- Original Poster
- #1
Hi
Me and my wife is setting up a company in the UK and we were considering to trade mark it.
company's history - The idea was developed by my wife back in 2010 when she did her college thesis(i wished she would have patented it back then
). We both are from India. So once she completed her studies in london, she went back to India and established it as a business and trademarked the company in India around 2011(name for example: Janauo). The time when she was trademarking it in India, she found that there was a similar company in finland (name for example: Janau)but it was never registered, it was more of a social media(FB) driven company.I checked the finnish registry and they got registered in 2012 January) So she got her trademark done in India and we still hold it. Both ours and the finnish company are on selling home furnishing. Both the brands are sustainable brands - but ours product and material is as part of our continous research and its superior and eco-friendly than the other one. We have our own production facility in India, they source from manufacturers etc
Fast forward, we got married and we moved to London, and we have to keep the company in dormant state in India as we managed to sell our business to a competitor. We retained the name and the trademark with us.
Now in 2020 we wanted to restart the business here in london, because we both are all about sustainability and we can contribute a lot to the society. Even though we are full time working people, last few months we have been completely focusing on getting it launched. We set up a new company in the UK (name : Janauo Limited) because we used to have international clients back in the India days, hence we wanted to retain the reputation.
Problem and Confusion
We decided to do trademarking with the same name in the UK. So we wanted to trademark our company name and three dictionary words which will qualify what we are all about. Say for example
(name (eg): Janauo blah.glee.bloo). The lawyer advised that its not good to trademark with the logo as there can be situations were we people can have same name and other words and they can put a new logo or else if I have to change our logo, then we might have to trademark again. So decided that I will go with words.
Now our market to begin with is UK. since its an online store, we will ship to EU too provided postage and any duties are paid by the customer. But our company and brand will be head quatered in UK. I told my lawyer about this other finnish company and he said that since we both are in the similar business, there can be an issue because our name sounds almost similar and it means the same too. He checked the trademark regsitry and confirmed that he couldnt find any trademark for that company in the UK. I also checked couple of websites to see if its trademarked in EU or UK. It isnt. So I thought I can go ahead and do it, but this is what my lawyer said.
"
Hi
I could not see any trade marks owned by Janau . However, my concern is that if Janau were ever to find out about your brand, they would accuse you of passing off - these are the unregistered trade mark rights we discussed on the telephone. I say this because JANAUO and JANAU are very similar marks, with identical meaning, and the goods they sell are identical to those which you are considering selling. My suggestion would therefore be to consider a different brand name, before you have incurred costs of producing products branded JANAUO.
Regards
XXX
"
more on what lawyer said over phone
these are the unregistered trade mark rights we discussed on the telephone - this part he mentioned that tomorrow if they can come and complain to the UK trademarks saying that there were few clients whom they had business with decided to come to me because they got confused with the name or they can claim that they had done the brand boost for me well before i came into the market, it can cause an issue(may or may not). This is the case even though they are not registered in the UK or EU.
Dilema and help - this is where i would need help and suggestions from the veterans of this forum.
1. I checked the background of this company, they are small and boutique established in 2012 (after our company in India was officialy trademarked).
2. their Sourcing model is different, their produts are similar, the material used to create those products are different. Our USP is different.
3. If someone go and search our name JANAUO in google it will return details of our India company and our current website.
4. If someone goes and search JANAU - it will return their company but also an israeli company in the same name but something like iamJANAU
5. Our product will have our LOGO and our name JANAUO and the three trademarked words as i mentioned above(blah.blah.glee) and the finnish company's product just has JANAU in a small label.
6. website we have janauo.com and the finnish company has janau.com - there can be a possibility that people can come to us assuming we are them or vice versa. The chances are later because if they only type janau instead of janauo then it goes to them
Since the lawyer had put this thought about unregistered trademark rights, i am in a dilema, to go ahead or not or rebrand this means - i will have to come up with a new name, new logo, new domain etc. Our product is designed and ready to go into production - we can still change and there will be slight delay but if this is going to be a serious issue i dont mind. Just to add - our company in India was always a subbrand of our 30 year old manufacturing unit and we supply to leading UK department stores.
Can someone please suggest - what is the ideal thing to do? shall we go ahead and apply for trademark on our original name or you think we should add another word to it to make it slightly different and we work around the Logo for example
We will Trade Mark as "Janauo home" and put Home as a very small word right next to our big Janaou logo (something like attached)
https://ibb.co/GdHmXB0
regards
V
Me and my wife is setting up a company in the UK and we were considering to trade mark it.
company's history - The idea was developed by my wife back in 2010 when she did her college thesis(i wished she would have patented it back then
). We both are from India. So once she completed her studies in london, she went back to India and established it as a business and trademarked the company in India around 2011(name for example: Janauo). The time when she was trademarking it in India, she found that there was a similar company in finland (name for example: Janau)but it was never registered, it was more of a social media(FB) driven company.I checked the finnish registry and they got registered in 2012 January) So she got her trademark done in India and we still hold it. Both ours and the finnish company are on selling home furnishing. Both the brands are sustainable brands - but ours product and material is as part of our continous research and its superior and eco-friendly than the other one. We have our own production facility in India, they source from manufacturers etcFast forward, we got married and we moved to London, and we have to keep the company in dormant state in India as we managed to sell our business to a competitor. We retained the name and the trademark with us.
Now in 2020 we wanted to restart the business here in london, because we both are all about sustainability and we can contribute a lot to the society. Even though we are full time working people, last few months we have been completely focusing on getting it launched. We set up a new company in the UK (name : Janauo Limited) because we used to have international clients back in the India days, hence we wanted to retain the reputation.
Problem and Confusion
We decided to do trademarking with the same name in the UK. So we wanted to trademark our company name and three dictionary words which will qualify what we are all about. Say for example
(name (eg): Janauo blah.glee.bloo). The lawyer advised that its not good to trademark with the logo as there can be situations were we people can have same name and other words and they can put a new logo or else if I have to change our logo, then we might have to trademark again. So decided that I will go with words.
Now our market to begin with is UK. since its an online store, we will ship to EU too provided postage and any duties are paid by the customer. But our company and brand will be head quatered in UK. I told my lawyer about this other finnish company and he said that since we both are in the similar business, there can be an issue because our name sounds almost similar and it means the same too. He checked the trademark regsitry and confirmed that he couldnt find any trademark for that company in the UK. I also checked couple of websites to see if its trademarked in EU or UK. It isnt. So I thought I can go ahead and do it, but this is what my lawyer said.
"
Hi
I could not see any trade marks owned by Janau . However, my concern is that if Janau were ever to find out about your brand, they would accuse you of passing off - these are the unregistered trade mark rights we discussed on the telephone. I say this because JANAUO and JANAU are very similar marks, with identical meaning, and the goods they sell are identical to those which you are considering selling. My suggestion would therefore be to consider a different brand name, before you have incurred costs of producing products branded JANAUO.
Regards
XXX
"
more on what lawyer said over phone
these are the unregistered trade mark rights we discussed on the telephone - this part he mentioned that tomorrow if they can come and complain to the UK trademarks saying that there were few clients whom they had business with decided to come to me because they got confused with the name or they can claim that they had done the brand boost for me well before i came into the market, it can cause an issue(may or may not). This is the case even though they are not registered in the UK or EU.
Dilema and help - this is where i would need help and suggestions from the veterans of this forum.
1. I checked the background of this company, they are small and boutique established in 2012 (after our company in India was officialy trademarked).
2. their Sourcing model is different, their produts are similar, the material used to create those products are different. Our USP is different.
3. If someone go and search our name JANAUO in google it will return details of our India company and our current website.
4. If someone goes and search JANAU - it will return their company but also an israeli company in the same name but something like iamJANAU
5. Our product will have our LOGO and our name JANAUO and the three trademarked words as i mentioned above(blah.blah.glee) and the finnish company's product just has JANAU in a small label.
6. website we have janauo.com and the finnish company has janau.com - there can be a possibility that people can come to us assuming we are them or vice versa. The chances are later because if they only type janau instead of janauo then it goes to them
Since the lawyer had put this thought about unregistered trademark rights, i am in a dilema, to go ahead or not or rebrand this means - i will have to come up with a new name, new logo, new domain etc. Our product is designed and ready to go into production - we can still change and there will be slight delay but if this is going to be a serious issue i dont mind. Just to add - our company in India was always a subbrand of our 30 year old manufacturing unit and we supply to leading UK department stores.
Can someone please suggest - what is the ideal thing to do? shall we go ahead and apply for trademark on our original name or you think we should add another word to it to make it slightly different and we work around the Logo for example
We will Trade Mark as "Janauo home" and put Home as a very small word right next to our big Janaou logo (something like attached)
https://ibb.co/GdHmXB0
regards
V
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