To send a cease and desist.

[Teacuphiccup]

I run a small business and one of my clients came to me last week and said ‘I never realised you were a franchise you know’ and I was like ‘what?’.
It turns out that another company has set up with my exact name doing the exact same thing as me but has just put their city on the end of the name. So instead of ‘teacuphiccup’ they put ‘teacuphiccup Swansea’.

My name is trademarked and I own it in the category in which she is trading.

I have sent her a message on facebook explaining that she probably didn’t realise and could she change her name please (she’s only been trading four months) and she replied that she wouldn’t because it wasn’t the same name because she’s put her city name on the end.

I feel really dirty going to a solicitor but I’ve worked really hard for my reputation and I feel people thinking I’m a franchise cheapens my brand.

I think legal advice would be a good first step. Yanbu.

YANBU I would go to a solicitor and get it started

Is there going to be customer confusion?

Do your products compete?

Do you distribute in the same geographic location or channel?

Well there’s already customer confusion as one of my customers thought I was a franchise.

I am located in a particular area but I also sell things on the internet nationwide.

It’s the exact same business that she’s set up, offering the exact same services as me.

She even has the same colours on her logo and branding

A single customer means very little.

Similar products?

YANBU to send a cease and desist, especially as it is the same type of business. If she treats customers poorly it will affect your business and she could be taking some of your online trade, based on the reputation you've built.

In that case, I think your solicitor would have an easy time taking her apart over this.

You've tried being nice, she's clearly trying to cash in on your hard work.

Don’t feel dirty, stand up for yourself and your business. She can’t rip you off like this.

Definitely go to your solicitor. Having the same name is forgivable but to have basically set up the exact same business with the same products and same services and even the same colours is just being an absolute cheeky fucker.

You're right, she's wrong. The fact that the marks aren't exactly identical isn't relevant.

s10(2)(b) of the Trademarks Act 1994 is what you're looking at- she's using a similar mark on identical or similar goods and services and confusion between the two of you is likely (as evidenced by your client asking if it was a franchise!)

You seem to have a fairly strong case, definitely see a solicitor.

(I'm an Intellectual Property solicitor)

Yep go and issue it.

whileStatement- the OP doesn't have to prove actual confusion, only likelihood of confusion which is a fairly low bar. This is because Trademarks are a monopoly right and once you've registered one, it's yours alone to use (unless you license it).

OP- as she is using the same colours on her branding you may also have a claim for Passing Off although it's harder and more expensive to prove than TM infringement. I can't say for certain without comparing photos of your branding, but it sounds likely. Definitely seek legal advice.

I’ll give a similar scenario

I’m a hairdressers but also have an online side of the business where I sell online courses teaching people how to look after their hair. My hairdressers is local but I have plans to expand and my online side is national with customers all over the country.
I have the rights to the trademark in for use in ‘selling hairdressing, selling hairdressing courses and selling hairdressing products’.

She has set up a hairdressers with the exact same services as mine even specialising in the niche market that I do.

Definitely get legal advice. It sounds like pretty blatant trademark infringement to me (but I'm no lawyer and just going on what I think is fair and reasonable).

YANBU to protect your business. See a solicitor asap.

Definitely see a solicitor. poodlesquish obviously knows what she's talking about.

Are you a limited company? If you are, your company name is protected, however, you cannot stop other people making versions of it and unfortunately, one of the versions allowed is a place name after the name.

Trademarks are for brands, products or services, not company names.

I used to work for Companies House and this used to confuse a lot of people.

Thanks everyone. I’ve got the name of a solicitor specialising in intellectual property that I’ll ring tomorrow.

I just feel sick to my stomach because I hate doing things like this.

Yes I’m a limited company.

I was advised to trademark my name too.

What's dirty about going to a solicitor? There's no point registering a trademark unless you're prepared to enforce it.

ICantCopeAnymore that is true, but only in the context of what Companies House will register. Trademarks are a separate issue and adding a place name is still infringement.

Trademarks certainly can be company names, although they don't have to be.

OP- don't feel bad. Honestly. There's no point you having spent the money to register the trademark if you're not going to enforce it. You've already given her a chance, and the cease and desist is another chance. If she still doesn't change it, then any legal action that comes her way is her own problem.

It doesn't sound like you have a case, if I'm honest. If you're using "Teacuphiccup Ltd" they are entitled to use "Teacuphiccup (Swansea) Ltd".

If they aren't limited you can possibly take legal action against them using it, but they could quite easily register as limited then carry on using it.