Trading name infringement

[Sanchez]

my limited company has been running since 2009, but recently I've noticed a large high street chain encroaching in my sector to the point that they are offering competing services. I've checked and they registered a trademark (with my company name) in 2012 however the services they listed weren't any related to my business. This coupled with court actions coming through to me as people are confused means I want this resolved.

It has been suggested that I file a TM261 to get this company to cease using my company name however I'm unsure of the process and where I stand...

 

[F_B]

Form TM26I (I think this is the one you mean), relates to applying to invalidate a registered trademark. I don't think that is appropriate here. This is for marks which should never have been registered in the first place.

Do you have any registered rights? If not you will be relying on passing off, which is difficult, although court actions would be good evidence of confusion.

Are you certain this company does not have any registered rights for your name on identical or similar services? Which registers have you checked? If this company has a registered right, for your name, on identical goods then it is unlikely that you will be able to stop them. You will however, have a prior user right to that mark, but it will be limited to your current/historical area of trade.

 

[F_B]

Sorry the above isn't constructive advice. I hadn't woken up when I posted! You need a proper assessment of where you stand. What are your rights, what rights do the other side have? You will then be able to make a sensible judgement on how to proceed.

Simply filing TM26I is unlikely to improve the situation, you would require grounds, such as do you have evidence the trade mark (for unrelated services) was filed in bad faith? As the services are unrelated this seems unlikely.

If, as a worst case scenario, the other side have registered an identical trade mark for similar services, but you have a prior user right to that mark, you should consider having a professional write to the other side outlining the position and your grounds for a passing off action, as an opening gambit and then see what the other side come back with.

 

[Gecko001]

OP are you saying that at the time this high street competitor registered the trade mark, they were not operating in your sector, but now are?

 

[Sanchez]

Yes when originally registered the list of services (and still) don't cover my area but they now offer exactly the same service as me, in addition to their original offering

 

[Steve Small]

I thought it depended whether you were a sole trader or a limited company, or higher.
It was my understanding that if you had registered the name as a sole trader you did so under the understanding that someone else could also use it. However, as a limited company etc. you had more rights as to to who could use the name.

I might be completely wrong but it may be worth checking out.

 

[Sanchez]

We're both limited companies although they are using my company name as a trading name which is different to their parent company name.

 

[Gecko001]

Since they are now in your sector of business, that, I should think, could count towards a claim for "passing off", which applies whether the name is a registered trademark or not. .

 

[Sanchez]

Yes my original feeling was 'passing off' however I was told it was a nightmare to prove and pursue and would cost me a fortune. Being a small business that worries me. I did wonder if the first step was to look at getting their trademark revoked as they're operating in a sector not listed. Oh what to do... One court order against my company was difficult to drop and nearly resulted in a day at court. Not to mention any potential black marks against my company potentially effecting a business loan or new contract.

 

[Sanchez]

Any additional advice here? Being a relatively small business i'm trying to keep things manageable. I've spoken to my business insurance but this isn't something that is covered

 

[Sanchez]

Which registers have you checked?

TBH, i've only looked at IPO but this is probably a red-herring. Where is a good place to start? I've asked around but none of the legal people I know have experience in this sector

 

[Gecko001]

Is this something a no-win-no-fee lawyer would take on?

 

[obscure]

Is this something a no-win-no-fee lawyer would take on?

Almost certainly not. The OP would need an experiences Trademark/IP lawyer and they seldom work that way.

 

[Gecko001]

Almost certainly not. The OP would need an experiences Trademark/IP lawyer and they seldom work that way.

I was not suggesting accident compensation lawyers, but those lawyers specialising in this area. You might get perhaps get a younger lawyer who wants to gain experience in the field and be willing to take on the case on a no-win-no-fee basis if they thought that there could be a good chance of winning. I am not an expert in lawyers in this field though.

 

[Sanchez]

I don't expect people to work for free, I wouldn't. This makes the situation almost impossible from a small business owner POV. It means the big boys can continue to bully us as they know we don't have the resources to challenge

As I don't have much resource is it something I can pursue myself?