Trademark Infringement

[tjdurden]

Hi,

I am looking to start a UK business venture with a partner, and we have recently found out that there is a company in the US that has a similar name to the business name we are looking to use. Unfortunately, I have to keep this relatively anonymous at this stage, but the problem is as follows (using an example):

We want to call our business "ABCTrading FX" (registered as business in the UK as "ABCTrading FX Ltd.", and effectively, we would be involved with investments across the forex market.

There is a company in the US that has "ABCTrading" as a trademark, and has done so since 1999, and actively uses it, as a financial/investment company. However, "ABCTrading FX" is not registered as a trademark in the US.

Not knowing that much about trademark law, is there any way we can get around this, and use "ABCTrading FX", or is it just too close to the US registered trademark to even consider building a case? I really don't know how these things work. If anyone can give examples which would, or wouldn't be acceptable, I'd be most appreciated.

Many thanks in advance.
Tim

 

[Spearmint]

Hi,

I am looking to start a UK business venture with a partner, and we have recently found out that there is a company in the US that has a similar name to the business name we are looking to use. Unfortunately, I have to keep this relatively anonymous at this stage, but the problem is as follows (using an example):

We want to call our business "ABCTrading FX" (registered as business in the UK as "ABCTrading FX Ltd.", and effectively, we would be involved with investments across the forex market.

There is a company in the US that has "ABCTrading" as a trademark, and has done so since 1999, and actively uses it, as a financial/investment company. However, "ABCTrading FX" is not registered as a trademark in the US.

Not knowing that much about trademark law, is there any way we can get around this, and use "ABCTrading FX", or is it just too close to the US registered trademark to even consider building a case? I really don't know how these things work. If anyone can give examples which would, or wouldn't be acceptable, I'd be most appreciated.

Many thanks in advance.
Tim

I think you could be facing an uphill struggle trying to do this, particularly if your company and theirs are both in the same sector, as it could be misleading to customers. I suppose it may also depend on how well known the company is, but to use an extreme example, I doubt whether anyone would get away with having Coca Cola FX!

Its quite enlightening to take a look at the IPO website to see the outcome of past trademark cases, but there is also other information on there that may give you some guidance.

It may be better to change the name now to avoid expensive mistakes later, or you could seek advice from a Trademark or Patent Attorney before running with it.

 

[tjdurden]

Spearmint,

Thanks for your reply.

Is there any particular way around it though? I mean, taking the Coca Cola example (extremes are good), if you called yourself CocaColaFX Ltd (effectively Cocacola FX), but branded it in such a way that it was radically different, with a different, and distinguishing logo, would that be acceptable, even if you were in the same market?

Also, going back to my example, if "ABCTrading" is just a trading name of "ABCTrading Capital Markets LLC" in the US, does this make it easier to justify using "ABCTrading FX" as a trading name for our business in the UK?

Many thanks,
Tim

 

[surreyaces]

Spearmint,

Thanks for your reply.

Is there any particular way around it though? I mean, taking the Coca Cola example (extremes are good), if you called yourself CocaColaFX Ltd (effectively Cocacola FX), but branded it in such a way that it was radically different, with a different, and distinguishing logo, would that be acceptable, even if you were in the same market?

Also, going back to my example, if "ABCTrading" is just a trading name of "ABCTrading Capital Markets LLC" in the US, does this make it easier to justify using "ABCTrading FX" as a trading name for our business in the UK?

Many thanks,
Tim

As I understand it any trade mark containing the words Coca Cola would be a no-no irrespective of market, logo or branding; I'm pretty sure you wouldn't be able to get a trade mark even for a copper mining business with a chicken for a logo if you had Coca Cola in your name. The brand is too well known.

Obviously happy for a trade mark professional to correct me if I am wrong!

 

[tjdurden]

surreyaces: Sure, I can understand that in terms of a large mutli-national, but what about a business known only a state within the USA?

Whilst I can appreciate how close to the wire this is, I am still trying to understand what is acceptable, and what might not be. Perhaps, I should re-word this, as I do not believe the "brand" name exists in part of the name.

If "HelloBank" and "HelloTrading" are US trademarks owned by a company, can I then start up, and trademark "HelloFX" without issue? My logic here assumes that "Hello" is not trademarked, either on the basis that it is a common word, or simply because no-one has attempted to trademark it with a given area/market. Therefore, is "HelloFX" then free to be trademarked as it is not linked to "HelloTrading"?

Thanks again.

 

[surreyaces]

Please don't take this as advice, I'm not a trade mark lawyer I just know a little about the law and have a personal interest in this area.

In order to function as a trade mark the mark must be distinctive and non-descriptive. Therefore the only reason that the marks in your example would have been registrable in the first place is due to the 'Hello' part of the mark ('bank' and 'trading' describe the nature of the business). Anyone trying to register a mark containing 'Hello' (ie the distinctive element of an already registered mark) in the same market would probably run into an opposition. If the mark isn't well known then you may be able to operate on this basis in a different market but operating in the same market with such a similar mark is asking for trouble in my opinion.

Imagine I am trading under the name 'Moonshine Solicitors' and have this registered as a trademark. If someone tried to register 'Moonshine Lawyers' as a trade mark I would argue that this will confuse consumers and that Moonshine Lawyers are trying to benefit from the goodwill that I have established in the market in which I operate. However if someone tried to register 'Moonshine Lobsters' for use in the sale of lobsters I would not be able to oppose this registration successfully because the likelihood of consumer confusion is minimal. It is only large multi-nationals that can oppose on this basis - Coca Cola for example as previously discussed.

 

[tjdurden]

Surreyaces: Thanks for your detailed response. It all makes perfect sense, it's just so frustrating. I've made the mistake of registering a number of domains that I spotted as being available, and it's only since finding out about this US company that it's got me thinking about trademarks & whatnot. It seems crazy that a trademark can hold such weight across the pond, despite no such company being registered in the UK, or UK-registered trademarks, or even domain names, existing.

Another thing I've recently learned is that there's also another company actually called (still an example) "HelloTrading" that's registered in another european country, and is a global supplier of a particular product. It's a completely different market, but they're still using a mark registered by this US company. I suspect that's a court case waiting to happen.

I'm just not sure if it's worth risking it and seeing how it goes. What's the worst case scenario here? We get a letter from the US company asking for us to change our name or face a court case? In such an instance, we could make alterations to our business name and move forward, or could we be sued regardless or whether we change our name, on the basis that damage may have already been done to the US companies brand?

Many thanks,
Tim

 

[surreyaces]

Sorry Tim I didn't realise they don't have any UK trade marks at all, I must have not read your posts properly or got myself confused which is all too easy I'm afraid!

Trade marks are territorial so this makes a big difference!

 

[tjdurden]

OK, well that gives me some hope. Looking at the trademark register, the marks I am looking at have not been registered in the UK or EU.

So with no UK/EU registered mark, no UK/EU business registrations, and only a US-based, and state-focussed, business with a similar name, operating in a similar market, would it be fair to say I at least have a small justification for starting a UK business, that primarily will market to a UK/EU customer base and despite being related to trading, be quite specific and different to the product range on offer by the other company?

I was also wondering if branding plays any part in reducing the claim of "passing-off", and also whether a disclaimer would help in any way (or just complicate matters?)

 

[Spearmint]

OK, well that gives me some hope. Looking at the trademark register, the marks I am looking at have not been registered in the UK or EU.

So with no UK/EU registered mark, no UK/EU business registrations, and only a US-based, and state-focussed, business with a similar name, operating in a similar market, would it be fair to say I at least have a small justification for starting a UK business, that primarily will market to a UK/EU customer base and despite being related to trading, be quite specific and different to the product range on offer by the other company?

I was also wondering if branding plays any part in reducing the claim of "passing-off", and also whether a disclaimer would help in any way (or just complicate matters?)

If there is no such trademark registered in the UK or the EU, then, I reckon you'd stand a good chance of applying for one, if that is your intention, but before committing yourself to the costs, it may still be worth running the idea past a Trademark or Patent Attorney. They can also advise on your branding question.

If you don't apply to trademark your name, you do run the risk of someone else doing that, which could cause you problems

 

[Trademarkroom]

Hi.

Trade marks are territorial so if you are trading in the UK/EU only, then you maybe ok. It is always worth investing in a trade mark search and advice report to check whether:
a) your proposed name can function as a trade mark within UK law
b) whether it is available i.e. has someone else already registered a similar/identical mark previously.

Please feel free to pm me if you would like a quote or just some more information on this.

 

[SteveBurrows]

You can probably get away with being and registering ABCTrading FX if ABCTrading is not active in UK/EU, or clearly in a different business (yes finance but not FX), many businesses, often in similar sectors, have similar names registered in different countries - however why would you want to?

People looking for you on Google or wherever are likely to find themselves looking at the wrong company / website, so you may be better changing name now before customer confusion arises in the future.

The worst case is that you have to change branding one you are actively trading - whether you choose to because of customer confusion or because the US company gets all antsy. You don't wan't to change name once your brand is recognised, it's expensive, risky and a lot of hassle, so cut your losses and do it now. HTH