Company name and "passing off"
Discussion
Morning all,
I'm starting up a new business and would very much like to use XXXXX Ltd. as the name. Now unfortunately this name is already registered. The online company that i am going to do the registration with is saying that i can use XXXXX(Wales)Ltd. I have asked them about possible "passing off" problems and they have said...
As long as your not pretending to be them or copy there logo etc.. everything will be ok with registering the company name.
The existing company and I will both be doing the same thing (Corgi gas services) all be it at opposite ends of the country with no likelihood of coming into contact.
Your advice would be welcome.
I'm starting up a new business and would very much like to use XXXXX Ltd. as the name. Now unfortunately this name is already registered. The online company that i am going to do the registration with is saying that i can use XXXXX(Wales)Ltd. I have asked them about possible "passing off" problems and they have said...
As long as your not pretending to be them or copy there logo etc.. everything will be ok with registering the company name.
The existing company and I will both be doing the same thing (Corgi gas services) all be it at opposite ends of the country with no likelihood of coming into contact.
Your advice would be welcome.
Edited by dickymint on Friday 24th November 11:53
Passing Off is a tricky one, but requires that a consumer is misled or confused as to the origin of the the services being supplied. It serves to protect a company's goodwill that it has built up via advertising, word or mouth etc by preventing a third party from potentially taking advantage of, or damaging, that goodwill.
The fact that the businesses are not in contact at the moment may be sufficient to avoid an action for passing off (but not always, particularly if the business is the sort of thing that may well be franchised - an identical name [even with a different logo] could certianly confuse a customer).
What if one or both of you expanded your area of operation? - The likelihood of conflict would increase and the chances for disputes would increase, and disputes, whether you win or lose, will take up a significant amount of time and money and may end up with one party paying damages and having to re-brand - yet further costs.
Basically using an identical name is a potential business risk and should be viewed as such - what is the risk (chance of action and a forced rebrand, damages etc - maybe high or low chance depending upon the distinctiveness of the name and their reputation etc) and what is the reward (get to use the name I like - will that name bring in customers?) - Is it worth the risk?
Not knowing what the name is it is difficult to advise, but you should seek professional advise from a qualified Trade Mark Attorney - see the ITMA website for details (Institute of Trade Mark Attorneys) - or a specialist Solicitor so that you understand the risks. You should also seek to register whatever name you chose as a trade mark to avoid potential problems later on....
Alex
The fact that the businesses are not in contact at the moment may be sufficient to avoid an action for passing off (but not always, particularly if the business is the sort of thing that may well be franchised - an identical name [even with a different logo] could certianly confuse a customer).
What if one or both of you expanded your area of operation? - The likelihood of conflict would increase and the chances for disputes would increase, and disputes, whether you win or lose, will take up a significant amount of time and money and may end up with one party paying damages and having to re-brand - yet further costs.
Basically using an identical name is a potential business risk and should be viewed as such - what is the risk (chance of action and a forced rebrand, damages etc - maybe high or low chance depending upon the distinctiveness of the name and their reputation etc) and what is the reward (get to use the name I like - will that name bring in customers?) - Is it worth the risk?
Not knowing what the name is it is difficult to advise, but you should seek professional advise from a qualified Trade Mark Attorney - see the ITMA website for details (Institute of Trade Mark Attorneys) - or a specialist Solicitor so that you understand the risks. You should also seek to register whatever name you chose as a trade mark to avoid potential problems later on....
Alex
Red V8 said:
Sounds like passing off to me... Imagine what the legal guys at Microsoft would do if someone was to set up a company called Microsoft(Wales)
Surely it depends on the context, for example Microsoft is quite an obscure name, but if they were called Gas Fitters Ltd would it not be reasonable to use a similar name?
mattyboy101 said:
Red V8 said:
Sounds like passing off to me... Imagine what the legal guys at Microsoft would do if someone was to set up a company called Microsoft(Wales)
Surely it depends on the context, for example Microsoft is quite an obscure name, but if they were called Gas Fitters Ltd would it not be reasonable to use a similar name?
It's a good job Microsoft don't do gas fitting. Just think of the explosions.
The difference though is that Microsoft is a trademarked name so they would have recourse if it was Microsoft (Wales), I think Alex has given all the advice that there is to give.
Personally I think it's too much potential for trouble to set up with a very similar name to someone else. Imagine them on Watchdog in 3 years time and your phone stopping ringing.....
Now is your chance to set up with a name that won't cause you any difficulty and will allow you to build up goodwill in the future without the prosepect of litigation for passing off, I'd taken and come up with your own name. I appreciate that you may want to use fairly standard words like "gas fitters" but I'd try hard to avoid obvious confusion though.
Personally I think it's too much potential for trouble to set up with a very similar name to someone else. Imagine them on Watchdog in 3 years time and your phone stopping ringing.....
Now is your chance to set up with a name that won't cause you any difficulty and will allow you to build up goodwill in the future without the prosepect of litigation for passing off, I'd taken and come up with your own name. I appreciate that you may want to use fairly standard words like "gas fitters" but I'd try hard to avoid obvious confusion though.
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