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Alex J.
Alex J., Solicitor
Category: Law
Satisfied Customers: 3695
Experience:  Solicitors 2 years plus PQE
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We have been told by the solicitors Corporation that

Resolved Question:

we have been told by the solicitors for Intel Corporation that we must change our newly registered company name from Actual-Intel Ltd as it infringes their trademark. They have also said we cannot change it to Actualintell Ltd as this still includes the word "intel". could you please advise whether this is correct and where we can get advice on what name we can use. thank you.
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. Do you trade in similar goods or services to Intel? Kind regards AJ
Customer: replied 1 year ago.
No, Intel produce computer technology I understand, and we are an online knowledge testing company
Expert:  Alex J. replied 1 year ago.
Hi, Thank you you are potentially trade mark infringement - s.10 of the Trade Mark Act 1994 (3)A person infringes a registered trade mark if he uses in the course of trade a sign which—(a)is identical with or similar to the trade mark, and(b)is used in relation to goods or services which are not similar to those for which the trade mark is registered,where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. It is probably not worth having a dispute with Intel over this as they may have a trade mark over the name. I cannot check the Trade Mark register at the moment because the site is down. That aside do you have a logo that goes with your proposed name?
Customer: replied 1 year ago.
yes and this bears no resemblance to Intel logo.
do you agree we cannot change it to Actualintel Limited.
Our other option is to change to Easton Skills Ltd but the word Easton also appears in the trademark register in various forms including as a german sportswear brand. How do I get advice as to what is acceptable. I need to open a bank account next week as we cannot trade until this is done. I don't want to change the name and get another letter in a few weeks saying I cant use it!!
Expert:  Alex J. replied 1 year ago.
Hi, Thank you. S.10 of the Trade Mark Act 1994 details what is considered Trade Mark infringement - in theory if your logo bears no resemblance to another TM, you do not trade in similar goods and services and there is no confusion in the eyes of the public as to the source of the goods or services then you should be able to use that name. The problem with the TM system is it relies on fact and self policing, it is Intels prerogative to protect their Trade Mark and often they can rely on their financial muscle to challange this. There is nothing to say that if your logo is unique enough and there is no risk of confusion you cannot use the name, but then you would have to be prepared to stand up to Intel. Have Intel used external lawyers?
Customer: replied 1 year ago.
Yes they have. Nabarro who appear to be policing the companies house register for them.
We have not even published our logo. it is just the use of Intel or even Actualintell they are objecting to.
we thought their objection to the latter name was a bit overkill and bullyboy?
Expert:  Alex J. replied 1 year ago.
Hi, Thank you. Have you asked them to explain on what grounds they believe the name is ***** ***** client's rights?
Customer: replied 1 year ago.
No!, they are a very large company with lots of muscle and we didn't feel discussing it with them would achieve anything
as they will just say their client is right and "see you in court" otherwise!
Expert:  Alex J. replied 1 year ago.
Hi, Thank you. ***** of the Trade Mark Act 1994 there is a prohibition against making baseless threats of Trade Mark infringement and the solicitors can be held liable for the costs.Why dont you write back and say they have failed to explain how you infringing any trade mark. Say they have an obligation not to bring baseless threats and you will not hesitate to take action your self. Say you have a unique logo and there is no chance of any confusion in the eyes of the public. If you then decide to go ahead an use the name, it may be worth getting some external advice from a Trade Mark attorney as to whether you would be able to register your own logo. Kind regards ***** ***** groundless threats of infringement proceedings.(1)Where a person threatens another with proceedings for infringement of a registered trade mark other than—(a)the application of the mark to goods or their packaging,(b)the importation of goods to which, or to the packaging of which, the mark has been applied, or(c)the supply of services under the mark,any person aggrieved may bring proceedings for relief under this section.(2)The relief which may be applied for is any of the following—(a)a declaration that the threats are unjustifiable,(b)an injunction against the continuance of the threats,(c)damages in respect of any loss he has sustained by the threats;and the plaintiff is entitled to such relief unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned.(3)If that is shown by the defendant, the plaintiff is nevertheless entitled to relief if he shows that the registration of the trade mark is invalid or liable to be revoked in a relevant respect.(4)The mere notification that a trade mark is registered, or that an application for registration has been made, does not constitute a threat of proceedings for the purposes of this section.
Customer: replied 1 year ago.
Thank you AJ
do you think their objection to us using Actualintell is unreasonable. it seemed the perfect solution to us but they came back within the hour and said we cannot use intel or intell in any form. If we just find something else how do we check it is ok to use? e.g if we use Easton Skills Ltd as this is where we live there are lots of companies using similar names and a german trademark appears for the name Easton. for sportswear.
Expert:  Alex J. replied 1 year ago.
Hi Thank you. ***** registered in the UK or the EU? Unfortunately I cannot check this until Sunday as the site is down. I would ask the Intel solicitors to actually prove how you are infringing the Trade Mark, otherwise you may consider your rights under S.21. Ultimately if there is no confusion in the eyes of the public then there is a good chance that there is no infringement. Will you try and register the name or the logo - bare in mind it is easier to register a name with a logo especially if it is distinctive.
Customer: replied 1 year ago.
It might just be EU from memory but they are also serviced by Nabarro solicitors which is why i am particularly nervous of using this.
we hadn't planned to register either name or logo, only to register the company with Companies House.
do you think their objection to us using Actualintell ltd is unreasonable?
Expert:  Alex J. replied 1 year ago.
Hi, Thank you. I think it is entirely unreasonable on the grounds that they have not actually explained why they believe the name was infringement of Trade Mark. Whether their objection is founded or not they need to explain this to you. You need to explain to them that without a proper explanation you feel they are abusing their position and you will consider either reporting them to the SRA and reserve your rights under S.21.
Customer: replied 1 year ago.
I would like to do that today but need to get back to the office and read their letter again to make sure of my facts.
If I email them on Monday is it ok to run their response by you then?
can I email this conversation or print it to pass it on to my partner?
Expert:  Alex J. replied 1 year ago.
Hi, Thank you. No problem. I will look out for it. I would be most grateful if you would rate my answer in the mean time? Kind regards AJ
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