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Ash
Ash, Solicitor
Category: Law
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Experience:  Solicitor with 5+ years experience
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My question relates to a trademark issue. In 2000, I started

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My question relates to a trademark issue. In 2000, I started selling watches under my own brand label, SMITHS-LONDON (note - this is not the real brand name but, for obvious reasons, I don't wish to reveal what that is. Needless to say, it is a brand name and a city name combined) and I registered that trademark in 2001 with the IPO. Unfortunately, because I had moved premises, I missed receiving a renewal notice, from the IPO, in 2011 and, since I mistakenly believed that the registration lasted 20-years, not 10 as it actually was, I didn't worry. It has now come to my attention that another firm, also selling jewellery (NOTE - jewellery is class 14 for trademark, the same as watches) has registered SMITHS (not SMITHS-LONDON) and is selling jewellery but not watches. My question is simply this, as I have been selling continuously, albeit in low volume, for the past 16-years and, as I did, originally, have my trademark registered, do I have the right to continue using it? Or has the fact that I failed to renew meant that the new owner of a similar tradename can stop me from using my own brand?
Submitted: 11 months ago.
Category: Law
Expert:  Ash replied 11 months ago.

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

Do you have trademarked? Is your logo similar to theirs?

Customer: replied 11 months ago.
My trademark had the words in a specific font and layout when it was registered. Our brand is TEMPEST Geneve. But, my registration of the trademark lapsed in 2001, unfortunately without my knowledge. Someone else has registered the name "Tempest" but written in an entirely different way and using a different font, so it is not at all similar. The only thing that is similar is that the word TEMPEST appears in both trademarks. My question is whether or not our failure to renew our trademark registration means that the new registrant can stop us selling under our own brand name?
Expert:  Ash replied 11 months ago.

No it does not.

You have a history of trading so whilst the mark helps, it is not conclusive.

So just because the mark has elapsed does not waive your right

Can I clarify anything for you about this today please?

Customer: replied 11 months ago.
Our sales over the past few years, since our trademark registration expired in 2011, have not been great (only £10,000 per annum, approx). Would this be an issue if the new registrant of Tempest tried to argue that their new registration meant that we could no longer use our brand name? But, we are about to order a lot of new stock and start a new sales campaign and this is the reason we need to know whether or not we are entitled to continue using our old/established trade name. Thanks for your advice.
Expert:  Ash replied 11 months ago.

Yes I think you have a valid mark and trading history.

If this answers your question could I invite you to rate my answer before you go today, otherwise the site doesn’t pay me for the time spent with you. Thanks in advance and good luck.

Ash and other Law Specialists are ready to help you
Customer: replied 11 months ago.
Our sales, in the last few years (since our registration of TEMPEST Geneve expired in 2011) have not been great; amounting to about £10,000 per annum. But, we are about to order a lot of new stock for a revitalized sales campaign and we are concerned as to whether or not our low sales in the past few years might mean that the new owner of the Tempest brand might be able to argue that our rights to use of the name have been forfeited.
Customer: replied 11 months ago.
OK. Thanks.How much am I paying and how do I do the rating, please?
Expert:  Ash replied 11 months ago.

It should be just a one off fee.

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