Trademark business name

[s2t]

Scenario...if you have been trading using a business name and someone else comes along and registers the name as a trademark, can they then stop you using the business name?

[akirk]

s2t said:

Scenario...if you have been trading using a business name and someone else comes along and registers the name as a trademark, can they then stop you using the business name?

In theory no - because you were already using it...
In theory you can challenge their registration showing evidence that you were already using it

In practice, it can get messy...

The essence of a trademark is that it is a mark of your trade and that in the public eye for someone else to use it would cause said member of the public confusion... thinking that they were you etc...

trademarks can also be registered in different sectors, so the fact that you are registered as John Smith selling shoes doesn't automatically give you trademark protection if you start making lawnmowers / fountain pens / running an it consultancy...

either give us more detail - or talk to a trademark attorney...

[E36GUY]

akirk said:

In theory no - because you were already using it...
In theory you can challenge their registration showing evidence that you were already using it

In practice, it can get messy...

The essence of a trademark is that it is a mark of your trade and that in the public eye for someone else to use it would cause said member of the public confusion... thinking that they were you etc...

trademarks can also be registered in different sectors, so the fact that you are registered as John Smith selling shoes doesn't automatically give you trademark protection if you start making lawnmowers / fountain pens / running an it consultancy...

All of the above is correct. You CAN enforce an non-registered trademark. Mr Ecclescake tried to register F1 but was denied hence why you see TM next to the logo rather than the ® which is the registered trademark symbol.

My question to you as akirk says, is the company that has registered a mark going into direct competition with you or are they in different business sector altogether? If the former, and you can prove use of the name that pre-dates their registration, business good will, copies of advertisements you may have taken out etc then yes you can apply to have the mark removed but it will cost a bit.

[s2t]

Thanks, the business registering the trademark is not in pure direct competition but our businesses are complementary. I think the best way to take this forward is to have a discussion with their Chief Exec and hopefully get some sort of written agreement as to how we both do business.

[akirk]

s2t said:

Thanks, the business registering the trademark is not in pure direct competition but our businesses are complementary. I think the best way to take this forward is to have a discussion with their Chief Exec and hopefully get some sort of written agreement as to how we both do business.

very wise - ideally you will aim to co-exist - cheaper all around than legal battles...
just make sure that you can demonstrate clearly that you were trading and known by the public for your mark of trade - prior to their doing the same (not prior to their registering the trademark...) if they were trading before you, you may be out of luck