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Vincent2013
Vincent2013, JustAnswer Expert
Category: Law
Satisfied Customers: 213
Experience:  Qualified solicitor and barrister (non-practising) with 7+ years experience
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Hi we have a club that has been running for 8/9 years. We

Customer Question

Hi we have a club that has been running for 8/9 years. We have made a great reputation for ourselves and its a name that has been in the public domain for 8 years. We have an ex member who is cloning our club, advertising as us, stole google business listings, radio interviews calling himself my club. He has been asked by different people to stop doing this including the police and he won't stop. Is there anything that can be done?
Submitted: 4 years ago.
Category: Law
Expert:  Vincent2013 replied 4 years ago.

Hi, thanks for your question. My name's XXXXX XXXXX I'd be delighted to help you with it.

 

From the details provided it looks like your business name is XXXXX XXXXX by another club in a variety of different media (print, radio and internet) and in a way that could lead customers to believe it is your business or has some sort of legitimate connection with it.

 

In view of what you have tried thus far, the main legal route still open to you is a civil claim. From a legal perspective, the first thing to ascertain is whether your business name is XXXXX XXXXX If you have registered it with the Intellectual Property Office, then it will be a "registered trademark" and the use of it, by anyone else, will enable you to bring a civil action for direct infringement of your intellectual property rights.

 

If it is not registered then it will need to satisfy certain criteria (e.g. it needs to be distinctive enough and not already registered in someone elses name etc.). If these criteria are satisified you may have a civil action for what is called 'passing off'

 

'Passing off' relates to the misappropriation of the goodwill of another business. It includes someone representing themselves as your business and/or representing some sort of connection with it. The key issue would be whether the use of your trademark would confuse a customer into thinking that there was an association between the service offered by that other business and your reputation.

 

To be successful in a passing off claim you must show that: (i) the mark is yours; (ii) you have built up a reputation in the mark (8/9 years certainly sounds satisfactory); and (iii) you have been harmed in some way by the other person's use of the mark.

 

A solicitor should be contacted at the earliest convenience to advise you on your claim and any interim injunction you might be able to seek to stop him right away. She can also advise you on what level of damages are appropriate. The first thing to do would be to have the solicitor write a letter before action to warn the other business that you intend to bring a claim, along with the basis of that claim and what you will be seeking to recover. Your claim would likely be for damages for loss of profit and injunctive relief.

 

I hope that answers your question. If you need any further clarification, please do not hesitate to ask.

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