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Ash
Ash, Solicitor
Category: Law
Satisfied Customers: 10915
Experience:  Solicitor with 5+ years experience
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I have a question on intellectual property - specifically regarding

Customer Question

I have a question on intellectual property - specifically regarding trademarks. Is there anyone here who has knowledge of this?
Submitted: 1 year ago.
Category: Law
Expert:  Alex J. replied 1 year ago.
Hi,
Thank you for your question and welcome.
My name is ***** ***** I will assist you.
Can you kindly provide me with the details of your question?
Kind regards
AJ
Customer: replied 1 year ago.

I own the UK trademark for my brand name as a word mark in two versions - as one word and two.

My brand name is ***** ***** Snooze Shade in classification 12

A competitor in this classification 12 business has started to use my brand name in their title listings on ebay as two words but reversed and separated by other words in the listing sentence - if customers were to search using my brand name as two words they will come up with their listings (of which they have created masses)

The listing they use is as follows

UV SUN BLACK OUT SHADE NAP SLEEP SNOOZE BLIND COVER for BABY BUGGY or STROLLER

Now I understand that it is almost unavoidable to use the word shade in this context - however prior to the launch of my product noone would use the word snooze and shade together.

The only reason you would use the words together now would be to find my brand. I was given a trademark presumably because the words were unusual enough to warrant a trademark.

I can see how they can use sleep and nap as these are not trademarked in connection with the other words used or shade but as my brand is snooze shade is this not a contravention?

Firstly Ebay wouldn't take down the listing as they thought I only had SnoozeShade as one word but even when I showed them I had it in two words they won't take down their listings because they say the other business is not contravening my trademark.

If this is not a contravention then what is the point of a trademark in that specific category?

In my book it would be like saying

'drink cola fizzy bubbly coca' and expecting to get away with Coca Cola not minding

Is it worth pursuing this or am I wasting my time?

Thanks

Expert:  Alex J. replied 1 year ago.
Hi,
Thank you.
I have received this and I am reviewing it now.
I will revert to you as soon as possible.
Kind regards
AJ
Expert:  Alex J. replied 1 year ago.
Hi, Thank you. My apologies for the delay is you TM registered with a logo or just words? Kind regardsAJ
Customer: replied 1 year ago.

I have word mark

(I also have the logo but that is less powerful as logos can change is my understanding)

Expert:  Alex J. replied 1 year ago.
Hi
Thank you.
The problem is Ebay generally will not do anything without a court order.
Do you have any evidence that you have lost custom or had customers become confused? For example if you search the TM words does this listing appear?
Kind regards
AJ
Customer: replied 1 year ago.

Yes ebay is not being helpful ;-)

Yes if you search using my word mark snooze shade then it is the other company's listings that come up - and they have created a lot of listings using this title

Thanks

Cara

Expert:  Alex J. replied 1 year ago.
Hi, Thank you. I will prepare a suggestion of practical steps to take next - this will take me a little while but I will post my response within 24 hrs. Kind regards AJ
Customer: replied 1 year ago.

Thanks

Expert:  Ash replied 1 year ago.
Hello my name is ***** ***** I will help you.
Is the offending Company based in the UK please?
Customer: replied 1 year ago.
Yes they are. Thanks
Expert:  Ash replied 1 year ago.
Have you or a Solicitor written and asked them to stop?
Customer: replied 1 year ago.
Hi
Yes I have emailed them.
They amended their original listing which mentioned the one word word mark in the title and in some other unrelated places (like benefits)
They also copied my packaging copy verbatim and they amended that
But as eBay won't do anything (they say my trademark is kit being infringed) I wasn't sure what to do next
Thanks
Expert:  Ash replied 1 year ago.
You should get a Solicitor to write and ask them to stop or say you will go to Court.
If they refuse then you can issue proceedings for an injunction. You would need to complete form N208:
http://hmctsformfinder.justice.gov.uk/courtfinder/forms/n208-eng.pdf
And N16a
http://hmctsformfinder.justice.gov.uk/courtfinder/forms/n016a-eng.pdf
You are seeking an order that they stop being allowed to list on Ebay and breach your copyright. The Court will list the matter for hearing. if the Court orders they stop listing etc and they refuse, this is contempt of Court and they could be warned, fined or sent to prison.
Can I clarify anything for you about this today please?
Alex
Ash, Solicitor
Category: Law
Satisfied Customers: 10915
Experience: Solicitor with 5+ years experience
Ash and other Law Specialists are ready to help you
Customer: replied 1 year ago.

Most importantly do I have a case? ebay seemed to think not..

Expert:  Ash replied 1 year ago.
I think you do.
Does that help?
Alex
Customer: replied 1 year ago.

hi there - I paid for a telephone call but haven't heard anything subsequently.. is there an update on this? Thanks

Expert:  Ash replied 1 year ago.
Do you have a number?
Alex
Customer: replied 1 year ago.

hi there

details below

Expert:  Ash replied 1 year ago.
Calling
Alex

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