Discussion
We are the UK distributors for a brand....we took this on from another company who did this before us, but did a bad job, so the US based brand asked us to do it instead.
The original distributor trademarked the brand name in the UK.
Now they've sent us a letter saying we can't use the brand name on our website or marketing material.
Surely you can't do this, and the "brand name" of a US based brand represents part of the product description.....and you thus couldn't enforce a trademark on it?
How would a company sell "Ford" cars if they weren't allowed to use the word "Ford? (it's not ford - used as an example)
The original distributor trademarked the brand name in the UK.
Now they've sent us a letter saying we can't use the brand name on our website or marketing material.
Surely you can't do this, and the "brand name" of a US based brand represents part of the product description.....and you thus couldn't enforce a trademark on it?
How would a company sell "Ford" cars if they weren't allowed to use the word "Ford? (it's not ford - used as an example)
What contract have you got with the US owner of the brand? I guess they didn't trademark the brand in the UK/Europe? Allowing the third party the opportunity to do so? If the brand owner has given you a contract and it's in writing, etc.. then you should be okay, but then again I would take legal advice on this before proceeding (I am not a solicitor!).
From the wikipedia... (so treat with caution!)
"
In some jurisdictions a party other than the owner (eg. a licensee) may be able to pursue trademark infringement proceedings against an infringer if the owner fails to do so.
The party accused of infringement may be able to defeat infringement proceedings if it can establish a valid exception (e.g. comparative advertising) or defence (e.g. laches) to infringement, or attack and cancel the underlying registration (eg. for non-use) upon which the proceedings are based.
"
I'd check the govt. site here : http://www.ipo.gov.uk/tm.htm and possibly give them a call, they may be able to shed light on the issue...
There's a _lot_ of information on the site above, it will take you some time to wade through it and find the relevant pages and areas... But may well be worth it in the end.
HTH
From the wikipedia... (so treat with caution!)
"
In some jurisdictions a party other than the owner (eg. a licensee) may be able to pursue trademark infringement proceedings against an infringer if the owner fails to do so.
The party accused of infringement may be able to defeat infringement proceedings if it can establish a valid exception (e.g. comparative advertising) or defence (e.g. laches) to infringement, or attack and cancel the underlying registration (eg. for non-use) upon which the proceedings are based.
"
I'd check the govt. site here : http://www.ipo.gov.uk/tm.htm and possibly give them a call, they may be able to shed light on the issue...
There's a _lot_ of information on the site above, it will take you some time to wade through it and find the relevant pages and areas... But may well be worth it in the end.
HTH
first port of call should be your distribution contract with USco. Standard agreements provide that they give a warranty that they own the brand name, and they give you a licence to use it. It's also pretty standard that they get to fight any IP claims.
Speak to them urgently.
They probably have rights they can enforce over the UK trademark, even though it was registered by the old distributor. If you play it right, they should enforce these (at their cost) and you don't need to get too involved.
if you want me to look at the various contracts send me a PM.
Speak to them urgently.
They probably have rights they can enforce over the UK trademark, even though it was registered by the old distributor. If you play it right, they should enforce these (at their cost) and you don't need to get too involved.
if you want me to look at the various contracts send me a PM.
Gassing Station | Business | Top of Page | What's New | My Stuff