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Ed Turner
Ed Turner,
Category: Law
Satisfied Customers: 1637
Experience:  Director and Consultant Solicitor (Self-Employed) at Ed Turner LLB Limited
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I have received a letter of 'company name objection' from

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Hi there, I have received a letter of 'company name objection' from solicitors representing their client
JA: Where are you? It matters because laws vary by location.
Customer: I'm in the UK
JA: What steps have you taken so far?
Customer: None
JA: Anything else you want the Lawyer to know before I connect you?
Customer: I have called companies house already and they said they didn't feel it was 'same as' but they weren't sure if they had IP on other names?

Hello. I am Ed, a Solicitor qualified in England & Wales with over a decade’s experience in the legal profession advising clients.

I specialise in Commercial Contracts, Business Transactions, Employment, Dispute Resolution, Personal Injury and Road Traffic Law and shall be reviewing your legal problem today.

Regarding the site’s automatic offer of a Premium Service Phone Call, I shall be delighted to talk with you by phone to discuss your issue in greater detail if you accept the offer.

However, if you do not want a phone call, please cancel the offer for a Premium Service Phone Call and you will not be charged extra.

To enable me to answer your query, please provide me with some further information.

What are the two companies' names and registration numbers?

Customer: replied 21 days ago.
Hi Ed, thanks for your response. Unfortunately, I don't think I can go for premium service at this stage

If you do not want a Premium Service Phone Call, do not accept the offer and you will not be charged extra. I am happy to provide you my answer by text on the Portal.

I have not received a notification that you have accepted a Phone Call from my side and therefore you have not been charged extra.

Customer: replied 21 days ago.
Thanks Ed - I haven't accepted the call offer

What are the two companies' names and registration numbers?

Customer: replied 21 days ago.
My company is 12968329, theirs is Phoenix Group Holdings Plc; they say they have registered trademarks containing 'Phoenix', with the word on its own or in conjunction with descriptive elements. They have asked if I can add 'Education' to my company name, but I don't know if thisshould just be the registered name with companies ouse or if it has to be the name i use to trade with

What is the Intellectual Property Office Registered Trademark Number of the trademark under dispute?

Customer: replied 21 days ago.
Hi Ed, I have not trademarked my company name, but they have listed the following trademarks as reason why I should incorporate 'Education' in my company name :
UK00002547848 (Phoenix)
UK00002549371 (Phoenix Group)
UK00002585840 (Phoenix Life)
UK00003199670 (Phoenix Wealth Assurance)
UK00003199678 (Phoenix Wealth Assured)
UK00003199684 (Phoenix Wealth)
UK00003217169 (MyPhoenix)
UK00003217173 (MyPhoenix)
UK00003493686 (Phoenix Advisers)
UK00003493693 (Phoenix Group Advisers)
EU017920651 (Phoenix Group)
EU017920654 (Phoenix Life)
UK00001306768 (Phoenix)
UK00001564248 (Phoenix)
Customer: replied 21 days ago.
I expect that the best thing to do is to change my company name, but I just want to know if that is a change with companies house only, or do I need to change every 'letterhead' etc/name I trade with (and would this include website address also) - thanks

It appears that the other party has served you with a “Cease and Desist and Takedown” Letter reserving their rights under their registered trademark. The two names are ***** ***** that they would cause a risk of confusion in the minds of an onlooker. The trademark owner does not have to prove intention to copy, only that the two works are similar and theirs is protected by trademark and was registered first.

Unfortunately, I believe that you will have to remove or amend your company from your own corporate advertising material.

Registering a piece of Intellectual Property as a Patent, Trademark or Design Right means that it is automatically protected from all other similar designs and the Right Holder does not have to prove deliberate copying by the other party.

Therefore, any argument by you that you came up with the design first will not succeed. You should have registered it as a trademark to gain protection.

Damages for Intellectual Property Rights Infringement Claims are account of profits to the claimant for monies obtained through use of the mark.

You have two options.

You can either continue to use the design and risk the claimant issuing proceedings for a court injunction ordering you to remove the offending material, plus damages, interest and costs.

Or you can remove the offending material and sign an undertaking not to use it in future.

I hope this resolves your enquiry. Please revert to me if you require any clarification of my answer to your question and I shall be delighted to assist.

Otherwise, I shall be grateful if you will please mark your enquiry as “Closed” and give me a “Positive” rating to conclude this matter.

Kind regards

LawyerEd

Customer: replied 21 days ago.
Thanks Ed - much appreciated. I think I will do exactly as they say and change the name. Is this likely to be BOTH the registered name with companies house and the name I use to trade with? Also, would this require me to change my website address?

Yes, you'll need to change your website URL as well.

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