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Ash
Ash, Solicitor
Category: Law
Satisfied Customers: 10916
Experience:  Solicitor with 5+ years experience
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I have received a trademark infringement notification

Resolved Question:

I have received a trademark infringement notification against an mobile app that I developed. The app was published in 2012. The company that is claiming infringement received a trademark in 2015. The names differ only in that my app name has a space between two words (i.e., APP NAME,) their app name and trademark is a combination of the two words (i.e., APPNAME.)
Is there any way to contest the infringement? Or should I start thinking of a new name?
Submitted: 1 year ago.
Category: Law
Expert:  Ash replied 1 year ago.

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

Just to be clear, you were trading using this before they were?
Alex

Customer: replied 1 year ago.
Hi Alex,Just for clarification I am not trading as the app name. I have been publishing the app under a separate company name. It appears my app predates any instance of their app on Google, Apple, etc; it also predates their trademark by three years. This should be possible to prove.Do you think it is possible to contest this infringement claim?
Expert:  Ash replied 1 year ago.

Are you in the same industry sector?

Customer: replied 1 year ago.
it's the same sector.
Customer: replied 1 year ago.
In case it's relevant they offered to buy the app name from me around 2-3 years ago. We agreed on a price but they never came back to me.
Expert:  Ash replied 1 year ago.

That makes no different. But if you have the app before they event began to trade you are NOT passing off.

They have to show they traded first - they cant.

Therefore you cant be passing off.
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.
That's enough to be going forward with - many thanks for your advice, Alex.