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James Mather
James Mather,
Category: Law
Satisfied Customers: 22629
Experience:  Senior Partner at Berkson Wallace
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I have been threatened by a company over the use of a tradename

Customer Question

I have been threatened by a company over the use of a tradename but I have used that name before they registered it
Submitted: 4 years ago.
Category: Law
Expert:  James Mather replied 4 years ago.
Thank you for your question here on Just answer. It is my pleasure to try and assist you with this today. Please bear with me if I need to ask for any further information from you in order for me to be able to advise you fully. My name is Law Denning and I am a practising solicitor. I have been an expert on this website in UK law since 2008. During that time, as you appreciate, I have answered thousands of questions from satisfied users on a variety of subjects.
Because we are all in practice with clients and court and other users, I might not always respond in minutes, particularly evenings and weekends. Please bear with me in that case. I will be online and off-line all day most weekdays and weekends.

Could you explain your situation a bit more? How long have you used the name? Are they exactly the same or just similar?
Customer: replied 4 years ago.

The word is "maxim" they have used it for about 14 years we have used it for about 12 years but they only registered it in about 2006 which is about 7 years after we have been using it


it is used by both companies making contact lenses

Expert:  James Mather replied 4 years ago.

Why has this only cropped up now?

Has the letter come from solicitors or from them?

What is the substance of the threat?

Do you operate in the same area or have any customers the same?

Does your letterhead or website in any way resemble theirs?

Can we have the full background detail please?

Customer: replied 4 years ago.


  1. Not sure why this has cropped up now

  2. Yes the letter came from a solicitor

  3. They are saying that if we stop using the names sign a document and give them information as to how many and who we have sold them to they would not take any action.

  4. We both do operate around the UK with some same customers.

  5. We do not promote the names in any way at all and do not show on website or company documents

  6. They use the word Quantam and we use Quantem, and also we both use the word Maxim but we used it at least 10 years before they trademarked it. We only use those names on an order form when an optician asks for that particular design which is a generic design and not unique. We do not promote it.

Expert:  James Mather replied 4 years ago.

Are they a lot bigger than you or are both your company is the
same size?

Do you have evidence of having used this name for 10 years?

Customer: replied 4 years ago.

Yes they are a big American corporation worth in the billions


Yes we have evidence of using the name's

Expert:  James Mather replied 4 years ago.

Thank you.

There are several issues here which include:

The trademark.

The trading name.

Their net worth.

They cannot register a trade mark of a trading name already used
by someone else and expect the law to uphold them using it particularly, if you
have already been using it for many years prior to that.

I think if they went to court on this, ultimately (I emphasise the
word "ultimately") they would lose.

Unfortunately, if they are worth that amount of money, and they
decide to take you to court, even though ultimately, you might win by virtue of
the fact you have been trading for years, it could be an expensive exercise to
get there. I would check your business insurance to see if you have legal
expenses cover that would pay for any litigation.

There is the issue of passing off your business is theirs and
whether your trading style is so close to their trading style that the average
man in the street would be confused. That is nothing to do with the Trade Mark
and to be honest, it is also nothing to do with the fact that you have now been
trading for 10 years and they have been trading for 12 years so in that respect,
you are not on good ground unless they have manipulated their trading style to
make it like yours so that they could then remove you from the market in
passing off action. That would come down to historic evidence.

It really comes down to how important the use of these names is to

If it is not that important, I would get a solicitor to write to
them telling them that you agree to stop using it without making any admission
that you are in any way liable for anything. At this stage in time, I wouldn't
be giving any of the information they have asked for because at this stage in
time, they are not entitled to it. I would then see what happens.

If it is important, you could have an expensive legal battle which
ultimately you might win and if you do win you would get your costs back from
them but it could be expensive to get there

Does that answer the question?

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