Starting Passing Off Procedure - Help

[Bulldog1979]

Hi Everyone,

I wanted to see if anyone knew of any Passing Off letter templates please? I am looking to send a letter to a competitor who (without going into a lot of detail on a public forum) has copied my companies advert, concept and service and indeed our name (of which our TM has been published in the Journal with the relevant services)

To top it all they actually filed a proposal to oppose our trademark (without any cause or reason) and have even continued to use our TM AND even making new adverts using our TM word for word!

I want this to stop and thought about a cease and desist however I have been informed by my TM solicitor to start the passing off proceedings with the company & claim damages/compensation.

After being told I would have to pay in excess of £400 for the letter to be drafted I wanted to see if anyone could give me free legal advice on drafting the letter - I (think I) have the evidence required but don't know how to put it together?

Thank you in advance for any assistance you can give as we only started our business this year so after investing in the TM process we thought that would stop our unique concept being used and plagiarised however I was wrong!?

 

[The Resolver]

Sounds to me like the damage could be significant if you do not put a halt to it fairly swiftly. In that context, the £400, which will include advice to you on the strength of your claim as well as the letter, and the much greater impact a solicitors letter will have than one from yourself, seems good value.

One word of warning. It sounds like the firm is prepared to send the letter alone without being instructed to issue proceedings if they do not respond. Once you make a threat and do not follow up, you lose all credibility. I'm sorry to say this but you should therefore find out the cost of legal action as well and be prepared to fund. Brand and IPR is vital these days. You will never know how much business you will lose in time if you don't protect it.

 

[Bulldog1979]

Hi,

I have sent a Passing Off Infringement letter to the defendant stating everything (including evidence) of how they had been passing off our TM - requesting them to comply by the following:

1 To immediately cease and to desist in the future from conducting the Actions as defined in your representative’s letter dated ** ******.
2 To immediately cease and to desist in the future from passing off ourselves or any business or goods or service of ours or with which we are associated as being that or those of or in any way associated or connected with you or your business.
3 Within 5 days of this undertaking, to deliver up all goods and associated materials (including advertising and marketing materials) in our possession, custody or control which relate to our acts of passing off as detailed in the Actions or any other acts covered by the above undertakings ('Infringing Items').
4 Within 5 days of this undertaking, provide full details of all purchasers to whom we have supplied Infringing Items and any suppliers to us of Infringing Items, as are in our possession, custody or control including (without limitation) contact details, quantities supplied or purchased and prices.
5 Within 7 days of their coming into our possession, custody or control, to deliver up all Infringing Items that in the future come into our possession, custody or control.
6 Within 5 days of this undertaking, to provide you with a witness statement, endorsed with a statement of truth, to confirm that we have complied with the undertakings given in paragraphs The Schedule Part A1 to The Schedule Part A5 above and that the details provided under paragraph The Schedule Part A4 above are correct and complete.
7 To pay such damages or account of profits in respect of the Actions as may reasonably be agreed with you or, in the absence of any agreement, as may be determined by the court.
8 To pay your reasonable legal costs in connection the Actions, such sum to be agreed between you and us or, in the absence of any agreement, as may be determined by assessment.


Now I only gave the defendant 48 hours to (a) sign the above schedule stating that within the set times above they would comply (mainly 7 days to comply) They then emailed us saying:

"I write on behalf of ******** . Your correspondence of ******** is noted. Your request for a signed undertaking by close of business by ******** is also noted. The timescales which you have set are unrealistic. I propose to take legal advice on the matters raised, and will aim to respond to your letter of claim within 14 days. I undertake that no use will be made of the phrase “********” for or on behalf of ******** in the intervening period. Without prejudice to liability, I confirm that any references to the term which appear on ********' website have been temporarily removed.

Should you proceed to issue proceedings prior to receipt of my response, I shall draw the court’s attention to the content of this email when it comes to deal with the issue of costs."

- I gave this small timescale as I couldnt give them the standard 14 days as this would fall after their next event where they are going to use the TM & offer our service as their own!

Not only that but we believe they have already printed a magazine using our TM as theirs which obviously we don't want!

Am i right in applying for an Interim Injunction (N244)? And if so how soon should i apply as the time I originally set in the letter has past?

It may sound like i know what im doing but believe me i would LOVE some assistance please!

 

[MOIC]

Why didn't you take the advice given to you by The Resolver?

When you write letters in your own name it also shows to the other side you are trying to save on costs and accordingly any intimidation from them regarding litigation will likely see you give in to issuing proceedings.

£400 for your solicitors advice, letter and threat of issuing proceedings if the actions sought have not been adhered to seems like a good deal.

As The Resolver has stated, make sure you have the funds to carry out your actions, your solicitor should give you advice on the likely outcome, costs involved and what you can claim etc etc.

Like any court case, the outcome is never clear cut and as we do not know the full details, it's best to refer to your solicitor for guidance.

Best of luck.

 

[carl.atkinson]

Do you think that there is some irony in the fact that you are requesting free access to use someone else's intellectual property (i.e a letter before action) in order to threaten someone who you believe is using your intellectual property?

 

[Bulldog1979]

Hi everyone and thank you for your comments,

Myoffice - I couldnt afford to take the advice (great as it was!) unfortunately as our company is a new one and we have already spent over £1,000 in getting this far, hence why I wasn't asking for someone's intellectual property Carl, I was asking for advice and assistance.

The situation now is I understand why they have told me that they will take 14 days to think about their comeback - because they have had 1,000's of magazines printed and distributed With our TM in it! - Hence why I simply can't afford to:
a) let the company continue to pass-off their service as ours on the back of our advertising and our TM
b) afford to pay for more fees (apart from court fees)

Am I right in thinking in order for me to stop the company using my TM at their event I need to get an Injunction (N244)? - If someone could point me in the right direction I will do the rest (or try to!)

I know Im asking a lot and I have already messaged a few pro-bono groups asking for assistance - time is of the essence with this and I need some help please? - Many Thanks in advance

 

[MOIC]

You have 2 issues.

1. Stopping them using your Trademark.

2. Claiming damages to date.

The latter will need a solicitor and probably a barrister if the other side refuses or contests your claim.

You need to give serious consideration to what you are planning to do.

A solicitors letter carries much more weight than you doing it independently. I take on board your financial situation but it may be false economy as the damage to your business could cost you much more.

Best of luck whichever way you choose to tackle it.

 

[geester]

Find the money and if you have done everything correctly, you will get it all back plus damages. I know from bitter experience doing business with a friend...

 

[123Simples]

https://www.gov.uk/how-to-register-a-trade-mark/after-you-apply

 

[Bulldog1979]

Thanks everyone for your comments,

I am in the process of approaching solicitors to act on my behalf in the no win no fee scenario - hopefully because the case is a strong one - I am also in the process of applying for an interim injunction (applying tomorrow) which will hopefully give me time to get everything in order to start the proceedings and hopefully find a solicitor to assist me.

Thanks again 123simples - my TM is published and only 6 weeks until it becomes registered as no-one has opposed it since the person I have been speaking about gave "notification of proposition" however hasn't responded to the solicitors letter my TM solicitor sent.

 

[el_clint]

The last post was a year ago. What's happening with respect to the passing off and the other company's activities?