Trademark/passing-off etc - any lawyers out there?
Discussion
Hi all
Asking on behalf of friend (yes, honestly).
He has been sent a letter from another business asking him to change his trading name (he’s sole trader) at it infringes their trademark.
Won’t use real names, but a close example is:
Friend trades as london speedy tiling. Has done since 2013, and has had website/that domain name the same length of time.
Other business trades as London speedy builders. Have been trading since 1998
Trademark is for “London speedy” and covers anything building related. Trademark has been held since 2015.
They are seeking he change names plus compensation for any work gained by using their trademark. This is obviously none as he really hasn’t gained any work from their name. He could change names easily and it wouldn’t affect him, but the question is does he have to and should he?
Thanks all
Asking on behalf of friend (yes, honestly).
He has been sent a letter from another business asking him to change his trading name (he’s sole trader) at it infringes their trademark.
Won’t use real names, but a close example is:
Friend trades as london speedy tiling. Has done since 2013, and has had website/that domain name the same length of time.
Other business trades as London speedy builders. Have been trading since 1998
Trademark is for “London speedy” and covers anything building related. Trademark has been held since 2015.
They are seeking he change names plus compensation for any work gained by using their trademark. This is obviously none as he really hasn’t gained any work from their name. He could change names easily and it wouldn’t affect him, but the question is does he have to and should he?
Thanks all
StevieBee said:
Mmm. OK. Well, I'm not a lawyer but have been embroiled in similar.
I think your your friend would do well to change his business name, particularly if doing so would have no effect on his business. The simple fact is that the other company holds the trademark for what is effectively the same name in the same industry and - I assume - in the same region.
They started trading way before him so even though the trade mark was registered after your friend started out, they registered it and he didn't.
Would be a very difficult one to contest in my view.
Compensation is a different matter. Legally, I can't see how a representative figure can be determined. I suspect that this is just bluster to get your mate to drop the name. So I'd be pushing back on that but agreeing to the name.
Based on my own experience, I'd suggest he speaks directly to the other company to sort it out. In our case, we had inadvertently adopted a name that was the same bar one letter, as another company working in the same sector although doing very different things. Even a similar logo. Both were trade marked. We'd received a letter from their solicitors but approached the owner at a trade fair / conference. Had a beer, we agreed to change the logo and sorted it out there and then. They even became a client!
They came at him all guns blazing so put his back up a bit! He’s going to reply to say he’ll change the name as a gesture of goodwill, but there’s been no financial gain, so no money on the table.I think your your friend would do well to change his business name, particularly if doing so would have no effect on his business. The simple fact is that the other company holds the trademark for what is effectively the same name in the same industry and - I assume - in the same region.
They started trading way before him so even though the trade mark was registered after your friend started out, they registered it and he didn't.
Would be a very difficult one to contest in my view.
Compensation is a different matter. Legally, I can't see how a representative figure can be determined. I suspect that this is just bluster to get your mate to drop the name. So I'd be pushing back on that but agreeing to the name.
Based on my own experience, I'd suggest he speaks directly to the other company to sort it out. In our case, we had inadvertently adopted a name that was the same bar one letter, as another company working in the same sector although doing very different things. Even a similar logo. Both were trade marked. We'd received a letter from their solicitors but approached the owner at a trade fair / conference. Had a beer, we agreed to change the logo and sorted it out there and then. They even became a client!
I had a similar thing too years ago with someone trading under my name- the letter my solicitor sent them was mysteriously similar to what he’s received. The competitor stopped the passing off as soon as they received the letter. I didn’t push for money, as it had been a very short term thing (matter of weeks)
Grrbang said:
PH stereotype alert - I'm a director at an IP practice. Although I deal with patents/designs, I'd be happy to refer your friend to a trade mark attorney I work very closely with, for a free consultation and quote.
Looks like your friend was using the trade mark before it was registered. I don't know whether that's a slam dunk for your friend or whether there are still residual risks.
Courts can order compensation, and claimants can only request it. At this stage, everything is negotiable even if they have a case against your friend.
Thanks. He’s just decided to change name as doesn’t want the hassle.Looks like your friend was using the trade mark before it was registered. I don't know whether that's a slam dunk for your friend or whether there are still residual risks.
Courts can order compensation, and claimants can only request it. At this stage, everything is negotiable even if they have a case against your friend.
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