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james bruce
james bruce, Solicitor-Advocate
Category: Law
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Experience:  Owner at James Bruce Solicitors
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I have been sent an email re trademark infringement. Would

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Hi, I have been sent an email re trademark infringement. Would you be able to help please?

Pleas go ahead and explain more

Customer: replied 1 year ago.
We have been trading since 2013.
Someone has registered a trademark in the identical name in 2018 in multiple categories but as far as we know isn't trading in any of them or using the name.
Ours and theirs are very similar categories though not identical (retail and wholesale).
Any thoughts appreciated.

When you say they have register a trade mark. What exact up have they registered

Customer: replied 1 year ago.
Specific words that are our trading style.

So do you mean like a quote For example” cooked to please”

Customer: replied 1 year ago.
Very much so. The registration covers a large range of industries, we operate in a very niche one that is a part of one of their registered categories.
Our trading name is "cooked to please" that's identican to their trademark only we have been trading under this name for many years before they registered and our research shows that they've not used this to trade.
if on some platforms our exact three words were taken ,we added variants like specific products or our office location "cooked to please London", "cooked to please goodies", "cooked to please sample box", "cooked to please workshop" and so on. Only the original "cooked to please" is trade marked.
Can we still rtade under our three words, if we can't, can we trade mark one of the listed like "cooked to please London" and continue like that?

Hello, my example was a pure rabbit out of a hat example.
Had you been aware of what they did much sooner, you could have made a challenge

under Relative grounds. This means that there exists an earlier trade mark or earlier right (which does not have to be registered) owned by the opponent with which the applicant’s trade mark would conflict if it were used. Unfortunately you only have a two month window to do that.

Going forward, with the original name, you can apply to the owner and seek permission to use the name. They would want to be paid no doubt.

Next, option, after 5 years, if the trade mark has not actually been used, you can make an application to have it removed due to not being used. ( very much like cyber squatting, where people by names to sell on at high prices)

I have done a quick check on the other names you use on government site, and they are not used, so cannot see why you could not register them.

Customer: replied 1 year ago.
Thank you very much . Is there any way to find out if they have been using it to trade (and would it matter whether they used it but not in the same industry)?
I have found information that states that " Use of earlier unregistered marks will not constitute an infringement of a registered trade mark by its use in the course of a trade in a particular geographical location and where it is protectable by passing off if used continuously before the registration or first use of registered trade mark"Might this apply and how do we enforce it?

Sorry, no way of finding out if used.

Usually, for passing off, there are three necessary elements. Firstly, it is necessary to show that a trade mark, has a reputation, or at least goodwill (this is sometimes referred to as "protectable goodwill"). Therefore passing off cannot be used to protect a trade mark which is new, with little reputation, or where no trade in the UK has taken place. Secondly, it is necessary to show that a misrepresentation has taken place or is likely. This requires that the trade mark complained of must be sufficiently similar to the trade mark of the claimant for a customer to be deceived. Thirdly, there must be a likelihood of damage as a result of the deception.

The existence of these three elements must be proved by evidence, so that a passing off action carries a high evidential burden (in other words you will have to work hard to win), but it nonetheless provides a possible remedy when, for example, there has been blatant copying of a get up, when or a trade mark has not been registered but has substantial use and a reputation.

The practical consequences of the law of passing off

Essentially, the law of passing off means that in choosing a trade mark, you should consider whether there are any earlier relevant registered trade marks (by searching trade mark registers) and also whether there are any relevant unregistered trade marks (by undertaking common law searches such as general internet searches). Just because a mark isn't registered, doesn't mean that you won't infringe by using a similar mark.

A second practical consequence is that if you have not registered your trade mark and find a competitor using a suspiciously similar mark, you may have rights on which you can take action.

Customer: replied 1 year ago.
In conclusion, as we don't have any knowledge of them using the name to trade, the passing off doesn't apply and we can only either pay for the use, alter our name or apply to have theirs removed?
What's the correct procedure for this please?
  1. You can contact them to see what they would charge.
  2. Change your name and register it.
  3. After 5; years you can apply to remove them if they have not used the mark.

I have attached direct link to government site on how to remove maam the form is there as well.

james bruce and other Law Specialists are ready to help you
Customer: replied 1 year ago.
Lovely, thank you so much for all your help and the time invested into this.