Trademark issues

[terry54661]

Hi I all im looking for a little advice with regards to our company trademark. I will not added my real company name due to the legal issues that may come about but instead will call my company "GIFT ANGELS"

We registered the trademark "Gift Angel" as we are a gift company and included the following classes. This covers everything that we do and everything we plan on doing in the future. We own the .co.uk, .com, .net and .ltd.uk domain names also.

However a person who appears to be a sole trader has registered a domain name that is the reverse of our trademarked company name "ANGEL GIFTS" and has started trading selling personalised wedding stationary.

The way i see it is that this new company cannot trade within the same classes as us and they cannot simply reserve our company name to continue trading as this would be stepping on our toes and effectively copying our brand!

I have sent an email to the offending party asking them to remove there service as I feel it is in breach of our trademark. They have replied saying that they are on holiday and will reply in 12 days time.

Could anyone here with experience in such matter offer any advice on what to do next?

Classes under our trademark..

Class 14
Precious metals and their alloys; horological and chronometric instruments, clocks and watches; Key rings; Costume jewellery; Jewellery; Jewellery (Paste -); Jewellery ornaments; Fashion jewellery; Personal jewellery; Rings [jewellery]; Clocks; Gemstones, pearls and precious metals, and imitations thereof; Jewellery boxes and watch boxes; Time instruments; jewellery, costume jewellery, precious stones.
Class 16
Paper, cardboard and goods made from these materials, not included in other classes, namely cardboard packaging articles, bags, envelopes, labels, stationery, paper gift wrap and paper gift wrapping ribbons; printed matter; printed publications; books; periodicals; brochures; magazines; newspapers; photographs; stationery; pens; pencils; book binding material; notebooks; wrapping paper; gift paper; gift bags; gift boxes; gift tags; gift vouchers; printed pictures; posters; calendars; cards; greeting cards; postcards; artists' materials; plastic materials for packaging (not included in other classes); printed matter relating to promotional, advertising, incentive and loyalty schemes, promotional material, brochures and pamphlets; cards for use in connection with the aforesaid schemes; advertising matter; Christmas cards. gift boxes; gift tags; printed pictures.
Class 20
Furniture, mirrors, picture frames; articles made of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum or plastic which are not included in other classes, namely wood boxes, corks, drawer pulls, stoppers, reeds, statues, sculptures, figurines, busts, ivory, whalebones, sea shells, raw mother of pearl, meerschaum, plastic doorknobs, decorative tags, ornaments not including Christmas tree ornaments; pillows and cushions; photograph frames.
Class 21
Beer mugs; Ceramic mugs; China mugs; Coffee mugs; Cups and mugs; Drinking mugs made of porcelain; Earthenware mugs; Glass mugs; Mugs; Mugs made of ceramic materials; Mugs made of china; Mugs made of earthenware; Mugs made of fine bone china; Mugs made of plastic; Mugs made of porcelain; Porcelain mugs; Wine glasses; porcelain and earthenware; cups; glassware; larger glasses; hip flasks; tankards; wine coolers; pewter goblets; coasters (tableware); charms for attachment to beverage glassware for identification purposes.
Class 35
Advertising; business management; business administration; office functions; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; trade fairs; opinion polling; data processing; provision of business information; retail services connected with the sale of headwear, footwear, beverageware (namely, drinking glasses, mugs, cups, shot glasses, cocktail glasses, wine glasses, beer steins and beer mugs), aprons, petwear, magnets, buttons, messenger bags, computer peripherals, canvas bags, ornaments, calendars, toys, pillows, pillowcases, clocks, books, CD-Roms, framed prints, greeting cards, journals, keepsakes (namely, decorative tags made of wood and acrylic, plush toys, hair keepsake holders, tooth keepsake holders and blankets), printed calendars, poster prints, postcards, stickers and posters; computerised online retail store services featuring clothing, headwear, footwear, beverageware (namely, drinking glasses, mugs, cups, shot glasses, cocktail glasses, wine glasses, beer steins and beer mugs), aprons, petwear, magnets, buttons, messenger bags, computer peripherals, canvas bags, ornaments, calendars, toys, pillows, pillowcases, clocks, books, framed prints, greeting cards, journals, keepsakes (namely, decorative tags made of wood and acrylic, plush toys, hair keepsake holders, printed calendars, poster prints, postcards, stickers and posters; Retail services connected with stationery; Retail services in relation to headgear; Retail services in relation to fabrics; Retail services in relation to jewellery; Retail services in relation to luggage; Retail services in relation to bags; Retail services in relation to games; Retail services in relation to toys; Retail services in relation to festive decorations; Presentation of goods on communications media, for retail purposes; Communication media (Presentation of goods on -), for retail purposes; Retail purposes (Presentation of goods on communication media, for -); Presentation of goods on communication media, for retail purposes; Advertising via electronic media and specifically the internet; Business administration services for processing sales made on the internet; Commercial trading and consumer information services; Advertising, marketing and promotional services.

 

[LowPrices.uk]

It seems like a word sequence thing. It's going to come down to whether you can argue that they are confusingly similar to you. Having the Trademark puts you in a strong position, and if they are trading in your class but just have their name as the words the other way round, you may well have decent grounds for action.

 

[terry54661]

That is what we were thinking as the new company has simply taken our name and switched it around there logo is also the same colour! I cannot give the real company here but the reversal of the company name means the same thing. If I google our name and the name they are using the same result appear in the listings.

We will try and find a trademark cease and desist letter to issue if they do not respond or rebrand there service we will file a claim against them in court.

Any more advice from anyone would be great.

 

[F_B]

Beware! There are unjustified threats provisions in the trademarks act 1994. By sending the other side an email asking them to cease use as it is a breach of your trademark you have potentially made such a threat. They may be able to seek damages from you. I strongly recommend that you do not correspond further with the other side and that you have your situation properly assessed by a trademark attorney.

I know there is ongoing debate about use of a trademark in a domain, but essentially a domain is not a trademark. To tackle the domain you will need to go to the registering body of that domain (for example Nominet).

Regarding trademark infringement, what have you got registered and in which jurisdiction? Is it a European mark or UK only, have you registered your logo or just the text "ANGEL GIFTS". These details will strongly impact your position.

The test for infringement, as the marks are not identical (the words are arranged differently) is if the sign is similar to the trademark and is used in relation to goods identical or similar to those for which the mark is registered and there exists a likelihood of confusion on the part of the public

Do they use the mark just on their website or so the sell the goods under that mark?

 

[terry54661]

There are no unjustified threats being issued by our company on this issue. Our trademark is for the uk only and the offending sole trader lives only a few miles from me here in the UK.

Having had a little time to think about things it would seem to be a clear cut case of our trademark being copied. Its as bad as me starting a company called cola coke and this selling fizzy drinks!

We have not registered a logo as we fill there is no need due to our name being unique. The people copying us use our name reversed as there logo!

We may contact noninet about the domain as it is being used to copy our business and trademark. If the domain was being used to sell anything else and nothing similar then it would be fair play.

They have the mark on there domain, as there company name and even there tag line advertises products protected with the trademark classes.

If you were to google there name we appear first on google and the same this happens when the name is reversed.

A big issue is that they have made products for a charity to gain exposure. On the charity website they thank this company for there donations and display there logo which again is our trademark reversed. This is how we found this company we have been approached by many charities asking for donations as they have seen us already giving but it was not us so this is confusing people.

Its really hard to explain everything here on this forum as I cannot name my company or the other so that people can see.

 

[Andrew Chambers]

It's not the same name and there is no logo involved. I can't see what has been infringed.

 

[terry54661]

Our trademarked company name when reversed means the same thing Andrew. The other company is trading selling the same things under our trademarked classes. People are contacting us because they think we are them so others are probably contacting them thinking they are us.

 

[F_B]

If terry54661 has the text "ANGEL GIFTS" registered on its own in the UK for stationary, and the third party is using "GIFT ANGELS" for identical goods (stationary) then the marks are confusingly similar and I think these is a case. However, I would need to see the words to properly assess the situation.

Certainly if terry54661 can show that charities have been confused between the two companies (not that the you are just being asked for donations, but because of the third party's use of the mark charities are seeking you out) there may be a separate passing off case.

 

[terry54661]

So they may be taking our business and leaving us out of pocket due to the confusion in the company names. We have been trading since 2013 they have just started a few weeks ago!

 

[finest123]

Sadly, this is the world we live in today & the only the way to stop this from happening is to get a trademark attorney involved. Its not as clear cut as it should be and it does cost money to defend your rights.

You can see previous cases if you go to IPO site and challenge decision results

some of them are just crazy. I honestly believe some big companies just try and bully you even though they know they have little or no rights at all. We have used Frazer before and would recommend. I wish you good luck & would love to hear any updates