Trademarked after I named my business

[Multimum1]

Hi,
I’m new to this site. Looking for some advice.
I set up my business in April 2016. After thinking long and hard about it, couldn’t think of a name. So my mum had a great idea and gave me the name I use now.
I checked with Companies House, and against Trademarks and there was none in England, Scotland or Wales with the same name. Albeit there was someone with something similar, but over 300 miles away from me, so there was no chance of confusion. He’d also included the area where he was covering.. ie ‘Blahblah Poole’. So I chose ‘Blahblah Cleaning Services’
I’m a sole trader.. a very small company-/ its just me.
I now live on an island in Scotland.
My business came with me and I use the same name. I have built up a great reputation here (which I had where I lived previously). but it’s only island wide - I’ve no intention of working on the mainland at all.

I’ve just had an email from a guy saying that he is the owner of the other company and that I’m infringing section 37 of intellectual property office of xx/xx/2016. He states he has exclusive rights to use ‘Blahblah’, and that he is effectively going to sue me. His email was quite threatening (although his spelling and grammar mistakes lessened the impact somewhat)
However.. I set up my company and registered with HMRC BEFORE he trademarked the word.. and I was assured as a Sole Trader I didn’t need to trademark my company name.
I am over 600 miles away from him, have no chance of being mistaken for his company, have a great reputation that will not reflect badly on his company ( who has previously gone into liquidation), I have a limited audience due to where I live, and if you google ‘Blahblah’, it only brings his company up, not mine.. aside from some other people who use it for music groups/acting etc.
Is he right? Do I have to change my name? Or can I call this on a technicality??

 

[obscure]

.....I set up my company and registered with HMRC BEFORE he trademarked the word.. and I was assured as a Sole Trader I didn’t need to trademark my company name.

This was bad advise. You can and should have Trademarked your name regardless of if you were a sole trader or Ltd.

 

[The Byre]

Unfortunately, he owns the trademark privately and therefore that fact that he has taken his tinpot company into liquidation (I looked them up) has no bearing on this issue. He owns the 'BlaBla' bit of the name so he could, in theory, take legal action. As he has only registered the 'BlaBla' bit and you are both doing the same thing, he might just succeed - though looking at his books tells me that he is probably 'all mouth and trousers'.

Given that the name is really not the greatest, why not change it to the name of the island? (And this time, register the damn thing!)

 

[surreyaces]

Were you actually trading under the name before the date at which he filed his trade mark application or had you only made preparations to trade under the name at that time?

 

[Multimum1]

Were you actually trading under the name before the date at which he filed his trade mark application or had you only made preparations to trade under the name at that time?

I was actually trading. Set everything up (HMRC/Facebook/bank etc) on 20th April.... Started officially trading 22nd April... he trademarked 29th April. Very tight timeline.. but I was definitely going before he trademarked...

 

[Mr D]

He filed 29th April?

 

[fisicx]

Or was the trademark awarded on 29 April?

 

[Multimum1]

He filed 29th April?

Yes.. trademarks.ipo.gov.uk site shows it was filed 29th April 2016.., section 37.. which is building construction repair and installation... and apparently Cleaning comes under that.
I do a few houses and holiday cottages... and no way will encroach on him at all!

 

[Multimum1]

Or was the trademark awarded on 29 April?

No.. filed.

 

[Multimum1]

Or was the trademark awarded on 29 April?

05 August 2016
Registered
27 May 2016
Application Published
21 May 2016
Pre-Publication
29 April 2016
Examination
29 April 2016
Application Received

 

[surreyaces]

You run domestic cleaning services? Can you copy the list of services that his registration covers on class 37?

 

[Multimum1]

You run domestic cleaning services? Can you copy the list of services that his registration covers on class 37?

Building construction; repair; installation services; installation, maintenance and repair of computer hardware; painting and decorating; cleaning services

However, I’ve just been on a website to check all trademarks in Class 37, and his is not there... yet it’s is registered in IPO....
So how can I tell if he’s right or if I’m right?

 

[surreyaces]

On the face of it, you are on the back foot here. The trade marks sound as if they are similar and his is protected for cleaning services, which is exactly what you do. I doubt you will have built up any protectable goodwill in the one week period that you traded prior to the filing of his application. However, there are a number of different factors at play here and if the name is important to you, you might want to seek some proper advice.

 

[The Byre]

Even if this issue were not there, I would drop the name and use the name of the Island. The current name is just not a good one.

However -

As for the time-line, Mr. TMT has two registrations, both for the same name but with slightly different logos. The earlier registration took place 22 May 2015 and the application was received 23 February 2015. That predates the OP's setting up in business by more than one year!

Both our OP and Mr. TMT are in the cleaning business and it even states 'Domestic and Commercial Cleaning' above his modest one-window shop (between a carpet shop and a tandoori place).

The whole object of registering a TM is so that someone else cannot use that mark for similar or the same type of business or product. So it's (Island name) Cleaning Services here we come!

(All names and identifying details withheld to protect the daft!)

 

[Robin @ SH&P]

It's difficult to give a rounded view without all the full facts but one thing that has occurred to me is that you might be entitled to counter sue on the basis of an "unjustified threats" action (Section 21 of the Trade Marks Act 1994). It does depend on the facts of the case and the wording of the letter you received.

Registering a company name or securing a domain gives you no trade mark rights at all. It is all about using the trade mark in actual commerce.