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Ash
Ash, Solicitor
Category: Law
Satisfied Customers: 10916
Experience:  Solicitor with 5+ years experience
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I registered the word "Kompact" as a Trade in 2012 on

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I registered the word "Kompact" as a Trade Mark in 2012 for use on portable air conditioners and dehumidifiers after using it unregistered since 2007. I recently discovered a large company using the word "Kompact" on one of its dehumidifiers and wrote to them asking them to desist such use. They have responded by saying they have been using the "unregistered" Mark since 2004 and threatening action for passing off and insisting I should relinquish my registration. What do you advise??
Submitted: 1 year ago.
Category: Law
Expert:  Ash replied 1 year ago.

Hello my name is ***** ***** I will help you.

Do they have any evidence they used this since 2004?
Alex

Customer: replied 1 year ago.
I do not know if they have such evidence but I assume they could create some
Customer: replied 1 year ago.
They are quoting Section 5 (4) a of the 1994 Trade Marks act and threaten action under Section 47 (2 ) b
Expert:  Ash replied 1 year ago.

Are you in the same industry sector?

Customer: replied 1 year ago.
Almost the same. I sell both portable air conditioners and dehumidifiers nationwide. They sell dehumidifiers nationally and internationally. I have used the word Kompact on a whole range of Portable air conditioners that incorporate a dehumidifier function. They have used the word Kompact on one model in their range. I need to know what defences I have to their claim and what they have to prove to be successful in their case.
Expert:  Ash replied 1 year ago.

Could customers be confused between you and them?

Customer: replied 1 year ago.
Our main brand name is " Koolbreeze" and we then sell products in various "ranges" such as the " Kompact " range and the " Climateasy " range. We do sell dehumidifiers that are similar to theirs in both function and size although we do not use the Trade Mark " Kompact" on any units that are solely dehumidifiers at present. Consumers could believe if they see the Kompact mark that it comes from us ( Koolbreeze ) as the brand has been heavily advertised on the web for the last 7 years
Expert:  Ash replied 1 year ago.

Well clearly THEY are not that bothered about it as it has taken them 4 years to discover this. I really would not worry - you have a registered Trademark brand. if they were concerned they would have noticed far quicker than they have. Do not be bullied by them - you have a registered mark, they do NOT.

You are in a stronger position that them. You should write back and ask for independent evidence of trading but point out they have waited 4 years and it was only when YOU brought it to their attention did they do anything.

Can I clarify anything for you about this today please? Alex

Customer: replied 1 year ago.
Given that they are threatening legal action in 14 days unless I ;
1 Cease to use the word Kompact and 2 surrender my Trade Mark registration
I would like to know what defences I can put forward to the fact that they used the word Kompact before me (if that proves true ) because I used it from 2007 but they claim use from 2004. I also want to know what they have to prove to be successful in a "passing of " action.
Expert:  Ash replied 1 year ago.

They have to show that the terms are confusingly similar. That is the test the Court would apply. Your only defence is time - they havent done anything about it and therefore given up their right.

Does that clarify? Alex

Customer: replied 1 year ago.
It does not really clarify what they have to prove for passing off. Surely they have to prove I knew about their product or that they had widely sold it in the period before I started using it ( 2007 ) or other factors?. I would appreciate more detail.
As it is late now, perhaps you could provide it tomorrow
Expert:  Ash replied 1 year ago.

The goods or services in question must have goodwill attached to them. This specifically means that the goods will have particular identifying features or specifics that will enable members of the general public or a specific section of the general public to associate with those particular goods or services.

There must be a misrepresentation on behalf of the defendant that will lead or be likely to lead those members of the general public to believe that the goods offered by him are in fact the goods or services of the other company. Please note that this misrepresentation does not have to be intended it just has to lead the public to believe that.

This misrepresentation damages the goodwill of the claimant.

There is no Statute concerning the law of passing off which has been developed in the UK solely by case law.

This means that there is no legal definition for the above three tests with the most difficult to prove that of goodwill in a product, something which is often described as the consumer attraction to a particular brand. This attraction to a particular brand is what enables different consumers to distinguish between different brands on the market. The problem is that it is a very subjective test as the goodwill associated with one particular company may have very different affects on different members of the general public.

Defences are:

- The claimants mark, slogan etc is not distinctive

- The mark, slogan etc has become generic

- The defendant may be innocently using his or her own name

- The claimant has given consent

Can I clarify anything for you about this today please?
Alex

Ash and other Law Specialists are ready to help you
Customer: replied 1 year ago.
Thank you for your reply. I do not need further clarification
Expert:  Ash replied 1 year ago.

Thanks

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