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Ash
Ash, Solicitor
Category: Law
Satisfied Customers: 10916
Experience:  Solicitor with 5+ years experience
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I am running a company which specialises in replacing

Customer Question

I am running a company which specialises in replacing crittall windows with aluminium imitation crittall windows. I have recently been served notice by lawyers representing the Crittall company that we are infringing their trademark name Crittall windows on some of the wording on our website. We have until 28 August to reply.
If you are not familiar, crittall to steel windows is similar to hoover for vacuum cleaner.
My question is this, if we refer to aluminium crittall replacement windows on our website when describing our products, would that be an infringement of their trademark?
We clearly want to promote our products in a way that the public will find our website in terms of SEO (search engine optimisation) without infringing any trademarks.
It is definitely useful from our point of view to use the word crittall in our description. Some companies have changed their description to replacement steel windows, but we would rather not do this if possible.
We could use crittall imitation windows, crittall lookalike windows or crittall replacement windows or any other phrase that implies a substitute product for the original but not the original itself without infringing the trademark.
Please advise.
Submitted: 1 year ago.
Category: Law
Expert:  Ash replied 1 year ago.

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

On what basis have they said you have been infringing?
Alex

Customer: replied 1 year ago.
To discuss via phone you will need to view the email sent to me, which I am happy to send to you. Is this included in the £44 fee and is that in addition to the amount already paid or included?
Expert:  Ash replied 1 year ago.

A phone call is an additional fee, as some customers prefer to talk over the phone.

Customer: replied 1 year ago.
ok but I have already paid £28 or whatever it was with no answer yet, so happy to pay £44 total
or if you prefer I can attach some files for you to look at?
Expert:  Ash replied 1 year ago.

I just need to know the basis on which they say you are infringing. If you dont want a phone call that is fine.

I dont need to look at files, just need to know what the Solicitors say

Customer: replied 1 year ago.
These are relevant files
Customer: replied 1 year ago.
That is all the files they attached to their email to me, so probably easier to read the files
Expert:  Ash replied 1 year ago.

There are quite a lot of documents, please bear in mind you have only paid a limited fee whereas a High Street Solicitor would charge circa £200 an hour.

Expert:  Ash replied 1 year ago.

So they object to you using the name, in short?

Customer: replied 1 year ago.
they seem to object to the use of their name (in short), so my question is whether by using the phrase crittall window replacements, imitation crittall windows or similar phrase, which implies that it is not the original product but a copy or imitation would that be infringing any trademarks
Customer: replied 1 year ago.
PS I am happy to pay more including a phone chat, if you think you can offer good legal advice on this matter!
Expert:  Ash replied 1 year ago.

No. The test is would you confuse a customer between you and them.

If the answer is no, then there is no passing off.

You are therefore only liable for passing off if a customer is going to be confused between them and you.

Can you use the name and say its a replacement - the answer is yes.

Otherwise no one could ever use the word McDonalds, because of the restaurant.

Therefore as long as you make it clear they are replacements and nothing to do with Crittall whatsoever then you will be ok

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

Customer: replied 1 year ago.
Thank you, ***** ***** think the word replacements is clear enough as not to confuse the customer?
If I say that we install crittall window replacements, which is the phrase I want to use, is that clear enough that these are not original crittall windows?
I believe so and I think by your answer you agree that this is a phrase that would not confuse the customer.
Expert:  Ash replied 1 year ago.

Yes I think replacements is clear.

Maybe something which says on your website you are not affiliated with Cirttall would help. But I dont think it would confuse a customer as it stands

Does that clarify? Alex

Expert:  Ash replied 1 year ago.

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Customer: replied 1 year ago.
Hi Alex
Thank you for your answers. We are in the process of modifying our website, including addressing all the points they raise. We have also included a disclaimer on all the pages that mention crittall replacement windows as,"*Please note that we do not install original steel crittall windows, nor do we represent nor are we associated with the Crittall Window company in any way.Rather, we supply & fit replacement aluminium windows in a crittall style that are designed to look similar to an original crittall window and they are double glazed with a thermal break in the aluminium frames and openers."Once all the modifications are done, I will alert their solicitors, although I have sent them a "holding email" in the meantime.
I suspect that they will still say that they are not happy about us using the word crittall at all and that they would like us to change it to steel.
As and when I have received that communication, I will be back in touch for a phone consultation.
Best Regards
Tim
Expert:  Ash replied 1 year ago.

Yes that seems ok! Alex