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Ash
Ash, Solicitor
Category: Law
Satisfied Customers: 10916
Experience:  Solicitor with 5+ years experience
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I own a trademark in the UK Nice classes.

Resolved Question:

Hello.
I own a trademark in the UK for two Nice classes.
A company which is also based in the UK (in fact in only the next county) has just re-branded itself using my trademarked name, and some of the services they offer are the same as those I provide and hold the trademark for in those classes.
I have written to them to advise them that I own the trademark they are using in their new branding. They replied on 15 March and said they would consult with their legal team and get back to me, but I haven�t heard anything further from them and they haven�t removed any of the items bearing the name I�ve been trading under for 11 years from their company Facebook page. Is it possible for you to tell me where I stand legally?
Submitted: 1 year ago.
Category: Law
Expert:  Ash replied 1 year ago.
Hello my name is ***** ***** I will help you.What is it you want to achieve? I assume to stop them?
Customer: replied 1 year ago.
Hi Alex, thanks for your response.
Yes, I want them to stop using my brand if possible.
My main aim is just to find out where I stand legally and whether or not I have the legal right to send a cease and desist letter to them.
Customer: replied 1 year ago.
I'd also like to contact Facebook to ask them to take action over the use of my branding on the company's Facebook page, but I need to know whether I have the right to ask Facebook to do this.
Expert:  Ash replied 1 year ago.
Yes I think you do. Based on what you have said, they are in breach of your IP. I would get a local Solicitor to write and say unless they remove everything within 7 days then you will go to Court.If they refuse then you can seek an injunction to make them remove it. You would need to issue a claim using form N1:http://hmctsformfinder.justice.gov.uk/courtfinder/forms/n001-eng.pdfAnd N16a:http://hmctsformfinder.justice.gov.uk/courtfinder/forms/n016a-eng.pdfThe court will list the matter for hearing and decide whether to make them take it down. If the Court does and they refuse this could be contempt of Court which they could be warned, fined or sent to prison.Can I clarify anything for you about this today please?Alex
Customer: replied 1 year ago.
Hi Alex.I am concerned about the other company attempting to turn the tables on me.I have read that if I contact social media platforms hosting this company's page and make a complaint, the company using my trademark can sue me for damaging their reputation. Obviously I don't want this, so I need to know for sure whether I can go ahead and contact both Facebook and the company's domain name host without fear of legal reprisal.
Expert:  Ash replied 1 year ago.
Yes but you can also using WIPO for domain disputes:http://www.wipo.int/amc/en/domains/Does that help?Alex
Customer: replied 1 year ago.
Thanks. It's not actually the domain name that I have an issue with as it reflects the company's original name (Rowan Agency). It's the fact that they have recently re-branded and put content on their website and social media platforms (and in huge signs all over their new office) which is may own trademarked name (Rowan Creative). Can I request that a domain name host can insist on certain content being removed from the site, again without fear of a legal backlash from Rowan Agency?
Expert:  Ash replied 1 year ago.
You can ask but cant insist. They can only remove with a Court order. Does that clarify? Alex
Customer: replied 1 year ago.
Yes, thanks. So in essence I am legally entitled to ask social media platforms to remove the content that I believe infringes on my trademark, but neither Facebook, the domain name host or Rowan Agency need to comply with any of my requests without a court order. Is that right?
Expert:  Ash replied 1 year ago.
Correct.If this answers your question might I invite you to rate my answer before you go today, otherwise the site does not credit me for the time spent with you. Good luck and have a great weekend. Alex
Ash and 2 other Law Specialists are ready to help you
Customer: replied 1 year ago.
Thanks, ***** ***** do.
Expert:  Ash replied 1 year ago.
Thanks! Alex