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F E Smith
F E Smith, Advocate
Category: Law
Satisfied Customers: 9339
Experience:  I have been practising for 30 years.
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We are a company who have been running years We are a

Customer Question

Hi we are a company who have been running for 2 years
We are a register business but did not trademark our company name
A company that has been running longer than us trade marked they're name last month which is very similar to ours now they have sent us a solicitors letter saying we must stop using this name
Where do we stand on this matter
Submitted: 1 year ago.
Category: Law
Expert:  F E Smith replied 1 year ago.

Ignore the fact that you have not trademarked your name and also ignore the fact that they have trademarked their name.

If they have been running longer than you and your name is ***** ***** to their name and if you are in the same type of market, they can make you change the name by alleging that you are passing off as them and trying to trade on the back of their name and reputation..

If you had been running longer than them, even though they trademarked their name, it is unlikely that they would be able to force you to change your name.

The test for whether they could successfully bring a “passing off” action would be whether the average person would look at your identity and look at the other business identity and be confused into thinking that they were the same business.

Can I clarify anything for you?

Please don’t forget to rate the service positive. It’s an important part of the process by which experts get paid.

We can still exchange emails if you wish.

Best wishes.

FES

Customer: replied 1 year ago.
Hi thanks for the reply
Our business is called Irish fight store
And they're business is called
Fight store Ireland
Here is the letter they have had there solicitor send us could you have a read and get back to me
Thanks for your fast reply this is day tomorrow they will start action against us
Expert:  F E Smith replied 1 year ago.

I have looked at the 2 websites and I cannot see how anyone could be confused that one was the same as the other.

I can’t see that clauses 2 or 3 are actionable.

Just because they may be next to each other when someone does a Google search doesn’t mean there is confusion. It may be that your Optimisation is simply better than theirs and gets higher rankings. Clearly, that has niggled them.

Certainly, with regard to item number four, you are not allowed to publish images showing the clients logo.

If you are based in London and they are in Dublin, would need to apply to court in England to get an injunction to prevent you from trading and carrying on with these activities.

Depends how much money they have the risk going to court and how much money you want to risk defending any action.

My suggestion would be to make halfway house proposal whereby you remove any goods from the site which you do not sell and you remove the image of the fighter referred to at 4.

Then, see whether they come back to you saying that you have not gone far enough.

If you want me to word the letter for you, please let me know and I will submit a Premium Services Proposal for you for which there is an extra cost. All you would need to do then is to cut and paste the words into your own letter and send it off.

Customer: replied 1 year ago.
Hi I am happy to go forward with your letter
Just to clarify we are not based in the uk we are also here in Ireland
We had an address on our site that was incorrect dies this make a difference to your last reply
Expert:  F E Smith replied 1 year ago.

Although the RoI and procedures may be different than UK, the underlying and the principles are the same.

My answer remains the same and the wording of any letter would be the same although you would obviously need to tell them that the London address is incorrect and has been changed.

You need to accept the premium services and I will get the wording of the letter for you.

F E Smith and other Law Specialists are ready to help you
Customer: replied 1 year ago.
Hi we went to a corporate solicitor base here in Ireland who advised us that the information you have me I very much so incorrect
We do not need you to draft any letter for us and I would like to cancel this from you
Expert:  F E Smith replied 1 year ago.

Litigation needs at least 2 parties and neither goes to court expecting to lose. Nonetheless, one of them does even though they have been told by their respective legal advisers that they have a good chance of success. He has a different opinion than me.

If your adviser is so confident, make sure that he doesn’t want paying in the event that any litigation does not go in your favour. Make sure that his work comes with a guarantee.

There is no need to reply to the thread otherwise it comes back to my inbox.

Best wishes

Customer: replied 1 year ago.
The solicitor said we would loose the case and not to continue forward
Or we would be wasting up to €20.000
Expert:  F E Smith replied 1 year ago.

I disagree that you would necessarily lose. However what I do agree with is that this is not something that I would want to testing court purely because of the uncertainty of it. This could go either way in front of a judge.

I do not think they have a good case with regard to the passing off. However, that’s not to say that they will not take it to the wire, it costs lots of money and then it could go either way court depending on the whim of the judge.

Court is to be avoided at all costs. It depends whether they decide to go that far.

Customer: replied 1 year ago.
Hi i am requesting a refund
I was lucky i got local advice.
before sending the draft i have paid for and canceled before ts has been sent to me.
I am not saying you are not good at your job but i would recommend asking users where they are from before advising.
Expert:  F E Smith replied 1 year ago.

The law in RoI, NI, Scotland , England & wales is exactly the same. It would come down to what a Judge decidedon the point. If you want 100 guaranteed risk free, then change the name in which case there was no need to ask the question. I will opt out.

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