Trading Names & Trade Marks

[aip08]

Hello,
I wondered if someone might be able to offer some advice please.

I have a business (ltd company) but we have branched out into some niche areas with a couple of products.

What I want to know is if/how I can adopt trading names to reflect the new niches under my existing ltd cie.

For example, suppose 1 is producing school websites & I have a website schoolwebsites.something (eg .co.uk/.net/.com/etc) - can I adopt schoolwebsites.something or "school websites" as a trading name?

Also, how is this effected if another company has the domain name schoolwebsites.somethingelse & they are also trading in the same niche?

As far as I can see there are no trademarks registered.


I guess what I'm asking really is that if I have a domain name that is the same as someone elses within an industry, except with a different .com/.co.uk/etc, then is there a problem so long as it isn't a trademark, and can I adopt that as a trading name.

Hope that makes sense!

Thanks.

 

[bernielady]

I'm sorry i'm unable to help with answering this thread, but i would be very interested in an answer to your question, as a friend of mine is in this exact situation.

My friend has set up a website with two words in the domain name which are the same as a competitor, for example, my friend's site may be rainbow-clowns.co.uk, but the person already in existance running as another sole trader has the site rainbowclowns.co.uk

My friend's website has been up and running for around a month, and isn't even complete yet, but they have just received a letter from this other person's solicitor saying they are not allowed to trade under the rainbow-clowns.co.uk domain as (quote from letter) The brand "rainbow clowns" is very much associated with our client."

I have since investigated and found no trademarks relating to this other person, and he is not a limited company under the name rainbow clowns.

Note: rainbow clowns is an example and not the actual business/domain name, if anyone is interested then pm me and i'll let you know a bit more.

So as you can see, a similar situation, and one which i can't wait to see if anyone can answer. Hope i haven't hijacked your thread by this reply, not my intention.

 

[aip08]

Thats interesting.

From what I've been able to gather, if you have been trading you potentially have in effect a common law trademark where your brand has some good will, so although no trademark exists, you might still be violating the rights of the other people (I think!).

In my case the other company isn't trading with the same name as the domain name - for example, their website might be boxco(.co.uk) and they are trading as "the box company".

I want maybe boxco(.org.uk) & to trade as boxco.

Its a headache.

 

[bernielady]

yeah, i see your situation too. It's fuzzy ground legally, but my friend's been to see a solicitor today, so will be interesting to find out what they said.

My friend also trades under (for example) funnyrainbowclowns.co.uk which is another domain that this other person is trying to stop them using, even though his website address is only rainbowclowns.co.uk

I think he just has a grudge and is very bitter about everything. My friend used to work for this other bloke you see, and left (because he wasn't happy with the way his boss was treating him, or the customers) and set up himself.

Hope someone answers your original question though, as it will be interesting to hear from someone in the know....BUMP!

 

[aip08]

I'd be interesed to know what your friend has found out too

 

[David Warrilow]

I'm a patent and trademark attorney.

I don't want to post any specific advice here as if your competitors read it and use it against you, I don't want to be open to a negligence case.

The matter isn't straight forward and advice would depend upon the specifics of your situations.

However, there might be things that you and your friends can all do to strengthen your positions.

I can say no more. Please pm me for a free chat if you'd like to discuss.

 

[aip08]

Would this chat then involve parting with money at all?

We don't have attorneys in the UK so I doubt that your advice would be relevant to UK law anyway.

 

[David Warrilow]

Au contraire...

In the UK a patent attorney is a specialist lawyer in the field of patents, and a trademark attorney is a specialist lawyer in the field of trademarks. Both sit rigorous exams to qualify. Please google CIPA and ITMA.

And no, the chat wouldn't involve parting with any money. We all offer free initial consultations.