company using very similar name deliberately...
Discussion
We run a small family business which has been going since 1976. Lately we have had loads of customers saying 'I see you have changed your phone number' and then pointing out an advert in the local rag for a very similarly named company advertising exactly the same work we do which is specialise in Oil fired heating. This has actually been going on for quite some time though.
I'd rather not give specific names but as an example, We are (random village name used) Hothfield Heating Ltd. This other chap is registered as Hothfield Plumbing services but here's the trick, he advertises as Hothfield Plumbing & Heating services, and doesn't even live in Hothfield but another village 10+ miles away. Given the choice of advertising location, our specific village, and using the word Heating in his name which is not in his registered company name, we feel he is trying to capitalise on our long standing name and business.
I have had a customer who called him thinking they were phoning us, and the other company didn't say they were us when asked, but equally were very careful in wording to not make clear they weren't us and indeed a totally different company. The guy is not Ltd and has been trading for 7 years now.
I appreciate anyone can use certain names within reason but this seems far more calculated than a coincidence as all people see is Hothfield & Heating and presume its us who are Hothfield Heating Ltd.
Anything we can do to try stop this ? If its a case of lawyer up and enter battle we will just leave it be as we have more work than we could ever cope with. Its more annoying than anything else.
I'd rather not give specific names but as an example, We are (random village name used) Hothfield Heating Ltd. This other chap is registered as Hothfield Plumbing services but here's the trick, he advertises as Hothfield Plumbing & Heating services, and doesn't even live in Hothfield but another village 10+ miles away. Given the choice of advertising location, our specific village, and using the word Heating in his name which is not in his registered company name, we feel he is trying to capitalise on our long standing name and business.
I have had a customer who called him thinking they were phoning us, and the other company didn't say they were us when asked, but equally were very careful in wording to not make clear they weren't us and indeed a totally different company. The guy is not Ltd and has been trading for 7 years now.
I appreciate anyone can use certain names within reason but this seems far more calculated than a coincidence as all people see is Hothfield & Heating and presume its us who are Hothfield Heating Ltd.
Anything we can do to try stop this ? If its a case of lawyer up and enter battle we will just leave it be as we have more work than we could ever cope with. Its more annoying than anything else.
I think you might struggle when the names are so generic (based on description), and there's a fairly large gap between your name and theirs. Are their logos and colours the same as yours?
Ultimately a letter from a solicitor is going to be the minimum you'll need though, they're not likely to stop if you ask nicely.
Ultimately a letter from a solicitor is going to be the minimum you'll need though, they're not likely to stop if you ask nicely.
I'm not an expert or legally trained, but there is a "tort of passing off" which protects against misrepresentation.
I managed to get caught up in a similar situation a few years back, but paid a solicitor to handle it all for us, and it was resolved pretty quickly. The other party changed their name and also agreed not to optimise their web pages or SEO for terms that used our company name or variations of it.
I seem to remember it cost about £750 in letters and time to sort it out, but as with anything legal-esque, your results may vary!
I managed to get caught up in a similar situation a few years back, but paid a solicitor to handle it all for us, and it was resolved pretty quickly. The other party changed their name and also agreed not to optimise their web pages or SEO for terms that used our company name or variations of it.
I seem to remember it cost about £750 in letters and time to sort it out, but as with anything legal-esque, your results may vary!
Meoricin said:
I think you might struggle when the names are so generic (based on description), and there's a fairly large gap between your name and theirs. Are their logos and colours the same as yours?
Ultimately a letter from a solicitor is going to be the minimum you'll need though, they're not likely to stop if you ask nicely.
The advert is presented in a way that several long term customers have noted it and mentioned it thinking it was us, to the point they almost argued with me ! He doesn't use logos and is a generic box style advert. Ultimately a letter from a solicitor is going to be the minimum you'll need though, they're not likely to stop if you ask nicely.
S11Steve said:
I'm not an expert or legally trained, but there is a "tort of passing off" which protects against misrepresentation.
I managed to get caught up in a similar situation a few years back, but paid a solicitor to handle it all for us, and it was resolved pretty quickly. The other party changed their name and also agreed not to optimise their web pages or SEO for terms that used our company name or variations of it.
I seem to remember it cost about £750 in letters and time to sort it out, but as with anything legal-esque, your results may vary!
That's exactly what we feel is happening, he is using a name close enough to misguide people into thinking they are phoning a 40 year old family run business, rather than some one man band with 7 years experience. I managed to get caught up in a similar situation a few years back, but paid a solicitor to handle it all for us, and it was resolved pretty quickly. The other party changed their name and also agreed not to optimise their web pages or SEO for terms that used our company name or variations of it.
I seem to remember it cost about £750 in letters and time to sort it out, but as with anything legal-esque, your results may vary!
Being generic would only really excuse the other company if they were also in the same village...
Sounds like breach of trademark, if not a registered trademark, then a different situation, but still breach of the mark under which you trade and therefore your trademark... test tends to be whether the average punter on the Clapham omnibus would be confused, i.e. an average member of public...
As you have concrete examples of clients being confused, ask them to record that that, then get a solicitor to write them a letter, if you needed to take them to court and were to win you could potentially claim any income they have made while misusing your trademark...
You have to act fast or you are deemed to have allowed it...
Much easier if your name is a registered trademark but if it isn't it will be easier to register it after sorting this out...
Sounds like breach of trademark, if not a registered trademark, then a different situation, but still breach of the mark under which you trade and therefore your trademark... test tends to be whether the average punter on the Clapham omnibus would be confused, i.e. an average member of public...
As you have concrete examples of clients being confused, ask them to record that that, then get a solicitor to write them a letter, if you needed to take them to court and were to win you could potentially claim any income they have made while misusing your trademark...
You have to act fast or you are deemed to have allowed it...
Much easier if your name is a registered trademark but if it isn't it will be easier to register it after sorting this out...
Sounds like passing off, so the question is what you are going to do about it. Getting one of your confused customers to give a call to their local trading standards organisation might be one route -- certainly cheapest for you. The alternative is to go after him in the courts and the 10k that it will cost you to do it properly.
The trouble with walls, like intellectual property, is that they are only as good as the man with the gun standing on top of them.
The trouble with walls, like intellectual property, is that they are only as good as the man with the gun standing on top of them.
7db said:
Sounds like passing off, so the question is what you are going to do about it. Getting one of your confused customers to give a call to their local trading standards organisation might be one route -- certainly cheapest for you. The alternative is to go after him in the courts and the 10k that it will cost you to do it properly.
The trouble with walls, like intellectual property, is that they are only as good as the man with the gun standing on top of them.
That's exactly it, what are we going to do about it. We certainly don't want to get involved in long running legal wars over it. We have more work than we can cope with and turn work down daily. What does concern me though is he is not exactly regarded as particularly good. The last thing we need is people having work done by him and then telling people not to use those 'Hothfield Heating muppets' The trouble with walls, like intellectual property, is that they are only as good as the man with the gun standing on top of them.
akirk said:
Being generic would only really excuse the other company if they were also in the same village...
Sounds like breach of trademark, if not a registered trademark, then a different situation, but still breach of the mark under which you trade and therefore your trademark... test tends to be whether the average punter on the Clapham omnibus would be confused, i.e. an average member of public...
As you have concrete examples of clients being confused, ask them to record that that, then get a solicitor to write them a letter, if you needed to take them to court and were to win you could potentially claim any income they have made while misusing your trademark...
You have to act fast or you are deemed to have allowed it...
Much easier if your name is a registered trademark but if it isn't it will be easier to register it after sorting this out...
That is the most annoying thing, he doesn't live in the village of which name he operates under. While it may not have been entirely deliberate , it certainly feels like it. Sounds like breach of trademark, if not a registered trademark, then a different situation, but still breach of the mark under which you trade and therefore your trademark... test tends to be whether the average punter on the Clapham omnibus would be confused, i.e. an average member of public...
As you have concrete examples of clients being confused, ask them to record that that, then get a solicitor to write them a letter, if you needed to take them to court and were to win you could potentially claim any income they have made while misusing your trademark...
You have to act fast or you are deemed to have allowed it...
Much easier if your name is a registered trademark but if it isn't it will be easier to register it after sorting this out...
We are not a registered trade mark, just a Ltd company, He is neither. I don't know how long he has been using Hothfield Plumbing and Heating rather than his actual name of Hothfield Plumbing services. As soon as the word Heating is added to Hothfield it suddenly sounds too much like us who are Hothfield Heating Ltd. I have at least 3 customers who argued blue with me that it was our advert they were showing me. I pointed out that the phone number was not ours and we didn't advertise in that publication.
280E said:
Has the other party been trading under the 'disputed' name for 7 years?
That I don't know, Even on the OFTEC company website he is registered as Hothfield plumbing services. One idea is to place an advert explaining the issue? I'd think it would be important to phrase it to avoid sounding like 'sour grapes', or making it look like your business is in trouble because of them (ie. they are better/cheaper etc). I assume the newspaper won't take any responsibility or action for the other company but they might do a deal on the price?
Out of interest, where do you stand if it's not anything nefarious, but just happens to match up? For instance, there's a garage a couple of miles down the road from me that shares my (not massively common) surname as their business name.
So if I, as Mr XYZ, open a garage as "XYZ Garage", do they have grounds to ask that I change my name to, for instance "Dave XYZ Garage" to differentiate? Or are they just out of luck, because I really am called that, and it's my garage?
So if I, as Mr XYZ, open a garage as "XYZ Garage", do they have grounds to ask that I change my name to, for instance "Dave XYZ Garage" to differentiate? Or are they just out of luck, because I really am called that, and it's my garage?
InitialDave said:
Out of interest, where do you stand if it's not anything nefarious, but just happens to match up? For instance, there's a garage a couple of miles down the road from me that shares my (not massively common) surname as their business name.
So if I, as Mr XYZ, open a garage as "XYZ Garage", do they have grounds to ask that I change my name to, for instance "Dave XYZ Garage" to differentiate? Or are they just out of luck, because I really am called that, and it's my garage?
IIRC, a bar in New York City called "Sinatra's" was forced to change its name under pressure (not sure what form, exactly!) from Ol' Blue Eyes's estate. This, despite it being the owner's proper birth surnameSo if I, as Mr XYZ, open a garage as "XYZ Garage", do they have grounds to ask that I change my name to, for instance "Dave XYZ Garage" to differentiate? Or are they just out of luck, because I really am called that, and it's my garage?
You can be made to change if you are seen to be passing off / in breach of a trademark - i.e. if you are confusing the public (or the business's market) into thinking that you are them...
You can also be made to change if the other side has bigger lawyers / wallet than you
the two in theory are not linked
You can also be made to change if the other side has bigger lawyers / wallet than you
the two in theory are not linked
sOld Merc said:
A similar thing happened to me when I had my own car repair business.My solicitor sent them this letter and they soon changed things.
EXACTLY the example I was after, I knew I remembered seeing it before hand. Thank you.Gareth79 said:
One idea is to place an advert explaining the issue? I'd think it would be important to phrase it to avoid sounding like 'sour grapes', or making it look like your business is in trouble because of them (ie. they are better/cheaper etc). I assume the newspaper won't take any responsibility or action for the other company but they might do a deal on the price?
We had thought of placing a larger advert with our logo in a manner as such there can be no confusion. We will also seek legal advice and try get a similar letter to the above sent out and see how it goes. Not one for bully tactics but I can see how a Sole Prop would look to take on a long established Ltd company, it wouldn't be worth the legal expense I wouldn't have thought. Thank you for the advice and comment, I will update once we make some progress.
Regards
Ultimately, as others have said, this is 'Passing Off', although IP claims are difficult (and expensive) to make, and are rarely straight forward.
Definitely start with a properly worded Cease and Desist letter, but if you are ignored, or get back a negative response, you then have a bigger decision to make. Put up, or shut up. In your mind, it absolutely must boil down (no pun intended) to how much goodwill (measured financially) you 'own' in your name, and how much '££' you may lose to the one-man-band. If the answer is 'a lot' and 'a lot' then be prepared to spend a few thousand £ to take it further. If the answer to either is 'not much' then honestly, no matter how much it grates, it isn't worth trying to force the issue as you'll end up paying your own (substantial) costs for very little gain.
Definitely start with a properly worded Cease and Desist letter, but if you are ignored, or get back a negative response, you then have a bigger decision to make. Put up, or shut up. In your mind, it absolutely must boil down (no pun intended) to how much goodwill (measured financially) you 'own' in your name, and how much '££' you may lose to the one-man-band. If the answer is 'a lot' and 'a lot' then be prepared to spend a few thousand £ to take it further. If the answer to either is 'not much' then honestly, no matter how much it grates, it isn't worth trying to force the issue as you'll end up paying your own (substantial) costs for very little gain.
Have you thought about trying to register your company name as a trademark? With evidence of use going back to '76 you may be able to convince the registry that whilst the mark is somewhat generic it has acquired sufficient distinctiveness to be registrable. It would be much easier to stop someone infringing a registered mark than to attempt to run a passing off action.
Give the Institute of Trade Mark Attorneys a call and ask them for details of a local firm. Most TM attorneys will be happy to give you a steer on your prospects of registering a mark before they start charging you. They would also be a better bet if you did decide to send a cease and desist letter as they'll be more au fait with the ins and outs (of which there are many) of TM/Passing Off litigation than your average small town solicitor.
Good luck.
(BTW, I am a patent attorney with a general knowledge of TMs, but I'm not a TM attorney. I'm also not your attorney)
Give the Institute of Trade Mark Attorneys a call and ask them for details of a local firm. Most TM attorneys will be happy to give you a steer on your prospects of registering a mark before they start charging you. They would also be a better bet if you did decide to send a cease and desist letter as they'll be more au fait with the ins and outs (of which there are many) of TM/Passing Off litigation than your average small town solicitor.
Good luck.
(BTW, I am a patent attorney with a general knowledge of TMs, but I'm not a TM attorney. I'm also not your attorney
)Forums | Speed, Plod & the Law | Top of Page | What's New | My Stuff