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Original poster

Trademark infringment - help please!

31 replies

Mmmpomello · 02/09/2023 02:30

Hi everyone, I really hope someone can give me a little advice here.

I'm having a bit of trouble with a trademarked business disputing my use of an identical name in a very small area of their services. Think: they are primarily a bookseller who also has some totebags, but they are hidden behind the counter, so not obvious and a very small part of their business. Whilst I have a clothing business that also makes totebags.

Amonst books, they've trademarked totebags. I have responded promptly and stated that I will change the name, and made all immediate changes in my control. They suggested a deadline of a month to completely remove the name. Some changes I literally cannot make for 15 days (FB name), which I clearly told them, and they have acknowledged. Again, this is their suggested deadline.

Two days later they are now harrassing me and are stating that I cannot operate at all under the name even in the sale of clothes (i.e. areas that their name is not trademarked against). They are posting on my business socials and I think trying to damage me before I've had chance to act - I'm finding it really stressful (posting this as 2am).

Surely I should still be able to 'make clothes' until I change the name? Can they ask me to essentially cease promoting or advertising anything at all? They are threatening getting lawyers and have called me naive and foolish, but I think this is an unjustified threat (I am not posting/advertising anything about totebags).
To be clear, whilst this is really upsetting to lose my business name, I am obliging but I cannot perform miracles.

Stupidly I have almost done the work for them by researching their classes and telling them which ones are the potential overlap. They think we overlap in our 'passions'. To be clear, there is no chance of our businesses being confused - this was brought to their attention through someone misspelling a FB tag, not because they literally thought we were the same company. We operate in different areas and this has had zero impact on their business (however, they are impacting mine).

Can anyone offer some advice or know where I can get free legal advice on this?

Just to summarise: I am willing to change the name and have done this where possible, and have ceased advertising/posting on socials about totebags. But I still want (and need) to be able to post about clothes until I can make all the changes.

OP posts:
prh47bridge · 02/09/2023 11:45

Their trademark only covers the specific goods and services for which it is registered. The fact that you are offering goods or services that fall into the same class is irrelevant from a trademark perspective. However, it can give rise to a passing off claim if they believe that potential customers may be confused and think that you are associated with them in some way. You would need to consult a lawyer who specialises in intellectual property to be sure, but it sounds like there is a good chance you can continue with services A and B while the name change goes through. Indeed, unless they could sue successfully for passing off, you can continue with services A and B indefinitely and ignore their threats.

You should write back to them saying that the person being naive and foolish is them, not you. Point out that they appear to be making unjustified threats and that, if you suffer commercial damage as a result of those threats, you can sue them for damages. Indeed, any of your suppliers who suffers a loss as a result of this can sue them. That is why trademark owners should always seek legal advice before making any kind of threat. Mention the Intellectual Property (Unjustified Threats) Act 2017 and point them at IP (Unjustified Threats) Act for SMEs - GOV.UK (www.gov.uk).

@SisterMichaelsHabit I don't think OP is saying the term "totebag" is the trademark, just that the trademark is used for totebags amongst other things.

IP (Unjustified Threats) Act for SMEs

https://www.gov.uk/government/publications/ip-unjustified-threats-act-for-smes/ip-unjustified-threats-act-for-smes#:~:text=Any%20person%20who%20suffers%20commercial,you%20for%20costing%20them%20business.

MrReflection · 02/09/2023 11:48

thedancingbear · 02/09/2023 11:32

OP, please don’t act on anything anyone has posted on this thread. This is a complicated area and you need advice. No-one is going to give you what you need on social media or over the weekend.

Absolutely - IPR is a highly complex legal area - spend the weekend looking for a specialist solicitor

Doggymummar · 02/09/2023 11:52

You need an IP lawyer. Google Clive Bonny his prices are VERY reasonable

NorthernGoldie · 02/09/2023 12:03

MrReflection · 02/09/2023 11:48

Absolutely - IPR is a highly complex legal area - spend the weekend looking for a specialist solicitor

Show quote history

Agreed, some of the above advice is incorrect. You need to speak to a Trade Mark Attorney or IP solicitor. Either will be able provide advice in the first instance

caerdydd12 · 02/09/2023 12:24

prh47bridge · 02/09/2023 11:45

Their trademark only covers the specific goods and services for which it is registered. The fact that you are offering goods or services that fall into the same class is irrelevant from a trademark perspective. However, it can give rise to a passing off claim if they believe that potential customers may be confused and think that you are associated with them in some way. You would need to consult a lawyer who specialises in intellectual property to be sure, but it sounds like there is a good chance you can continue with services A and B while the name change goes through. Indeed, unless they could sue successfully for passing off, you can continue with services A and B indefinitely and ignore their threats.

You should write back to them saying that the person being naive and foolish is them, not you. Point out that they appear to be making unjustified threats and that, if you suffer commercial damage as a result of those threats, you can sue them for damages. Indeed, any of your suppliers who suffers a loss as a result of this can sue them. That is why trademark owners should always seek legal advice before making any kind of threat. Mention the Intellectual Property (Unjustified Threats) Act 2017 and point them at IP (Unjustified Threats) Act for SMEs - GOV.UK (www.gov.uk).

@SisterMichaelsHabit I don't think OP is saying the term "totebag" is the trademark, just that the trademark is used for totebags amongst other things.

Prh47bridge is a lawyer and highly respected on MN.

Original poster
Mmmpomello · 02/09/2023 12:24

prh47bridge · 02/09/2023 11:45

Their trademark only covers the specific goods and services for which it is registered. The fact that you are offering goods or services that fall into the same class is irrelevant from a trademark perspective. However, it can give rise to a passing off claim if they believe that potential customers may be confused and think that you are associated with them in some way. You would need to consult a lawyer who specialises in intellectual property to be sure, but it sounds like there is a good chance you can continue with services A and B while the name change goes through. Indeed, unless they could sue successfully for passing off, you can continue with services A and B indefinitely and ignore their threats.

You should write back to them saying that the person being naive and foolish is them, not you. Point out that they appear to be making unjustified threats and that, if you suffer commercial damage as a result of those threats, you can sue them for damages. Indeed, any of your suppliers who suffers a loss as a result of this can sue them. That is why trademark owners should always seek legal advice before making any kind of threat. Mention the Intellectual Property (Unjustified Threats) Act 2017 and point them at IP (Unjustified Threats) Act for SMEs - GOV.UK (www.gov.uk).

@SisterMichaelsHabit I don't think OP is saying the term "totebag" is the trademark, just that the trademark is used for totebags amongst other things.

Thank you, I think this is the sort of point I've now reached after reading around. Absolutely I am not going to let them damage my business and have used the term 'unjustified thread' in my latest reply to them.

Thank you to everyone who has posted. It is scary getting threats and also, whilst it is rightfully 'their' name in some areas, it is equally mine in others. I have accepted that I will lose it. And whilst the technical, legal and business considerations are vital, noone seems to consider the personal and emotional hit of having to lose your identity. I have used this name for a couple of years, and it still means a lot to me. Their lack of empathy and aggression around it has really affected me, like I'm a shit stain in their precious green washing company.

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