Trademark advice?

[Moireh]

I’ve posted this in Legal but got no replies. Does anyone know anything about trademarks please?

I own a bakery called (something like) Zerrah Biscuits. I’ve trademarked Zerrah and Zerrah Biscuits.

Someone has set up a bakery a few hundred miles away called Zerrah. It’s a word for a special type of sugar biscuit in my language.

My lawyer says he can send a cease and desist letter but they will probably refuse now that they’ve paid for a shop sign and everything, and I can’t afford to take them to court. Even just sending letters could add up to a couple of thousand pounds.

He says even if I did take them to court I’d be unlikely to win, because their logo and font and colour is different so they’re clearly not “passing off” as me, I’m not making any losses due to them taking business from me, and they’re not benefiting from using my name because I’m not known in that city.

Is this correct? I thought if I trademarked it nobody else could use it? But this doesn’t seem to be the case?

@Moireh as far as I am aware you only have a legal stance with a trademark which means you have to take the person to court to have them remove it. It doesn't just happen. If I were you, I would send them letters yourself first. Try and be as legal as possible, maybe use AI to help you write it. Make sure you include a copy of your trademark so that they know you are legitimate.

Do you have any legal cover on your business insurance? If not, a cease and desist is generally enough. You are reliant on them not having deep enough pockets to fight back, which as a new business is highly unlikely. You could write a letter yourself and send it via a tracked delivery service, but a good whack of oomph will come from your solicitor. It isn't true that it wouldn't stand in court. The Ritz hotel took on a ballroom near me, also called The Ritz, and won. Over 200 miles apart and clearly very different businesses, but the ballroom, which had been trading for 80 odd years with that name, had to change. They ceased trading shortly afterwards.

If they have social media they aren’t going to be able to operate if you get their accounts closed.

That’s super easy. Just send google/ Facebook/ insta etc. the form for intellectual property infringement and the trademark certificate.

Job done.

Thanks. I was advised that even a cease and desist letter could still bankrupt me. Even if I don’t take them to court, they could take ME to court for the right to continue using the name. I don’t have any money at all for a court case, and I don’t know how deep their pockets are - they’re a startup but maybe their parent has money for example. My lawyer said “sometimes it’s best just to keep quiet and hope the other guy goes out of business”.

My lawyer told me a story about a client they’re representing whose new restaurant has an identical name to an established restaurant in Manchester. They said the location and branding is clearly different so the established restaurant has been unable to stop them. The tribunal ruled they are not passing themselves off as the established restaurant, it’s clear to consumers that these are two different businesses, and the established restaurant isn’t making a loss. He was bragging that he negotiated for his client to sign an undertaking saying “we will never open a restaurant in Manchester”, and that was it, they’re allowed to keep the name.

Perhaps I would win in court. But that’s no good if I’m bankrupt. The Ritz has much deeper pockets than me! I can barely afford for the lawyer to send a letter! The ballroom you mention probably went out of business because of the cost of court fees - apparently this happens a lot, you don’t need to win a dispute you just need to put the other guy out of business because of the cost of legal fees.