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tdlawyer
tdlawyer, Lawyer
Category: Law
Satisfied Customers: 1096
Experience:  11 years experience of general practice.
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I am setting up a business as sole trader in the UK and have

Resolved Question:

I am setting up a business as sole trader in the UK and have bought the relevant domain names .com and .uk versions of the name I have chosen for my company for my website, email etc. I have checked with Companies House etc that the business name is XXXXX XXXXX being used /has been registered and the name I have chosen is not already being used here in UK(which it is not). Today however I have found that a similar named business exists in the USA and has website with a very similar domain name to the one I am intending to use and have purchased. Both my business and the US one operate in broadly the same area - however I am going down a much more specialised and specific field within it. Am I doing anything legally wrong if I proceed as originally intended. Many thanks.
Submitted: 3 years ago.
Category: Law
Expert:  tdlawyer replied 3 years ago.

tdlawyer :

Hello, welcome to the website. My name isXXXXX can assist you with this.

tdlawyer :

Do you know whether the name is XXXXX XXXXX?

Customer:

Am unsure

tdlawyer :

Okay, that's worth checking. If it is, you wouldn't be able to use it. You can check it here: http://www.ipo.gov.uk/types/tm.htm

tdlawyer :

Also, does the company you're thinking of using the same name as, have a reputation here in the UK?

Customer:

NO. No reputation here in UK. Very specific to the States.

tdlawyer :

Okay, and practically unknown in the UK then?

Customer:

I would say that it would be very unlikely to be known her in UK.

tdlawyer :

Okay. Then subject to the trade mark point, I expect you should be okay. Even common law actions of passing off, for example, require you to be intending to ride on the back of the goodwill owned by another. If they're unknown here, it's difficult to see how you could be accused of doing that.

tdlawyer :

You do need to check the Trade Mark angle out though.

tdlawyer :

After that, using the domain names is likely to be okay.

Customer:

Ok. Will do. Both names are XXXXX XXXXX they very similar. With regard to Trade Mark does this also apply to similar names?

tdlawyer :

Yes, it does.

Customer:

OK. Many thanks.

tdlawyer :

http://www.legislation.gov.uk/ukpga/1994/26/section/10

tdlawyer :

This sets out the test as to whether there is trade mark infringement - has to be similar and relate to the same goods/services.

Customer:

OK. Thank you.

tdlawyer :

You're welcome. Can I ask whether you're happy with the service today please?

Customer:

Yes am happy. Am aiming at a different specialised niche so think I will be ok but will check trademark situation out.

tdlawyer :

Great. Thank you very much! If you need to ask anything more, just let me know.

Customer:

Think the only other thing I need to think about is whether it will affect me being found on Google etc (ie them being found rather than myself) but guess as I get more listings, website up and running it will help.

Customer:

you have given me more peace of mind though on legal side so thank you.

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