Please or to access all these features

Add post

Watch this thread

Save thread

Start a new thread

Flip thread

Hide thread

My feed

Active Unanswered threads

Getting started FAQ's

Unanswered threads Acronyms Talk guidelines

Hide shortcut buttons

Talk

AIBU?

Share your dilemmas and get honest opinions from other Mumsnetters.

Flip

1 2 3 4

Original poster

To send a cease and desist.

76 replies

Teacuphiccup · 15/04/2018 09:10

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.

OP posts:

PlanesOverMe · 15/04/2018 09:58

What on earth is dirty about going to a solicitor?

ICantCopeAnymore · 15/04/2018 09:58

A trademark is a brand more than a company name, but yes, there is infringement if someone sets up a company with the same name and has identical products and services.

It depends really on how far the OP wants to push it. Companies House won't do anything because the names are different. There might be a case with it being a trademarked brand, but again, the names are different so it might not happen.

Staying · 15/04/2018 10:01

Call the lawyer. She's nicked your business basically, if the colours etc are even the same. You can be sure that a fast food burger restaurant called McDonaldsSwansea complete with golden arches would run into some problems. For good reason.

lollipopjones · 15/04/2018 10:01

You must take legal advice. This is your livelihood. She's fired the first shot. It's down to you to annihilate her! 😁

Anniegetyourgun · 15/04/2018 10:02

It has to be done though. It's not only a case of her trading unfairly on the reputation you built up, it's the chance that your business will suffer by association if she lets customers down or is merely not as good at the product/service as you are. Given her casual attitude to your polite approach this seems more likely than not, frankly. You need to protect your business. A strong brand is a valuable asset. Taking legal action is no more dirty or sneaky or anything than calling the police if somebody deliberately walked out of your shop with your best hairdryer (to borrow your example above). Less so, in fact. All you want her to do is change her trading name and colour scheme, you're not trying to send her to prison!

MumW · 15/04/2018 10:02

There was no point in getting copyright/trademark if you aren't going to follow it upf
It's already causing confusion about your business.

Go for it. Good luck.

prh47bridge · 15/04/2018 10:03

It is definitely possible to trademark a company name. Many businesses do. It is possible to register a company name that is the same as another company with a place name added, but it may still be possible for the older business to take action against the new business for "passing off". As you have registered your company name as a trademark you are in a stronger position. As I said on "legal", this looks like trademark infringement. The fact she is offering identical services and using the same colours makes it worse. If her logo also resembles yours you may have additional cause for action.

You should definitely sort out a "cease and desist" letter. A solicitor's letter may be enough to stop her. If she persists then legal action is your only option.

No need to feel dirty about it. She is the one who should feel dirty as she is knowingly infringing your trademark. Given the similarity in colours I suspect she wanted to create customer confusion in the hope that she would benefit. Not on.

VladmirsPoutine · 15/04/2018 10:05

Go in all guns blazing.

Give zero fucks about it. This is your brand and your livelihood.

Anniegetyourgun · 15/04/2018 10:06

You can be sure that a fast food burger restaurant called McDonaldsSwansea complete with golden arches would run into some problems. For good reason.

There was a case involving that very example a few years ago iirc. The woman's name was McDonald and she ran a cafe. She wasn't pretending to be part of them as such but they reckoned her M looked a bit too archy . I thought it was mean. But the OP's case sounds deliberate.

poodlesquish · 15/04/2018 10:06

ICantCopeAnymore, I think you're conflating two issues. No, Companies House won't do anything. That's not what the OP is asking. Yes, they may be able to keep their registered company name but they cannot legally trade under the name (I.e use it on branding etc).

She has a registered trademark. She has a valid claim against anyone who uses that trademark, or a similar mark, in the course of selling/supplying identical or similar goods or services to those that the OP sells, provided there is a likelihood of confusion on the part of the public.

The OP absolutely has a claim for TM infringement, based on what she's said.

ICantCopeAnymore · 15/04/2018 10:10

You could call a fast food restaurant McDonalds Swansea but not use the branding like the golden arches. There are thousands of McDonalds companies registered that aren't McDonalds the fast food restaurant.

Well yes, that was kind of my point. If they have copied branding, products and services then there is a case, but there's nothing that can be done solely about the name.

akkakk · 15/04/2018 10:13

listen to poodlesquish who is talking sense :)
don't listen to those saying you have no case...

all you have to demonstrate that there is likely to be confusion, and you have evidence from your client... It might be worth also pointing out to the upstart that you can pursue them for every bit of income they make by using your trademark... but do it through a solicitor...

also very important to note that if you don't defend your trademark in cases like this, you will lose it

we had a similar situation and succesfully forced the other company to change name, even though they had just spent thousands on branipding and print...

FairfaxAikman · 15/04/2018 10:13

Dolce and Gabbana went after a local garage here because they used the name D&G Autocare (owners' initials IIRC). They lost though due to the differing nature on the business and the fact that mechanical services was one area they hadn't trademarked.

CurlsandCurves · 15/04/2018 10:15

Yep you do need to see an intellectual property solicitor.

I used to run a business and when we went to trademark our brand it emerged there was another company in another part of the country offering similar ( but definitely not the same ) services and had the same name as us. Obviously they were not happy, but we had no idea they existed.

A couple of letters back and forth and we came to a compromise whereby we dropped one word of the company name. All very civilised, it was fine.

Original poster

Teacuphiccup · 15/04/2018 10:28

Yeah I’d be happy for them to rearrange the words so it was obvious we weren’t connected.

OP posts:

ShastaBeast · 15/04/2018 10:30

Icantcope - OP has added no extra information since you claimed she has no case. You are confused and can’t admit you were wrong, she absolutely does need to get legal involvement.

I hate people stating things as fact which are anything but. Your expertise is in another, related but not the same, field. Please don’t give legal advice as fact when you don’t have the expertise. Opinion is another matter but should be labelled as such.

Jannilost · 15/04/2018 10:35

Definitely see a solicitor. Maybe post on your company site that you're no way related to this company?

ICantCopeAnymore · 15/04/2018 10:36

I'm really not confused. Where have I given legal advice?

What am I wrong about? I've said there won't be a case with regards to the name, but might be with branding, products and services. That isn't legal advice in the slightest and is not wrong.

Actually, I have dealt with many clients who have had similar trademark issues.

Bluelady · 15/04/2018 10:37

Anyone remember when Victoria Beckham went after Peterborough Football Club which has been known as Posh for decades? I could never understand why they didn't just buy the club.

Of course you've got a case, OP. Don't feel dirty about protecting your livelihood, it must be a great business if someone else is trying to rip it off. Nip it in the bud quickly.

Thanksforthatamazingpost · 15/04/2018 11:12

“Actually, I have dealt with many clients who have had similar trademark issues.”

But only in your capacity as an employee at Companies House.

No one, including the OP is suggesting involving Companies House, nor will the solicitors’ letter refer to Companies House.

We’re talking about a potential claim under the TMA1994.

LeighaJ · 15/04/2018 11:20

There's nothing wrong with contacting a solicitor, based on what you've described she has just ripped off of your business in almost every single way. You tried being reasonable and handling it with her without others involved and she blew you off.

UpstartCrow · 15/04/2018 11:23

Don't feel dirty, and put a short polite notice on your website that you are not affiliated.

But be aware, she sounds like trouble, so you might be dealing with this for a while.

mellowyellow2018 · 15/04/2018 11:27

Why would you feel dirty going to a solicitor? It’s their job to assist in unfair situations such as these.

Thanksforthatamazingpost · 15/04/2018 11:28

“put a short polite notice on your website that you are not affiliated.”

No, don’t.

ICantCopeAnymore · 15/04/2018 11:31

The OP asked about the name, which is only protected by Companies House, which is why I mentioned it. As previously mentioned, you can't Trademark a "name". You trademark a brand, logo, product, service.

I would assume that a legal case would indeed mention the fact that the company is Limited. This will be advantageous to the OP, as companies that aren't have no rights over their name at all (which I assume is an important thing to the OP, seeing as she's mentioned it a few times).

Flip

1 2 3 4

Swipe left for the next trending thread