To not change the company name? Are they right?

[Ohdoleavemealone]

A company have contacted us today saying our company is in breech as our name and logo contains a word they have trademarked.
Example- Our company "facebook" Their company " face paint".
They are saying because they have "face" we have to give up "facebook" even though we have it trademarked.

Their company existed first and it is the same sector.

I am getting legal advice but thought I would ask here in the meantime.
Can they take us to court for this? Surely we wouldn't have been able to get it trademarked if it wasn't okay?

This is such a specialist are of law that you won’t be able to rely on anything you’re told in a general forum like this. Rely on a specialist IP solicitor’s advice instead.

Surely they have trademarked the whole name and not just single components of it.

@dementedpixie

Surely they have trademarked the whole name and not just single components of it.

Their letter states they have trademarked just the first bit.

I'm not sure anyone here can tell you your full legal positions without being in possession of a lot of details of trademarks etc More details than anyone sane would give out on a forum anyway.

I think you need proper legal advice on this one OP.

Is it a real word? So if they're 'Quek Services' and you are 'QuekRUs' then they might have a case.

I agree that you need to speak to someone who knows what they're talking about........or ignore the letter and see if they send anything else.

It will hugely depend what the names are :

If they have CakePops and yours is CakeFavours, that's very different from them having TiddlyToddly Swimming & TiddlyToddly Gym and you then setting up TiddlyToddly Diving (sorry for the ridiculous name example!).

A quick Google will show you just how surprisingly broad trademarks can be. You should certainly take specialist legal advice

The law in question is "passing off". And yes, using a common word can be seen as "passing off" as the other company, even moreso if similar font or colour scheme or logo is used too.

I.e. "Virgin" is a common word, but try calling yourselves Virgin Solicitors and you'd soon get the solicitors letter. Likewise "Easy", try calling yourself Easy Cars as the letterbox will flap!

The trademark office won't routinely check your application against every possible existing trademark - just like Companies House don't. They check if there's an identical name, if not, they issue the certificate, but that doesn't stop others objecting.

As said above, you need to engage a specialist if you want to challenge it and continue using your name.

It is as different as I said. I have a full (made up) word but the 2nd part is a real word - "flibook" They have the same first bit "fli" a space and then a real but totally different 2nd word like "fli bobble".

I am seeking legal advise and wont take anything said here as golden but haven't really anyone to discuss it with and it is playing on my mind.

@Ohdoleavemealone

It is as different as I said. I have a full (made up) word but the 2nd part is a real word - "flibook" They have the same first bit "fli" a space and then a real but totally different 2nd word like "fli bobble".

I am seeking legal advise and wont take anything said here as golden but haven't really anyone to discuss it with and it is playing on my mind.

As already mentioned, it really depends on what the words actually are. It would obviously be a very bad idea for you to post the real names involved and I am not suggesting you do, but on the other hand, there is no point anyone attempting to give an opinion on made up “similar”examples.

@Ohdoleavemealone

It is as different as I said. I have a full (made up) word but the 2nd part is a real word - "flibook" They have the same first bit "fli" a space and then a real but totally different 2nd word like "fli bobble".

I am seeking legal advise and wont take anything said here as golden but haven't really anyone to discuss it with and it is playing on my mind.

If it's the made up word which is common to you both, then I think they have a valid objection. Especially if there's evidence that they created the made up word first, i.e. their trademark is older than yours.

In terms of passing off, could your products be confused with theirs? But as a previous poster said this really is a question for a solicitor that specialises in this stuff.

Have a look at the Hugo Boss brand and their legal cases again anyone who uses the word boss, it sounds very similar, so if it is, then yes they might be able to

I have no idea where you stand legally but morally if you’ve got the same made up word at the beginning of your name that they have for their business in the same sector then I can say why they would be upset.

It’s a trademark attorney not a solicitor you need to speak to. It is possible to infringe their mark even if your company name is not the same e.g if your goods/services are very similar. A quick google of trademark infringement might help in the meantime. (I’m a lawyer but not a trademark attorney)

For those mentioning passing off, that is for ‘unregistered trademarks’ and is slightly different and harder to prove than registered trademark infringement. Again, a trademark attorney would be able to advise.

It would also be advisable to discuss ‘unjustified threats’ options with your trademark attorney - keep copies of all communication. If they are found to have threatened infringement and the threat is actionable and unjustified you may be able to sue for damages/declaration.

A common word such as ‘Face’ is very different to the made up name ‘fli’ so your original example was very misleading and probably changes the advice/outcome.

When you registered your trademark your application would have sat in the public journals for something like 3 months for opposition purposes - im guessing they didn't raise any objections then?

Are you in same classes for goods and services?

I think if you're in the same industry and both using the same made-up word to start your company names then there is quite a big potential for confusion between the 2 organisations.

Obvs not knowing the details I am not sure, but from what you've said I'd probably change for my own company's benefit as people may want you but end up with the other company through confusion, especially if you're in a similar area.

Have a look at the chef and cookery book write Miguel Barclay (the £1 chef books). He started his own pizza restaurant called Miguel’s Pizza… but San Miguel the beer got in touch, despite it being his actual first name!
He had a lot of posts about it at the time but I actually can’t find them now 🤔

HNRTT but your jurisdiction will be important, as will whether you are talking about having Registered Trademarks being awarded to both of you rather than just using a T in a circle symbol and securing an unregistered trademark through usage. If you have a UK Registered Trademark awarded then there is a process for challenge if theirs was awarded first but if yours was assessed then published then registered then, all things being equal, they'd have to pass quite a high bar to have your Registered Trademark overturned and I think your costs in defending your Registered Trademark but be paid by them in some circumstances if they were unsuccessful in challenging your Registered Trademark.

Good luck.

This is worth a read, red bull having issues with two separate companies, one using the word ‘red’ and the other using ‘bull’ (since we’ll before red bull existed)

www.eveningnews24.co.uk/news/business/red-bull-increases-threat-to-bullards-norwich-8625884