Trade Mark query for Martial Arts club - HELP.

MartialArtsGuy wrote: »

Hi,

I hope someone on here can help me out. In my spare time I run a small Martial Arts class a number of nights per week - non profit. I have recently had an e-mail from someone in the same field saying that I am using his Trade Mark as my Club name. The fact is the name is similar but for one different character in the club name. Both it seems were "invented" independently, his in 1985, mine in 2013. The e-mail states that the Trade Mark is registered with the National Business Register and he also gives the registration number and it shows in a search on their site only - start.biz

I'm not sure how legitimate this company is, and if there is a really a legal issue. He is trying to get me to change my name and threatening further action as he claims it is a criminal offence (?). I don't really want to change as it would be a lot of work (I've been running for 5 years).

Strangely if I look up his "Trade Mark" on the UK Governments IPO website I find nothing. Therefore is the registration even real?

Can someone please help me before I loose my mind?

Many thanks

Mark

I suggest you seek independent legal advice from someone that specialises in trade mark legislation

I suspect the complainant is objecting to you on the basis of 'passing off'

In a slightly different legal dispute, I remember Harrods once complained that a cafe in Essex called Hollands wanted them to change their logo and name as it was claimed it was synonymous with Harrods. They were even complaining about the font used.

http://www.ipswichstar.co.uk/news/harrods-in-copyright-row-over-cafe-s-name-1-342528

The cafe went out of business shortly afterwards.

Something currently unclear is if you've used the name for 5 years, how long has this other person used his similar one? Is the name generic (Martial Arts South West) or something fancy (SupaSupaSlamDunk)? The latter may be a better claim, but not if you were using it first.

Passing Off is all about whether the two names will cause confusion to consumers - similar names, logos, operating in the same sector in the same geographical region. There will be more than one "Headmasters" hairdressers, more than one "Our Plaice" chip shop, etc. There's no requirement for a name to be globally unique, and if he wanted it to be unique he should have registered the company as a limited company, registered the trademark, the design, etc.

A little more detail may help, but in all likelihood it's a non-issue and just straight overreach of an amateur.

bingo_bango wrote: »

S.92 TMA '94?

Schedule 1 of the CPUTRs also has a number of strict liability offences (see 1,2, & 4 in the schedule) where Trading Standards can look for unauthorised use of registered trademarks (think along the lines of NICEIC or NHBC logos). There could also be an issue of misleading action for unauthorised use (Reg 5 - no strict liability) but none of those fit OP's circumstances so it is not something he should worry about.

However, The notification OP has received from the 'rights holder' claims that the trademark is 'registered'. That is a very specific term under S.95 TMA 94 and can only be used to describe a TM registered under the Act. Any other use of the word 'registered' within the UK is a criminal offence, enforceable by your local Trading Standards.

What you do with that information is entirely up to you OP, but may provide some fuel for your counter argument.

Ninja edit - to clarify that I am not an attorney or legal advisor of any type.

You are correct in what you say.

To clarify, infringement actions brought by trade mark owners are brought under the civil law rather than under the criminal law. A trade mark owner who believes that their trade mark rights have been infringed would not be able to file a complaint about this with the police, or even with Trading Standards. The trade mark owner would need to bring action against the infringer in the civil courts.

Glad you have sought professional help OP.

bingo_bango wrote: »

I get where you are coming from with your earlier post SD, since you wouldn't be bringing a criminal prosecution. Easy to see why you only think in civil terms

Not sure why you believe that a rights owner cannot make a complaint to TSS though?

(I promise I'm not having a go at you, just curious )

You can make a complaint to Trading Standards. However, because their funds have been substantially reduced, they will frequently only take action (which is brought under the criminal law for infringement of the provisions of the Trade Marks Act by the way, and penalties are also under criminal law) if a very large consignment of counterfeit goods are involved, and they have a reasonable prospect of winning in court.

If I infringe your trade mark by using the same or a similar name, however, TS is highly unlikely to involve itself because there are no fake goods involved which could cause harm to members of the public.

It is not that TS would not want to become involved, but they do not have the man power or the funds.

Likewise, although using the registered trade mark symbol is a criminal offence if you don't actually have a registered trade mark, I have not know TS to bring a single action in the 20+ years I have been in the IP profession. When I had reason to ask TS how they go about prosecuting someone for this very offence not that long ago, they weren't even sure that it was them that was responsible for doing so!