Trade mark/logo legal issue

[Ohdoleavemealone]

A company have contacted us today saying our company is in breech as our logo contains a word they have trademarked.
Example- If the company name was Instagram which is trademarked. But logo is Insta Gram (gram appears under insta). The company that approached us has the "insta" bit trademarked so wants us to change our logo.

This is fair enough. But could I just add a hyphen? So the logo reads
Insta-
Gram

Is this legal?
I will of course get legal advice and instagram obviously isn't the company name!

You need to consult a lawyer who specialises in intellectual property for a proper answer. My knowledge of trademark law is somewhat limited but I suspect that adding a hyphen won't be enough.

If the company is a large one unless you have the fight within you just change your logo.

I should add I had a colleague who has a business who had the same issue and that's what the advice he got.

No, because it's still instantly recognisable as Instagram. That's enough for trademark infringement.

Have you given your company the same name as theirs? Yours is like Insta Gram and theirs is Instagram?

Seems a bit like passing off and intending to deceive.

Like Morrisinghs corner ship case.

Have you given your company the same name as theirs? Yours is like Insta Gram and theirs is Instagram?

I think it's the other way round - her company is Instagram, theirs is Insta. But her logo layout makes it look like Insta and Gram are separate

The problem here is that the big companies have deep pockets from which to pay lawyers.

The two main questions are: (1) do the two businesses operate in the same area of business and (2) who used the name first. A trademark usually doesn't stop someone with existing rights to the name, and should only apply to those businesses against which it has been registered. Passing-off is wider and more fluid.

Back in the day Toys R'Us used to go after anyone who called their business X R'Us, but I know from personal experience that, as long as the other people didn't reverse the R like they did, they were on dodgy ground, they knew it, and at the end of the day would back down rather than go to court and risk losing so that the world and their spouse would merrily use R'Us to their hearts' content.

As PP have said, the options are either change it in response to the letter or find yourself a solicitor who actually knows about this area.

The basis of "passing off" is that you are piggybacking on the reputation and goodwill of another business. If your name, or perhaps some other aspect of your branding, is close enough to bring to the customers' mind the other company that can be enough for passing off. Slightly changing the spelling or the punctuation isn't enough. So calling your new social-media startup "insta-gram" or "instergrarm" or "instantgramme" or some other clever tweak is still going to get you in trouble because you are trying to trigger an association in the minds of consumers.

I'm an intellectual property (trade mark) lawyer and it's not really possible from your OP to say whether they have a legitimate case or not. Trade mark disputes are specific to the marks in question and you need to find an IP lawyer who can advise you properly. Alternatively you could simply re-brand as requested.

If your logo DOES infringe their trade mark, then if they sue you, they would be entitled to financial compensation, which could be significant, as well as an injunction restraining you from using your logo any more.

* Seems a bit like passing off and intending to deceive.*

^I agree. Why can’t you come up with an original name instead of a cheap rip off version?

There's no indication in the OP of which name came first, just that one had it trademarked.