Is this an infringement?

[General Madness]

A relative has a page named X on a social media platform.
They use this page to advertise their part time 1 off creations for which they are paid.

This has been used on and off for a period of more than 2 year and at the beginning there was no record of anyone trading under that name X.

My relative has now been contacted via the same platform by someone who has now been trading under the same name X but for the last 6 months only.
This person has now registered the name as a Ltd company and basically told my relative to change their page name.

If it makes a difference. My relative trades locally in Scotland only but this new person has set up a domain etc.. they are in England.

Can anyone offer advice? Is my relative at risk of any legal action ?

Thanks in advance

[mike_e]

It would be a problem for the new company if your relative was X limited, companies house would normally prevent two Ltd. companies from have the exact same title. In your relatives case, they are 'Relative' trading as 'X', so legally different entities. If your relative had X registered as a Tradename then again, the new company would have problems. They might still be able to do this if X limited hasn't beaten them to it. I stand to be corrected but don't think there's much chance of legal action being taken.

That said, it reminds me of a local kit car manufacturer who produced a product called the 'Sierra'. Ford later introduced their new model. Needless to say, the company with the deepest pockets won the right to the name. Ironically, the kit was based upon a MkII Escort.

[JapanRed]

I can’t offer any definitive advice I’m afraid however I would imagine that if they (the newcomers) have a company registered under that name then they will have legal rights over its use and will probably be able to stop your friend from using it.

I don’t think length of time using the name is important in law. The law will likely be concerned over official use of it which comes back to the other person having registered it.

[V8mate]

Turn the tables.

I ran a small Ltd company in England for about 3 years. Thought I had a unique name. I was in the process of stopping trading (had landed a good PAYE role) and received a letter from lawyers representing an Australian company, who felt that my name was too close to a trademarked IP product of theirs. (similar, not identical)

Ignored the first letter. Then came a 'we will sue you' follow-up. So I called their UK solicitor, said that I had set up in good faith, that his client had no UK trademark registered (they had an EU one for their version of the name), and said that, rather than them spend a large amount of money pursuing me through the courts, I would relinquish the name... if they paid me to do so. Was very clear that I kept the company bank account empty, so there was no chance of them ever seeing a reimbursement of their legal fees if they won in court.

So we agreed that ten grand was an appropriate fee to address the expenses of me rebranding my business, and I handed the rights to the name and the web domain over. And didn't rebrand because I never had any intention of doing so.

[Simpo Two]

I wouldn't roll over immediately, but write them a letter to the effect: 'Sorry chum, we used this name first (show evidence); if you are concerned about the matter (1) it's unfortunate you didn't check first, (2) suggest you consider changing your company name' etc. They might go away, who knows.

[Grrbang]

If your relative was doing it first, they should have the right to continue with what they were doing. However, this right could be geographically limited or limited to certain goods/services, so there is the potential to be screwed over in future.

Pre-emptive legal advice is always going to put them in a better position, even a free chat.

I work in intellectual property but not in this area - feel free to PM me if you'd like the details of a colleague (trade mark attorney) for a chat.

[pingu393]

Just curious...

I was told to write a letter to my new company and post it recorded delivery, as this would show the company was operating on a certain date. I still have the unopened letter in the safe.

It sounds like it was the waste of a stamp as the company isn't limited.

[Equus]

mike_e said:

...it reminds me of a local kit car manufacturer who produced a product called the 'Sierra'. Ford later introduced their new model. Needless to say, the company with the deepest pockets won the right to the name. Ironically, the kit was based upon a MkII Escort.

The kit car company was Dutton, but my understanding is that they in fact won the right to continue using the Sierra name (and continued manufacturing the model until 1989) because the court judgement ruled that kit cars were a separate category of product to assembled cars.

[Simpo Two]

pingu393 said:

I was told to write a letter to my new company and post it recorded delivery, as this would show the company was operating on a certain date. I still have the unopened letter in the safe.

It sounds like it was the waste of a stamp as the company isn't limited.

Then I'm afraid it isn't a company, and I herewith demote it to 'business' The letter might be useful one day though.

[ReverendCounter]

General Madness said:

My relative has now been contacted via the same platform

I wouldn't be worried in the slightest about getting a message via FB (if I had an account) telling me to change a business name. And there would also be a good possibility that, dependent on the content of any solicitors letter I'd be ignoring that as well.

I think if it got to the point that the matter was discussed in a civil hearing, you would find the judge sympathetic given the existing trading history of your relative under 'brand X' so to speak.. But as BV72 would not say, IANAL (I Am Not A Lawyer).

However, V8mate makes a very good suggestion.

[anonymous-user]

Ignoring correspondence is never a good look.

Have a discussion with the other side and find out what the issue(s) are. Go from there.

[ReverendCounter]

RonaldMcDonaldAteMyCat said:

Ignoring correspondence is never a good look.

I would say that this isn't correspondence unless proven otherwise - it could be nothing more than a wind up by some idiot.

If a business wants to put forward a legally based grievance (for want of a better phrase) to another business then they should adopt a more formal approach, like use the platform to ask the other business for an address so they can put things to them in writing.

This other business is asking another to stop trading under their current name. That's a fairly big ask. Formalise your grievance or go forth would be my response.

[JQ]

ReverendCounter said:

RonaldMcDonaldAteMyCat said:

Ignoring correspondence is never a good look.

I would say that this isn't correspondence unless proven otherwise - it could be nothing more than a wind up by some idiot.

If a business wants to put forward a legally based grievance (for want of a better phrase) to another business then they should adopt a more formal approach, like use the platform to ask the other business for an address so they can put things to them in writing.

This other business is asking another to stop trading under their current name. That's a fairly big ask. Formalise your grievance or go forth would be my response.

Good luck telling them to go forth. FB will just pull the offending page, they’re under no legal requirement to host the page.

[akirk]

A trademark is simply a mark of trade - i.e. something used by a business to trade...
if your relative has been trading for several years under that name, then they own that trademark and can request the other company to stop using it...

registering a trademark helps and changes the significance of it, but is not a legal requirement - the minute you start to trade then you have history in that mark... if others recognise you as the person behind that mark, then effectively it is yours...

the fact that they have registered the name as a Ltd. Co. gives them no extra legal rights over the name, though it helps them more formally show their use - however a Ltd. Co. on its own is not a sign of trade anyway... so gives no rights to a trademark...

if the circumstances are as you say then a trademark attorney could help your relative retain the trademark if they consider it worth the effort - ultimately they will be in the right, but winning may go to whoever puts in more energy / money!

your relative can tell them to stop trading under the mark they have used...

[anonymous-user]

If it's as I suspect and a low value hobby business, have a conversation with the other party and come to a pragmatic agreement. You will spend more time than you make profit arguing. Ignoring little problems tends to make them bigger problems later on.

[megaphone]

Slightly off topic, I always wondered why apple . co . uk always used to put me through to a UK based advertising company. Apple finally got hold of it in 2012, UK company changed its domain. Wonder how much Apple paid?

https://www.theregister.com/2012/07/19/apple_gains...

[Grrbang]

akirk said:

registering a trademark helps and changes the significance of it, but is not a legal requirement - the minute you start to trade then you have history in that mark... if others recognise you as the person behind that mark, then effectively it is yours...

'effectively it is yours' does not provide quite the same level of protection as registering a mark.

One problem is that the reputation you build up could be geographically limited. If someone later registers a similar mark covering the whole of the UK, they may cause problems if you try to expand your business to other regions of the country. This may seem unfair but there are many scenarios in which it isn't.

Another problem is that you may only acquire a reputation selling something very specific. If someone later registers a similar mark for selling other products/services that you might want to sell in future, they may stop you from releasing new product lines that you thought were only slightly different from what you were previously selling. Again, this may seem unfair but sometimes it isn't.

Another consideration is the practicalities of policing competitors. If you have a registered mark, you can get notified when other companies apply for similar marks, giving you the chance to oppose. In addition, it's much easier to prove infringement than to rely on the unregistered right (passing off). If you accuse someone of passing off, the response from their trade mark attorney will often say that you have done nothing to show that you will pass the legal tests for a passing off action. You will then find out what's involved in proving a passing off action, and then probably give up.

[akirk]

Grrbang said:

akirk said:

registering a trademark helps and changes the significance of it, but is not a legal requirement - the minute you start to trade then you have history in that mark... if others recognise you as the person behind that mark, then effectively it is yours...

'effectively it is yours' does not provide quite the same level of protection as registering a mark.

One problem is that the reputation you build up could be geographically limited. If someone later registers a similar mark covering the whole of the UK, they may cause problems if you try to expand your business to other regions of the country. This may seem unfair but there are many scenarios in which it isn't.

Another problem is that you may only acquire a reputation selling something very specific. If someone later registers a similar mark for selling other products/services that you might want to sell in future, they may stop you from releasing new product lines that you thought were only slightly different from what you were previously selling. Again, this may seem unfair but sometimes it isn't.

Another consideration is the practicalities of policing competitors. If you have a registered mark, you can get notified when other companies apply for similar marks, giving you the chance to oppose. In addition, it's much easier to prove infringement than to rely on the unregistered right (passing off). If you accuse someone of passing off, the response from their trade mark attorney will often say that you have done nothing to show that you will pass the legal tests for a passing off action. You will then find out what's involved in proving a passing off action, and then probably give up.

Fair points - however, it isn't as big a difference as all that...

if you are not yet selling items you might wish to sell one day, granted you can apply for a mark in the relevant class, but if you don't then trade in that class yet - you are at risk of losing that mark, you can't just register a mark to sit on it they have to be linked to active trade in the relevant product / service / category

ref geography - again, the same applies when registered, if you then only sell your product to the residents of your street, such that no-one else is aware that you trade under that mark - you can lose the right to the mark elsewhere...

if someone has a trade mark attorney, hopefully they would be doing some decent research on whether the mark is in use before starting to use it / infringe on it - if the mark is sufficiently traded that their use is an infringement, then you would expect there to be discoverable evidence of that...

Registering a trademark is a help in that it stacks the arguments more convincingly on your side up front - however, that doesn't mean that the OP's friend has no weight to the argument that they already trade under that mark and therefore own it - while they might not be able to demonstrate sufficient market spread or awareness of the mark to stop the new company coming into other areas, that will not stop them keeping it for current uses...

In the OP's scenario, the new company is basically being a bully - and the answer to a bully is to know the law and then stand up to them...