Hypothetical question - Protecting trade name
Discussion
We have a limited company, and we also trade with the same name. So for the sake of this discussion, let me call myself TheCarpetCleaner Cleaners (to our customers and our invoices), and we also own the company name TheCarpetCleaner Ltd, and also assume we own the name TheCarpetCleaner.co.uk
Now if another small business set up in the next town and called themselves TheCarpetCleaner. This company does not look like they are doing it maliciously, and also it looks like they have done no research at all.
We do not own the trademark do TheCarpetCleaner, we have applied before but cannot get it due to someone holding it (but they are not bothered by us, they hold it for a different type of cleaning - we checked).
So as it stands -
We do not hold a trademark for our business name, but theoretically, neither would they or could they.
We have been trading successfully using the company name
We hold the domain name
We hold the Ltd company name
We did not find them several years ago upon doing extensive google searches and companies house searches and other local / national searches.
So if this situation occures, would we be able to protect our trade name, or is it a case of a long drawn out legal battle?
Just curious should the situation arise
Now if another small business set up in the next town and called themselves TheCarpetCleaner. This company does not look like they are doing it maliciously, and also it looks like they have done no research at all.
We do not own the trademark do TheCarpetCleaner, we have applied before but cannot get it due to someone holding it (but they are not bothered by us, they hold it for a different type of cleaning - we checked).
So as it stands -
We do not hold a trademark for our business name, but theoretically, neither would they or could they.
We have been trading successfully using the company name
We hold the domain name
We hold the Ltd company name
We did not find them several years ago upon doing extensive google searches and companies house searches and other local / national searches.
So if this situation occures, would we be able to protect our trade name, or is it a case of a long drawn out legal battle?
Just curious should the situation arise
There are a few misconceptions about 'trademarks'.
Here is a basic rundown of the score:
Once you start using a name and build a reputation even this affords you protection. If a company after this time uses the same or similar name for a similar service you can take action against them for 'passing off'. That means that:
1) You are losing business because of it, as customers are confused or:
2) They are unfairly gaining business playing off your reputation.
On top of this you can also register your trade mark. This is a process which takes a few months, but when finished it offers you more protection. Whereas above the onus is on you to prove the similarity and the losses, with a registered trademark infringement use of the mark is protected in itself in law.
In this situation the former is true. You have rights, but you need to assert them. Your example is interesting as if you tried to defend your 'ownership' as it were of 'The Carpet Cleaner' then this would be impossible as is is so descriptive and not distinctive.
This is where the devil is in the detail:
Is your mark distinctive, and would a potential customer get confused? That is the first bridge you need to cross. If so, then a bit of detective work on their size and the amount of time they have been trading is called for. If they are pretty new or small, then with a properly worded letter they will most likely just chance their name. Job done.
Here is a basic rundown of the score:
Once you start using a name and build a reputation even this affords you protection. If a company after this time uses the same or similar name for a similar service you can take action against them for 'passing off'. That means that:
1) You are losing business because of it, as customers are confused or:
2) They are unfairly gaining business playing off your reputation.
On top of this you can also register your trade mark. This is a process which takes a few months, but when finished it offers you more protection. Whereas above the onus is on you to prove the similarity and the losses, with a registered trademark infringement use of the mark is protected in itself in law.
In this situation the former is true. You have rights, but you need to assert them. Your example is interesting as if you tried to defend your 'ownership' as it were of 'The Carpet Cleaner' then this would be impossible as is is so descriptive and not distinctive.
This is where the devil is in the detail:
Is your mark distinctive, and would a potential customer get confused? That is the first bridge you need to cross. If so, then a bit of detective work on their size and the amount of time they have been trading is called for. If they are pretty new or small, then with a properly worded letter they will most likely just chance their name. Job done.
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