain amount of protection under the common law against 'passing off '. Legal actions for passing off require evidence of likely confusion and damage to reputation (or, in more formal terms, "goodwill").
If you have trade mark registration for your name, this gives national coverage (unlike protection for passing off which is limited to your area of reputation) and it is also not necessary to show that confusion is likely for trade mark infringement to be established in the case of identicality.
As an example, if you only trade in Cornwall but have your name as a registered trade mark, and someone else then starts up in Scotland using the same name for the same kind of goods/services as you have registered for, then they can be guilty of infringement even though the geographical separation means that there is no confusion.
Actions for trade mark infringement tend to be quicker and cheaper than those for passing off.
Having said all that, if the competitor is using the same name as you to trade off your established reputation, and it is clear that there is or will be confusion which will damage your sales and/or business, then you are likely to have a strong case in law for passing off.
This is not a legal opinion, however, as I do not have all the facts and have not been formally instructed.
Our website contains more information and a variety of factsheets on naming, trade marks, copyright, designs, and protecting creative work.
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Sadly I hasd this too - I could have claimed for 'passing off', but int he end decided that as the company were not acutally doing me any damage (My customers realised it wasn't me) and the fact that 10 years ago I was quoted around £6000 to fight it, I decided to ignore it - if I publicised the name of the cmpany using my name it would have done them good and me none, therefore ignoring them worked -here I am 11 years later and oops - they went bust 4 years ago.......
It is annoying, it is illegal, but is it worth persuing?
It is annoying, it is illegal, but is it worth persuing?
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- Original Poster
- #7
Thanks to everyone for their answers.
KateCB,
I don't anticipate this been a huge issue yet but the problem arose because I did a search for myself on google and he came up on page one aswell under a directory listing with his details. Therefore if they clicked on that link then potentially I lose a customer if you see what I mean.
Anyway I have written to them today expressing my feelings towards the situation and the legalities of passing off. This guy is just a tin pot outfit that just sits at home with only a mobile as contact. He couldnt afford to fight anything anyway I dont think. So I decided to send the letter and see what happens. If not I shall have a solictors letter sent with the intention of starting legal action but I think he would then back down and go on about his business under his correct trading name.
Sced
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Sounded familiar - I had an internet company use my domain name without the hyphen - (I couldn't buy it when I wanted it, then forgot and this other company bought it) - ALL my customers click to come to my site and actually it was a customer who alerted me to it as they said that the link had taken them to a really poor site that obviously wasn't karate-kid.co.uk...I wrote to the guy, who basically told me that he was entitled to buy the name (agreed and offered to buy it from him) and that I could go away and *!!~@""** myself........Nice.
So as I said, I decided after investigation into costs, to ignore him, made a point of spelling out the URL for MY site, and he went away
So as I said, I decided after investigation into costs, to ignore him, made a point of spelling out the URL for MY site, and he went away
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Yes, but it takes time, you have things to prove (Which are pretty impossible in reality) and again it costs.....not £6k though I admit!
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I agree, each business will take a different approach to dealing with such matters based on how they value the goodwill of their business.
At one time, a party set up a Limited Company that was identical to one of our companies except one space. We approached Companies House and it was removed fairly quickly. That 'clone' company also had a very similar website to that company of ours, offering almost identical services; we filed a complaint to Nominet and they contacted the owner and the site was removed within a week. We did not use the formal resolution procedures, however in many cases the resolution procedure would be necessary especially if there are technical points to resolve, such as bad faith / opportunitisic grounds. I appreciate not all cases are clear cut.
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VeryMark
I agree, if a .co.uk domain name imitates yours then a complaint to Nominet as the regulatory authority can be more effective and faster and cheaper than one to WIPO under the ICANN rules if it is a .com or .net for example.
The one thing you should do regardless is to take out trade mark registration as that will make any action simpler and much more likely to be effective for the future.
I had a case once where I advised a men's retailer who'd been trading in Birmingham for seven years and suffered massive confusion and loss of business when someone else opened a branch in the new Bull Ring.
However, the company I was advising couldn't do anything about it as the other business had started in Scotland the month before and then spread around the country and had registered the name as their trade mark.
If the company I was advising had registered the name as their trade mark to begin with the boot might have been on the other foot.
The one thing you should do regardless is to take out trade mark registration as that will make any action simpler and much more likely to be effective for the future.
I had a case once where I advised a men's retailer who'd been trading in Birmingham for seven years and suffered massive confusion and loss of business when someone else opened a branch in the new Bull Ring.
However, the company I was advising couldn't do anything about it as the other business had started in Scotland the month before and then spread around the country and had registered the name as their trade mark.
If the company I was advising had registered the name as their trade mark to begin with the boot might have been on the other foot.
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If you are a Sole Trader you cannot be stopped from using your own name.
So if your name is Smith and you trade as "Smiths Bin Bags" - Nobody can make you change it.
I know this from experience. The Swiss Company I use to work for tried to stop me because we had the same Trading Initials - They were stopped in their tracks
So if your name is Smith and you trade as "Smiths Bin Bags" - Nobody can make you change it.
I know this from experience. The Swiss Company I use to work for tried to stop me because we had the same Trading Initials - They were stopped in their tracks
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VeryMark
I'm sorry but it simply is just not true to say that a sole trader cannot be stopped from using his or her own name.
If my name is Sainsbury and I trade as "Sainburys Supermarkets" of course I can be stopped! Exactly the same is true is if your name is Walker and you start trading as "Walkers Crisps".
This was confirmed in the Asprey case (Asprey & Garrard v WRA (Guns)) [2002] FSR 31) where William Asprey was stopped from using the famous ASPREY trade mark owned by the family firm of which he had been a part.
If my name is Sainsbury and I trade as "Sainburys Supermarkets" of course I can be stopped! Exactly the same is true is if your name is Walker and you start trading as "Walkers Crisps".
This was confirmed in the Asprey case (Asprey & Garrard v WRA (Guns)) [2002] FSR 31) where William Asprey was stopped from using the famous ASPREY trade mark owned by the family firm of which he had been a part.
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VeryMark
The Asprey case to which I referred covered both trade mark infringement and passing off and the defendent lost on both counts. Also, use of a company or business name as e.g. a Mr Walker marketing as "Walker's Crisps" is equally trade mark usage too.
All of the McDonalds cases of which I am aware concern not use of the name McDonalds but use of "Mc" or "Mac" as being the only thing in common, which is a different matter.
Of course, if your name is "McDonaldson" or "McDavid" and you set up a restaurant under that name, McDonalds would have to prove a likelihood of confusion - but the fact that you were a sole trader would not be a valid defence, and any sole trader calling a restaurant 'McDonalds' would certainly not succeed!
All of the McDonalds cases of which I am aware concern not use of the name McDonalds but use of "Mc" or "Mac" as being the only thing in common, which is a different matter.
Of course, if your name is "McDonaldson" or "McDavid" and you set up a restaurant under that name, McDonalds would have to prove a likelihood of confusion - but the fact that you were a sole trader would not be a valid defence, and any sole trader calling a restaurant 'McDonalds' would certainly not succeed!
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VeryMark
I hold no brief for McDonalds but, with respect, would point out that the case you quote is in the USA and does not appear to have ever gone to court.
However, and more to the point, the restaurant in question seems to have opened in 1956, only three years after McDonalds Corporation commenced federal usage of its trademark name and before it applied for U.S. trade mark registation in April 1961, and it is clear on the facts that the owner of the small McDonalds restaurant business in Fairbury, Illinois would now have a perfect defence in court on the basis of acquiescence, laches, estoppel and/or delay - whether or not he was a sole trader is irrelevant, I'm afraid.
However, and more to the point, the restaurant in question seems to have opened in 1956, only three years after McDonalds Corporation commenced federal usage of its trademark name and before it applied for U.S. trade mark registation in April 1961, and it is clear on the facts that the owner of the small McDonalds restaurant business in Fairbury, Illinois would now have a perfect defence in court on the basis of acquiescence, laches, estoppel and/or delay - whether or not he was a sole trader is irrelevant, I'm afraid.
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Its all about the BUSINESS NAMES ACT OF PARLIAMENT 1985
Sole Trader - you are exempt if you trade under your name. eg Fred Bloggs t/a "Fred Bloggs".
If you put an extention to the name eg. "Fred Bloggs Restaurant" You are not exempt.
Ronald Mcdonald traded under "Ronald Mcdonald", I am sure thew Americans have a similar law, hence, no court proceedings
Sole Trader - you are exempt if you trade under your name. eg Fred Bloggs t/a "Fred Bloggs".
If you put an extention to the name eg. "Fred Bloggs Restaurant" You are not exempt.
Ronald Mcdonald traded under "Ronald Mcdonald", I am sure thew Americans have a similar law, hence, no court proceedings
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S
saxondale
whats funny? seems your not so sure what your selling
really, it`s an interesting point - just what is a trade mark and what does "having" one prevent?
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VeryMark
Yes, certainly, it's a very interesting point.
My definition is that trade marks "are the signposts to a brand, or the means through which a brand is expressed, whether they be names, logos, emblems, packing designs, sounds, or other symbolic identifiers."
The legal definition in the UK from the Trade Marks Act 1994 is:
This depends on the goods or services concerned - for example, 'Brown' might be a good trade mark for mobile phone services (Call any town with Brown!)', but it would not be so good for footwear on the other hand (Buy the latest Brown Shoes!).
(Orange is also a perfectly good trade mark generally for mobile phone services .... although that is not completely true in Northern Irleland! - The future's bright, the future's Orange.)
Owning a trade mark or having it registered does not of itself prevent anything, as the owner is responsible for enforcement, apart from counterfeiting when Tradeing Standards Officers may also take action.
My definition is that trade marks "are the signposts to a brand, or the means through which a brand is expressed, whether they be names, logos, emblems, packing designs, sounds, or other symbolic identifiers."
The legal definition in the UK from the Trade Marks Act 1994 is:
- "In this Act a 'trade mark' means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."
- "A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging."
This depends on the goods or services concerned - for example, 'Brown' might be a good trade mark for mobile phone services (Call any town with Brown!)', but it would not be so good for footwear on the other hand (Buy the latest Brown Shoes!).
(Orange is also a perfectly good trade mark generally for mobile phone services .... although that is not completely true in Northern Irleland! - The future's bright, the future's Orange.)
Owning a trade mark or having it registered does not of itself prevent anything, as the owner is responsible for enforcement, apart from counterfeiting when Tradeing Standards Officers may also take action.
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Out of interest, for those of us who have a registered trade mark. How much does enforcement cost - roughly?
I assume its one thing to have a letter written (a hundred pounds maybe),
as opposed to issuing proceedings / getting injunctions.
I assume this would have to be the multi-track, meaning we could be liable for costs running into 000's if an action did not succeed?
I appreciate every case is different and it would be impossible to quote a set price!
Further more, is it considered 'essential housekeeping' by the courts for us to always challenge an alleged infringement as soon as we are aware. In other words, if we let an infringement carry on for a number of years - could we be deemed as having accepted it if we decided upon action at a later point in time?
Regards
Al
I assume its one thing to have a letter written (a hundred pounds maybe),
as opposed to issuing proceedings / getting injunctions.
I assume this would have to be the multi-track, meaning we could be liable for costs running into 000's if an action did not succeed?
I appreciate every case is different and it would be impossible to quote a set price!
Further more, is it considered 'essential housekeeping' by the courts for us to always challenge an alleged infringement as soon as we are aware. In other words, if we let an infringement carry on for a number of years - could we be deemed as having accepted it if we decided upon action at a later point in time?
Regards
Al
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VeryMark
A significant point for any small business is that, if you don't appear to be ready to fight your corner, you are less likely to be treated seriously and are more likely to come off worse, particularly financially.
That doesn't mean you have to spend a fortune; it does mean that you have to look sufficiently stubborn and determined - to look more like a fox than a chicken or a rhinoceros than a mouse.
We like to stand up for SME's and stop them being walked over - and I have successfully acted for small firms against large companies like Honda, Mattel, Mercedes, Mars, and Neill Tools, often with large city law firms on the other side.
Of course our services don't come free, but our fees are reasonable (and start at £500), and can be cheaper than having your goodwill damaged or losing sales -and having a reputation for not being a pushover is worth more in the long run I think.
It's important too that your case is argued to the best effect - if the other side think they can bully you or ignore you, or that you don't understand the legal issues properly, you're unlikely to get the best outcome.
In short, the psychology involved can be just as important as the legal rights and wrongs.
Yes, if a case looks as if it might need to get to court, it can become very expensive, but we also have close contacts with a large firm of solicitors who may be prepared to take on appropriate cases sometimes on a no-win-no-fee basis.
It isn't essential necessarily to always challenge an alleged infringement as soon as you are aware, but you shouldn't leave it too long - the longer you leave it the harder and more expensive it gets generally.
Also, if you leave it too long, as you say, you can be seen as having accepted it if the other side can show that you were aware of their use.
The worst thing you can possibly do though is to take action and then simply give up at the first hurdle - that certainly amounts to consent and is worse than doing nothing. Sometimes, you need to nag away at people until they are prepared to compromise - it's a little like debt collecting - and we don't get paid for being nice to the other side!
The main thing you should do, essentially, is have a strategy, decide your fall-back and where you can compromise, and stick to it - and that doen't mean to say going to court regardless, occasionally infringers can be turned into licensees for example.
The main thing, of course, if you want to protect yourself is to apply for trade mark registration, that's the basic first step.
I hope this helps.
That doesn't mean you have to spend a fortune; it does mean that you have to look sufficiently stubborn and determined - to look more like a fox than a chicken or a rhinoceros than a mouse.
We like to stand up for SME's and stop them being walked over - and I have successfully acted for small firms against large companies like Honda, Mattel, Mercedes, Mars, and Neill Tools, often with large city law firms on the other side.
Of course our services don't come free, but our fees are reasonable (and start at £500), and can be cheaper than having your goodwill damaged or losing sales -and having a reputation for not being a pushover is worth more in the long run I think.
It's important too that your case is argued to the best effect - if the other side think they can bully you or ignore you, or that you don't understand the legal issues properly, you're unlikely to get the best outcome.
In short, the psychology involved can be just as important as the legal rights and wrongs.
Yes, if a case looks as if it might need to get to court, it can become very expensive, but we also have close contacts with a large firm of solicitors who may be prepared to take on appropriate cases sometimes on a no-win-no-fee basis.
It isn't essential necessarily to always challenge an alleged infringement as soon as you are aware, but you shouldn't leave it too long - the longer you leave it the harder and more expensive it gets generally.
Also, if you leave it too long, as you say, you can be seen as having accepted it if the other side can show that you were aware of their use.
The worst thing you can possibly do though is to take action and then simply give up at the first hurdle - that certainly amounts to consent and is worse than doing nothing. Sometimes, you need to nag away at people until they are prepared to compromise - it's a little like debt collecting - and we don't get paid for being nice to the other side!
The main thing you should do, essentially, is have a strategy, decide your fall-back and where you can compromise, and stick to it - and that doen't mean to say going to court regardless, occasionally infringers can be turned into licensees for example.
The main thing, of course, if you want to protect yourself is to apply for trade mark registration, that's the basic first step.
I hope this helps.
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I am quite late in posting this but thought i should before things progress even further.
I am registered as a part time soletrader and my business is bookkeeping.
I believe that if you use your own name you dont have to register it and therefore decided to use the initial, MG Bookkeeping.
The IT company i am using to build my website have bought the address MG-Bookkeeping.co.uk.
However i have recently noticed that a limited company in England trades as MG Bookkeeping LTD while another trades as M.G. Bookkeeping Services Ltd.
As a soletrader, can i use MG Bookkeeping or do i need to come up with a different name?
Thank you in advance!
Regards
M.Ghanni
I am registered as a part time soletrader and my business is bookkeeping.
I believe that if you use your own name you dont have to register it and therefore decided to use the initial, MG Bookkeeping.
The IT company i am using to build my website have bought the address MG-Bookkeeping.co.uk.
However i have recently noticed that a limited company in England trades as MG Bookkeeping LTD while another trades as M.G. Bookkeeping Services Ltd.
As a soletrader, can i use MG Bookkeeping or do i need to come up with a different name?
Thank you in advance!
Regards
M.Ghanni
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VeryMark
The fact that you are a sole trader gives you no protection or exemption from any risk of infringement of a registered trade mark or of passing off, I'm afraid.
The 'own name' defence is also of strictly limited application and I would doubt you could rely on it in this case.
Our factsheet on Trade Mark & Marketing Clearance can be found here.
The 'own name' defence is also of strictly limited application and I would doubt you could rely on it in this case.
Our factsheet on Trade Mark & Marketing Clearance can be found here.
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Many thanks for your advices.
I am only looking to do this on a part time basis and those that will be searching fo rmy business would probably be local business within my county and very very few outside of it.
I think i will simply reconsider depending on the cost to migrate to a new web address.
I thank you again.
Regards
M.Ghanni
I am only looking to do this on a part time basis and those that will be searching fo rmy business would probably be local business within my county and very very few outside of it.
I think i will simply reconsider depending on the cost to migrate to a new web address.
I thank you again.
Regards
M.Ghanni
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Hi hope someone can help!
We have had our electrical company name since 2002, 2 years as a sole trader, then in 2004 changed to a Ltd company. We have just found a sole trading electrical company that has recently started trading in exactly the same area as us under our exact name. They have just produced a web site, and their web address is the same as ours but without the hyphen, ( although their company name is with a hyphen, as is ours) when we purchased our domain name the non hyphenated version was not available, our website is being designed at the moment, but now this other company is likely to receive business through people googling our name! I am worried our reputation could be affected or that we could loose work to them, with people thinking they are us!
Can we do anything about this, are they able to use our name?:|
Would appreciate any advice.:redface:
We have had our electrical company name since 2002, 2 years as a sole trader, then in 2004 changed to a Ltd company. We have just found a sole trading electrical company that has recently started trading in exactly the same area as us under our exact name. They have just produced a web site, and their web address is the same as ours but without the hyphen, ( although their company name is with a hyphen, as is ours) when we purchased our domain name the non hyphenated version was not available, our website is being designed at the moment, but now this other company is likely to receive business through people googling our name! I am worried our reputation could be affected or that we could loose work to them, with people thinking they are us!
Can we do anything about this, are they able to use our name?:|
Would appreciate any advice.:redface:
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VeryMark
Dee21, it is better practice to start a new thread rather than tack on a new problem on to the end of an old thread - I nearly missed this as I thought it was a continuation of the existing thread on which I had already advised.
Be that as it may and to answer your request for help, it may be possible to do something but I would need to know the full facts to advise properly - you can email or fax me using our contact information given below.
Be that as it may and to answer your request for help, it may be possible to do something but I would need to know the full facts to advise properly - you can email or fax me using our contact information given below.
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Hi,
I am a director of a Cleaning contractors call Euroclean (Bournemouth) Ltd we have been registered since 1993.
I have just seen another company who does not seem to be registered with companies House so I presume he is a sole trader working in Bournemouth trading uner the name "Euro Clean".
Do I have any rights to stop this person using my name ?
Many thanks !
I am a director of a Cleaning contractors call Euroclean (Bournemouth) Ltd we have been registered since 1993.
I have just seen another company who does not seem to be registered with companies House so I presume he is a sole trader working in Bournemouth trading uner the name "Euro Clean".
Do I have any rights to stop this person using my name ?
Many thanks !
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Great advice from everyone. I would always seek to secure a trade mark. The UKIPO is fantastic at assistance on this and government fees start at £200. It will save lots of headaches in the future as passing off is notoriously difficult to prove and frankly you need big pockets to bring a high court action. The dispute resolution forums can be effective but again its more tricky to have 90% confidence of success based on unregistered rights. Establishing goodwill is often the main problem. The UKIPO has a sample form on its website and that is a good starting point.
Michael
Trademarkroom
Michael
Trademarkroom
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Must obtain a trade Mark wherever possible without one you face the uphill battle of relying on unregistered rights which is not ideal and difficult and costly
We do lots of these cease and desist letters give me a call and happy to talk through what will happen etc
07976724258
Lawdit Solicitors
We do lots of these cease and desist letters give me a call and happy to talk through what will happen etc
07976724258
Lawdit Solicitors
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0
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