Intellectual Property
Discussion
Hi - Just after some info please.
Had a solicitors letter this morning out of the blue saying my on-line business is infringing another (largest in the UK) Competitor's website and I have to remove all references in 14 days and respond that that has been done.
My website has a descriptive term that is common for the search - lets say 'three little pigs'. Three little pigs is essentially a description of what the item / manufacturing process is.
My competitor has registered 'Three Little Pigs' (unbeknown to me) as his trademark in February this year. My site has been live for a year. His website is at the top of page 1 of Google - sponsored ad : www.threelittlepigs.co.uk
My point is that it is very difficult to describe the items without using the term 'three little pigs', there are several other competitors on page one of Google also using the term 'three little pigs' so I'm guessing they have received the same letter?
Is it legal to trademark a descriptive term of three words then prevent anyone else from using it? The letter also says I can't use anything similar either but I'm unclear as to how similar they mean, for example they have printed out my homepage and put a red box around 'three little pigs' as infringement, but not put a red box around 'three fat little pigs'on the same page? Does one word 'breaking' the run of 'three little pigs' get you around the trademark?
Thanks
Had a solicitors letter this morning out of the blue saying my on-line business is infringing another (largest in the UK) Competitor's website and I have to remove all references in 14 days and respond that that has been done.
My website has a descriptive term that is common for the search - lets say 'three little pigs'. Three little pigs is essentially a description of what the item / manufacturing process is.
My competitor has registered 'Three Little Pigs' (unbeknown to me) as his trademark in February this year. My site has been live for a year. His website is at the top of page 1 of Google - sponsored ad : www.threelittlepigs.co.uk
My point is that it is very difficult to describe the items without using the term 'three little pigs', there are several other competitors on page one of Google also using the term 'three little pigs' so I'm guessing they have received the same letter?
Is it legal to trademark a descriptive term of three words then prevent anyone else from using it? The letter also says I can't use anything similar either but I'm unclear as to how similar they mean, for example they have printed out my homepage and put a red box around 'three little pigs' as infringement, but not put a red box around 'three fat little pigs'on the same page? Does one word 'breaking' the run of 'three little pigs' get you around the trademark?
Thanks
You probably need more detail to understand what elements of the trademark they believe are infringed. Is it just the text used, or is it the presentation of the text to look and feel like the other site?
In addition to trademark infringement there is always passing off, if your site is misleading people into believing your site or product is in fact theirs.
It's an expensive area of law, which is both good and bad; it will cost well into 5 figures to proceed with any meaningful litigation, so firms are unlikely to do so on a whim. On the flip side, if you fight and lose you carry the can for both sides' costs, which could end up being 6 figures quite quickly if the dispute were prolonged.
If the words/messaging used are important to you for the success of your business, go and get specialist solicitor or counsel opinion from an expert now to see how strong a position you are in. That should then determine your response. If you can live without the offending item on your website, it might be worth looking at contingencies where they don't feature and you avoid a fight.
In addition to trademark infringement there is always passing off, if your site is misleading people into believing your site or product is in fact theirs.
It's an expensive area of law, which is both good and bad; it will cost well into 5 figures to proceed with any meaningful litigation, so firms are unlikely to do so on a whim. On the flip side, if you fight and lose you carry the can for both sides' costs, which could end up being 6 figures quite quickly if the dispute were prolonged.
If the words/messaging used are important to you for the success of your business, go and get specialist solicitor or counsel opinion from an expert now to see how strong a position you are in. That should then determine your response. If you can live without the offending item on your website, it might be worth looking at contingencies where they don't feature and you avoid a fight.
You can definitely appeal a registered trademark. It would be worth reading through the following (scroll down till you get to the "opposing a registered trademark" section rather than objecting to one which has been published in the previous 2 months):
https://www.gov.uk/guidance/objecting-to-other-peo...
https://www.gov.uk/guidance/trade-mark-disputes-re...
I think the next move would need to be consulting a lawyer, possibly an expensive one
https://www.gov.uk/guidance/objecting-to-other-peo...
https://www.gov.uk/guidance/trade-mark-disputes-re...
I think the next move would need to be consulting a lawyer, possibly an expensive one
Thanks 'Passing Off' was mentioned in the letter but although my products are of the same type (there are only 3 products) one is not sold at all by the main competitor and the other two are but even to a layman they are totally different in appearance and price so I wasn't of the opinion they would be associated with the No. 1 on Google.
My site is at the bottom of page 1 or on page 2 depending on the search terms.
Sorry forgot to add they had printed off my eBay shop listings too and said I cannot use those three words in the listing title.
My site is at the bottom of page 1 or on page 2 depending on the search terms.
Sorry forgot to add they had printed off my eBay shop listings too and said I cannot use those three words in the listing title.
Vron said:
Had a solicitors letter this morning out of the blue saying my on-line business is infringing another (largest in the UK) Competitor's website and I have to remove all references in 14 days and respond that that has been done.
Or else what...?This is the really important question. Somebody can ask a solicitor to write to somebody else and ask them to do anything they like. The letter only carries any weight if there's an actual realistic threat behind it. Otherwise, it's just a letter that's cost them some money to write.
Vron said:
My website has a descriptive term that is common for the search - lets say 'three little pigs'. Three little pigs is essentially a description of what the item / manufacturing process is.
My competitor has registered 'Three Little Pigs' (unbeknown to me) as his trademark in February this year. My site has been live for a year.
Shouldn't be hard to appeal, then.My competitor has registered 'Three Little Pigs' (unbeknown to me) as his trademark in February this year. My site has been live for a year.
Vron said:
His website is at the top of page 1 of Google - sponsored ad : www.threelittlepigs.co.uk
So he's paid google for some advertising. Woo.Vron said:
so I'm guessing they have received the same letter?
Or maybe you're the only one that's got 'em worried enough to try and put the legal frighteners on you...?Vron said:
Is it legal to trademark a descriptive term of three words then prevent anyone else from using it?
Of course. But whether that other person can then appeal is another question.Thanks - the reference to 'their' website at the top of Google was to reference those three words are their domain name.
The letter is basically saying they will seek damages from me. How they could demonstrate a figure I do not know as I am a minnow by comparison and my main selling item (90%) of my sales they do not even make.
My website and text looks totally different to theirs - it's like saying buyers would think BMW, Audi and Mercedes are all the one same supplier because they use the term 'Prestige Car Sales' or something like that.
The letter is basically saying they will seek damages from me. How they could demonstrate a figure I do not know as I am a minnow by comparison and my main selling item (90%) of my sales they do not even make.
My website and text looks totally different to theirs - it's like saying buyers would think BMW, Audi and Mercedes are all the one same supplier because they use the term 'Prestige Car Sales' or something like that.
This cannot be answered on a forum such as this. Quite simply there is not enough information.
Go and see someone who knows about RTMs and passing off. Your average solicitor does not. Try a trademark attorney or patent attorney. You can find a patent attorney at http://www.cipa.org.uk/
Go and see someone who knows about RTMs and passing off. Your average solicitor does not. Try a trademark attorney or patent attorney. You can find a patent attorney at http://www.cipa.org.uk/
In your original post you claim that your competitor registered his trademark in February this year.
Now you're saying that your competitor registered the trademark in 2006.
So I don't really understand how you expect any meaningful advice until you tell us exactly what is going on.
However, as has been mentioned above, more than once, litigation for intellectual property is likely to bankrupt you, even if you feel "you are in the right".
Just do as they say (as a minnow), and put it down to experience as another lesson learned now that you are "in business".
Now you're saying that your competitor registered the trademark in 2006.
So I don't really understand how you expect any meaningful advice until you tell us exactly what is going on.
However, as has been mentioned above, more than once, litigation for intellectual property is likely to bankrupt you, even if you feel "you are in the right".
Just do as they say (as a minnow), and put it down to experience as another lesson learned now that you are "in business".
TooMany2cvs said:
Oooh! They're "entitled" to get an injunction, compensation and damages...?!? Hark at her!
No, they aren't. They're entitled to ask for them. I'm entitled to ask for them, and I don't even know what the three little pigs are.
https://en.wikipedia.org/wiki/The_Three_Little_PigsNo, they aren't. They're entitled to ask for them. I'm entitled to ask for them, and I don't even know what the three little pigs are.
hth
Truffles said:
This cannot be answered on a forum such as this. Quite simply there is not enough information.
Go and see someone who knows about RTMs and passing off. Your average solicitor does not. Try a trademark attorney or patent attorney. You can find a patent attorney at http://www.cipa.org.uk/
This.Go and see someone who knows about RTMs and passing off. Your average solicitor does not. Try a trademark attorney or patent attorney. You can find a patent attorney at http://www.cipa.org.uk/
I've used this chap: http://www.smithfieldpartners.com/team/michael-cze...
He's a specialist and I can wholeheartedly recommend his knowledge and approach.
In short, the responses to the letter are:
1) F*** off.
2) OK, I'll agree if you don't sue.
3) F*** off, but we both know this is expensive, lets come to an agreement on what's reasonably acceptable.
IIRC using the mark before the registration may give you a defence. However, you need proper indemnified advice from a specialist. He'll probably give you his understanding of the position in a few minutes, but to use him he'll need all the facts and to write a substantiative letter in response you're probably looking at £500.
Not to poo poo solicitors at all, however it might be worth seeking out a barrister who is qualified to offer Direct Access and who litigates in this area. An advice from the horse's mouth as it were might be more decisive and potentially a similar cost to going through a solicitor and, if it comes to the other side issuing, you already have an advocate fully briefed who has driven the strategy from the outset.
Sebring440 said:
In your original post you claim that your competitor registered his trademark in February this year.
Now you're saying that your competitor registered the trademark in 2006.
So I don't really understand how you expect any meaningful advice until you tell us exactly what is going on.
However, as has been mentioned above, more than once, litigation for intellectual property is likely to bankrupt you, even if you feel "you are in the right".
Just do as they say (as a minnow), and put it down to experience as another lesson learned now that you are "in business".
That was not deliberate - I had misinterpreted on reading the letter initially that the trademark had been registered this year but they had been trading since 2006.Now you're saying that your competitor registered the trademark in 2006.
So I don't really understand how you expect any meaningful advice until you tell us exactly what is going on.
However, as has been mentioned above, more than once, litigation for intellectual property is likely to bankrupt you, even if you feel "you are in the right".
Just do as they say (as a minnow), and put it down to experience as another lesson learned now that you are "in business".
Anyhow, in a nutshell I have edited out the 'three words' that they have trademarked and I think the site still reads fine.
For the curious it is handmade jewellery unique to my own design. They are basically saying because they make the same sort of handmade jewellery i.e the same materials and process is used, then customers can be misled into thinking I am part of their company by my using a three word term for the process of setting the jewellery in my descriptions which is their 'trademark'.
As I said earlier, I only make three items one of which they don't sell at all, (which is my biggest seller) and the other two (necklaces) are easily distinguishable. I sell those for c £30 -£40 each. They sell for £275 each. I am not disputing their prices or trying to undercut - they use more silver in their settings than I do and use heavier chains, much more fancy packaging etc so it's up to the buyer what they choose.
Edited by Vron on Thursday 9th June 21:28
TooMany2cvs said:
Oooh! They're "entitled" to get an injunction, compensation and damages...?!? Hark at her!
No, they aren't. They're entitled to ask for them. I'm entitled to ask for them, and I don't even know what the three little pigs are.
Do you just post to increase your count because 99% of what you post is pointless bNo, they aren't. They're entitled to ask for them. I'm entitled to ask for them, and I don't even know what the three little pigs are.
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