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Ask Alex J. Your Own Question
Alex J.
Alex J., Solicitor
Category: Law
Satisfied Customers: 3757
Experience:  Solicitors 2 years plus PQE
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We have been running a company called XXXXXXX XXXXXXXX

Customer Question

We have been running a company called XXXXXXX XXXXXXXXX since November 2002 and in 2005 we also started XXXXXXX XXXXXXXXX XXX. We have just been approached by a company that has registered XXXXXXX XXXXXXXXX as a trade mark in June 2012, they are telling us that we must stop using the name! Do we have a good case to fight these people over this?

Submitted: 4 years ago.
Category: Law
Expert:  Alex J. replied 4 years ago.
Hi

Thank you for your question and welcome to Just Answer.

Do you both trade in similar goods and services?

Are your business logos similar?

Kind regards

AJ
Expert:  Alex J. replied 4 years ago.
Hi

Just to give you a back ground answer this is potentially Trade mark infringement if they have a registered TM.

However there is a general defence under s11 (3) of the Trade Mark Act 1994. If you have previously used an unregistered mark. You would have to be able to demonstrate a goodwill and loyalty to your business name in your locality.

If you can provide me with the information above I am happy to discuss this further.

Kind regards

AJ
Customer: replied 4 years ago.

Hi,

They are a company called XXXX XXX XXX XXX and it looks like they have registered XXXXXXX XXXXXXXXX as a trade mark in June 2012. It looks like they have just put XXXXXXX XXXXXXXXX under their logo on their website.

 

We have continuously traded as XXXXXXX XXXXXXXXX since 2002 although we didn't register the name as a trade mark, we didn't really see the need. I guess we were wrong!

 

We have also owned the web address's xxxxxxxxxxxxxxxx.xx.xx and xxxxxxxxxxxxxxxx.xxx continuously since 2002

 

 

We feel like they are just trying to steal and trade on our good name.

 

We sell toys and costumes and XXX XXXXsell similar.

 

What can we do?

 

 

 

 

 

 

Expert:  Alex J. replied 4 years ago.
Hi

Thank you.

You really need to go and see a solicitor as any of the action I can suggest will have far more gravitas coming from a solicitor.

I don't think they will necessarily succeed against you for infringement as you have a trading history they may well be guilty of passing off.

You need to get a solicitor to write back to them and demand that they cease all action. Say you have an established trade and goodwill under that name for more than ten years and this is nothing more than a cynical attempt to obstruct your business. If they continue to pursue you it you will consider your options to bring an action for passing off.

I think the fact that they have done this could also have cost consequences for them as technically you are not allowed to just bring vexatious claims especially where it could have such a detrimental effect to someone's reputation.

Kind regards

AJ