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Jamie-Law
Jamie-Law, Solicitor
Category: Law
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Experience:  Solicitor
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We are a small company, Thetank Ltd, and were contacted by a

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We are a small company, Thetank Ltd, and were contacted by a fashion magazine called Tank regarding trademark infringement.
We have taken it down from our online presence but our logo was similar to theirs and we are now currently working with a designer to create a new logo to create separation from Tank magazine.
Below is the main body of the email we received from their solicitor :
"Dear Sirs
We act for Tank Magazine (www.tankmagazine.com ) and its owner/director Masoud Golsorki.
Our client is the owner of the following UK and EU trade marks for the word TANK and associated logos:
http://www.ipo.gov.uk/tmcase/Results/1/UK00002431759
http://www.ipo.gov.uk/tmcase/Results/1/UK00002378150
http://www.ipo.gov.uk/tmcase/Results/4/EU010932151
http://www.ipo.gov.uk/tmcase/Results/4/EU013235312
Our client’s UK trade mark registrations for the word TANK and associated logo date back to 2006 and 2004 respectively.
This email is to put you on formal notice of our client’s trade mark registrations.
Please revert to us as a matter of urgency regarding your usage of the word TANK for creative services at www.thetank.co.uk.
We reserve fully our client’s rights and remedies in this regard.”
This email was caught in spam but they followed up with another email :
"We refer to our formal written notice of our client’s trade mark rights to you in 2015 (forwarded below). Further to sending this notice to you, we were contacted by your lawyer, Clive Ritch at Law Bite, on a tentative, without prejudice basis. We made it very clear to Mr Rich that our client was not unreasonable but that they required you to rebrand within a reasonable time to a name that would not infringe its registered rights. Mr Ritch advised us that he would discuss the matter with you and revert, which he did not.
We note that you have continued using the name TANK in relation to your business ever since, in relation to services covered by our client’s trade mark registrations below. The form of your logo is also almost identical to our client’s well-recognised and protected logo.
You operate in the same market as our client and you are using an identical brand to that protected by our client. Accordingly, you are undeniably infringing our client’s trade mark rights. You have continued to do so for almost a year since formal notification of these rights and accordingly our client can only conclude that you are doing so deliberately and in bad faith. Infringement of a trade mark would entitle our client to claim damages from you in relation to your infringement or an account of your historical profits from all trade under this brand. Our client is also entitled to an injunction to prohibit you from any further use of its brand.
We would urge you to revert to us as soon as possible with your written confirmation that you will immediately cease and desist from all further use of the mark TANK in relation to the services protected by the trade mark registrations below and with your further proposals for the satisfactory resolution of this matter."
We have responded letting them know we are looking at re-branding but we’re looking to get some advice on what the minimum requirements are for us to no longer infringe on their trademark. Would we be able to still use the word Tank but have a logo completely different to theirs? What if we were to add a word after tank?
It would be great to get your thoughts on the and advice on ways moving forward.
Many thanks
Matthew Haysom
Submitted: 14 days ago.
Category: Law
Expert:  Jamie-Law replied 14 days ago.

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

What is it you want to achieve please?

Customer: replied 7 days ago.
Hi JamieMany thanks for your response.Ideally we would like to keep our limited company name of 'Thetank Ltd', change the logo so its nothing like theirs and to then also add in the word 'studio' so people refer to us as Tank Studio. The domain name would be 'tank.studio' and the logo would also have the word studio included.We have suggested adding the word 'team' after the word Tank, so we would be Tank Team, to them before but they replied saying they felt it was too vague. But from a legal stand point are we doing enough? I'm not worried about what they think of it, I just need to know if legally we have done enough for them to stop chasing. Many thanks,Matthew
Expert:  Jamie-Law replied 7 days ago.

Are you in the same industry sector please?

Customer: replied 7 days ago.
I don't believe we are. They have a group, 'tank form' http://tankform.com/the-group/ , of companies offering different services. One of these companies is called Tank The Agency that is a creative agency so its fairly similar but we're more into the post production side of things.Thanks
Matthew
Expert:  Jamie-Law replied 7 days ago.

Ok - if you are not in the same industry sector then you do not need to worry.

If you were running a fast food restaurant and called McDonalds that would be an issue.

But that does not mean every business with the name McDonalds in it is infringing on the trademark.

What about the airline maker McDonald Douglass, or the builders?

So the test in Court would be this - is a consumer going to be confused between you and them

If you use a different logo and in a different industry sector the answer will be no.

Therefore reply back saying that - its a different industry sector and logo. A customer will not be confused

Can I clarify anything for you about this today please?

Jamie-Law, Solicitor
Category: Law
Satisfied Customers: 1289
Experience: Solicitor
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