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JimLawyer
JimLawyer, Solicitor
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Experience:  Senior Associate Solicitor
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We have an issue regarding a club night. We were planning to

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Hi, we have an issue regarding a club night. We were planning to host a club night in London on the 4th October under the name 1-800-D-I-S-C-O. We found out later that a DJ under this name (or similar he is called 1-800-Disco) is playing around the corner the same night. He reached out and asked to change the name or move the night (his name isn't trademarked). We understood where he was coming from and changed the name to 020-DISCO. He is now threthaning to take us to court unless we move the club night, which we have had booked for months now. Does he have a leg to stand on? Thank you!
JA: Have you talked to a lawyer about this? In which country do you live? If different, which country is your legal question related to?
Customer: No, haven't talker to anyone yet. Live in the UK and the problem is related to the UK
JA: What steps have you taken so far?
Customer: no steps taken so far, we would like some advice first
JA: Anything else you want the lawyer to know before I connect you?
Customer: all information has been provided thank you

Hello, my name is ***** ***** I am a qualified lawyer happy to help you today.

Do you know how long he has operated under that name for? Does he insist you cannot use the term "DISCO"?

Customer: replied 3 months ago.
Hi Jim, Thank you for getting back to me. He is stating he has been using the name since 2017 and that we are not allowed to use even the 020-DISCO name. Please find attached his letter.
Customer: replied 3 months ago.
this is the second part of the letter

Thanks, ***** ***** take a look at those now

Customer: replied 3 months ago.
thank you!

They seem to say that the word "disco" cannot be used by anyone else - that name is ***** ***** to be trademarked. They talk about passing off which is a common law scenario in unregistered trademarks. I will type out the rest of the answer - please bear with me.

Customer: replied 3 months ago.
Thank you so much, no rush.

They also seem to say "020" cannot be used as they think this will cause with "1800" and that the general public are likely to be confused.

They can demand that you stop using your business name due to "passing off", which as I have pointed out already is a concept in common law (for unregistered trademarks) which means your company sounds very similar to their established company and likely to cause problems for them with confusion among the public and possibly reduced trade.

Passing off causes a problem if you both operate in a similar or the same industry and if their established business has been trading for several years. The court also asks whether the name is "likely to cause confusion" among the general public. Geography comes in to it too - if the businesses are not miles apart then it may well cause an issue too. The court weighs up all these factors and if the established company sues, the court may well agree and tell you to change your company name.

There are no specific laws in relation to this - the passing off question has been devised by the courts over the years but bear in mind if they take issue with your proposed name then they will be able to ask the court for an injunction (which costs £308 to apply including their solicitor's costs and they will ask for an order that you pay, assuming their injunction is successful).

In terms of next steps you can propose to them that the word "disco" is a generic term and their client cannot possibly hope to allege you have infringed that element of the name. The "020" number is ***** different to 1-800 or 1800 as a prefix, but it would come down to the court's interpretation as to whether this is too similar and likely to cause confusion. It is an objective question - so the judge will ask themselves whether the 020-disco is too similar to 1800-disco. There is a chance that they would think it was one and the same company.

His company has only been running for just over 2 years - so it is not a long-established company. That will not help them. You can ask them why their client has failed to trademark to ensure his rights are preserved - I presume it is because he has not bothered or not appreciated the value of intellectual property in a name. Your defence would be that the claimant's mark is too generic with the word "disco" and the fact he is not running a well-established business, so proving actual loss will be difficult for them (and proving misrepresentation will also be difficult to do).

The best way forwards would be to point out the above in reply to the solicitors (this is only guidance by the way, not legal advice or intended to be taken as legal advice on this website) - and suggest that your client has not proven his loss (or a likely indication of his loss) among the other arguments I have listed. You can propose to change the numbers in the name, but that the word Disco will not be changed as it is a generic term which cannot be trademarked.

I hope this helps - if you can please accept the answer and give me a 5 star rating (there should be a button at the top of your screen to do this), I can answer follow up Q&A's at no extra charge and Just Answer will credit me for helping you today.

Many thanks,

Jim

Let me know if this helps and if you have further queries regarding this.

The letter is the typical threatening type from a law firm and they will appreciate (hopefully) they will have some difficulty with their client's case - the fact they say they will bear their own legal costs is suggestive that they do not have a cut and shut case.

Customer: replied 3 months ago.
Thank you so much for sending this over. Very helpful!

No problem, if you suggest a different prefix to the word Disco - and I would not change the night or cancel it for fear of their letter - they have an uphill and expensive way forwards if they want to risk it for the sake of one night. You could point this out too that it's only for one night and has been booked for a while - that you did the courteous thing and contacted their client first - and that he cannot hope to lay claim on the word Disco going forwards.

I hope I have answered the question for you. If so could you kindly rate the answer (5 stars at the top of your screen). It won’t cost extra to give the rating and I will be credited for helping you.

Many thanks,

Jim

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Customer: replied 3 months ago.
that's what we have thought as well, it is just ridiculous they would take us to court for this. Thank you for your help and of course I will rate your answer.

No problem, I would definitely reply to them though and set out your arguments. Whether you change the name or not is your choice - if it will not cause too much disruption then change it. If it's a one-off event then all the more reason why they shouldn't take any action either.

Have a good day