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Ash
Ash, Solicitor
Category: Law
Satisfied Customers: 10916
Experience:  Solicitor with 5+ years experience
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I had a website online that had a trademark name in the website

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I had a website online that had a trademark name in the website address. I wasn't even thinking about the use of the word. Along with that, I had the name on the website itself. A UK Trademark practitioner for this company contacted me about the use of the name and advertised name at the business address. Obviously, I was in the wrong and needed to right my wrongs, thus as soon as I received the email I took the site down, asked the domain to take it off line, etc. However, I do not have a business address as they have stated which has used the name advertising it. Furthermore, I do not live in the UK, but in Turkey, so it seems this practitioner contacted me off the use of the name for being in the UK. I am speaking with this person in a few days as I do not wish to hide as I am not a criminal. The practitioner said he needed to speak with me about the trademark issues. Obviously, they will not go into further detail via email. I am wonder what can I expect, what should I answer, and what outcomes I may face.
Submitted: 2 years ago.
Category: Law
Expert:  Ash replied 2 years ago.
Hello my name is ***** ***** I will help you with this.
How long had you been using the name please?
Customer: replied 2 years ago.

It had been registered since September 2014. Hadn't really been online since February 2015.

Customer: replied 2 years ago.
Relist: Other.
It seems the person went offline right after asking me a query
Expert:  Ash replied 2 years ago.
Sorry because you relisted it, the question dropped off my list.
How much had you made from using the name please?
Customer: replied 2 years ago.

Nothing.

Customer: replied 2 years ago.

Come to think of it maybe $200. But that's it. Nothing was sold. I hadn't started accepting payments.

Expert:  Ash replied 2 years ago.
I assume you are in the UK?
Customer: replied 2 years ago.

No. I live in another country. I put this in my original post. They stated I have a business address in the UK, which I do not.

Customer: replied 2 years ago.

They got the address from a google search but when I search it seems to be a post office place. I have no affiliation with it.

Expert:  Ash replied 2 years ago.
Which country are you in?
Customer: replied 2 years ago.

USA.

Expert:  Ash replied 2 years ago.
Then I would not worry. They can't take you to Court over here, only in the USA. Even if they did get Judgment in the UK its very hard to get it enforced in the USA, especially if they dont know your address.
As the offending matter has happened there, they need to sue you in the USA, not UK.
Can I clarify anything for you about this today please?
Alex
Customer: replied 2 years ago.

I am worried about IP offence in the UK. Could they attempt to do something with this and have it come back on me in the USA? I.e. contact the police? I have taken everything that had the name in it or a picture down, froze the site, etc. Nothing was sold. Would they spend the time and money to do this since I have been in contact with the Trademark Practitioner and not ignored anything? That's my concern. As well, I put in my original post the trademark practitioner wants to speak to me via phone on Wednesday and asked on justanswer.co.uk what can I expect, what should I answer, and what outcomes I may face.

Expert:  Ash replied 2 years ago.
The Police won't do anything, this is a civil matter. There is nothing they can do whatsoever as you are based in the USA. Even if they sue you in the UK it doesnt make any difference. You cant be arrested for this in the UK.
Alex
Customer: replied 2 years ago.

But it says on the gov.uk website it is an offence that has 6 months custody and a fine for unauthorized use of a trademark. I do travel to the UK once every 2 years and do not want an issue when I do return.

As well, I have asked what would I expect to be asked during the phone conversation and what should I answer?

I just don't want the company to try to come after me in the USA when I know they will ask details via phone on Wed.

https://www.gov.uk/government/publications/intellectual-property-offences/intellectual-property-offences

Expert:  Ash replied 2 years ago.
That is where the Patent Office brings prosecutions and that is usually for counterfeit goods etc where they are copying genuine brands.
In this case its a CIVIL matter, non criminal If it was me I wouldnt speak to the person on the phone, you have no obligation to do so.
But they will want to know how much you have made using the mark. If its $200 then that is all you would have to pay - nothing more.
Does that help?
Alex
Customer: replied 2 years ago.

It does help. They said I was advertising the name of their product, and there were pictures (again nothing sold, no way to buy it). Would the pictures constitute copying their brand and thus become a prosecution offence or would they have to have items in their hands to determine this?

Expert:  Ash replied 2 years ago.
Again, this is civil. its not a criminal matter and as such you dont need to worry about getting arrested.
I dont think you need to worry.
Alex
Ash and other Law Specialists are ready to help you
Expert:  Ash replied 2 years ago.
Hi

I am just following up to see if there is anything else I can help with?

If this answers your question might I ask you to rate my answer before you go today please, the button should be at the bottom of the screen.

If you need more help please click reply.

Alex