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JGM
JGM, Solicitor
Category: Law
Satisfied Customers: 12530
Experience:  30 years as a practising solicitor.
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My company is called Hire A Mermaid UK - I offer

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My company is called Hire A Mermaid UK - I offer professional mermaids and freedivers for children's parties and cooperate events. Someone who is also in the mermaid business (and who I know personally) has just changed her company name from "The English Mermaids" to "Book A Mermaid UK" which is clearly the same name as my company except using a synonym for the first word. My website is www.hireamermaid.co.uk and she has just bought www.bookamermaid.co.uk - I have been running my business since 2014. I am registered with companies house and I've done my trademark application (currently waiting for confirmation) so my question is once my trademark comes through can I send a cease and desist? She made the change on Wednesday (2 days ago) so I am keen to nip this in the bud. I have already had 3 messages asking if this is an extension to my business.
She has not yet registered with companies house nor trademarked the name. Any advice would be greatly appreciated, Thank You

To be clear: you have applied to trademark the name “Hire a Mermaid” and are waiting for that to come through. Are you sure it will be granted. The general rule is that a descriptive name won’t be granted by the IPO. So you may not get the trademark at all. I think it might be better to run a case like this on the basis of passing off. In other words this person is passing off your business and the public are likely to be confised because of the similarity in the names. The CH registration will help to a degree but the main issue is whether she is passing off your business and you would have to establish that in evidence. The first stage is for a cease and desist letter to be issued by your solicitor. Not by you. It has to be done on the correct form so as to be referred to in any subsequent proceedings. These type of cases are not easy and not cheap. From what you have said a trademark argument will fail. You will have to concentrate on passing off as a remedy. I hope that helps. Please leave a positive rating so that I am credited for my time.

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Customer: replied 3 months ago.
I knew that trademarking was a risk - as you said with descriptive names. I wasn't aware of "passing off" so this has indeed been very helpful. Thank you!