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    • MartialArtsGuy
    • By MartialArtsGuy 15th May 17, 11:10 AM
    • 2Posts
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    MartialArtsGuy
    Trade Mark query for Martial Arts club - HELP.
    • #1
    • 15th May 17, 11:10 AM
    Trade Mark query for Martial Arts club - HELP. 15th May 17 at 11:10 AM
    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. 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 - 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).

    Can someone please help me before I loose my mind?

    Many thanks
    Last edited by MartialArtsGuy; 15-05-2017 at 4:28 PM.
Page 1
    • antrobus
    • By antrobus 15th May 17, 12:40 PM
    • 14,651 Posts
    • 20,738 Thanks
    antrobus
    • #2
    • 15th May 17, 12:40 PM
    • #2
    • 15th May 17, 12:40 PM
    ..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)...
    Originally posted by MartialArtsGuy
    The National Business Register is a perfectly legitimate LLP as far as I can see. But then anybody could set up a similar register and seek to persuade people to cough up some money to put their details on the register. But doing so would (in my opinion) amount to SFA.

    ...Strangely if I look up his "Trade Mark" on the UK Governments IPO website I find nothing. Therefore is the registration even real?..
    Originally posted by MartialArtsGuy
    There you go then. It's not a registered trade mark.

    The "Infringement of trade marks and copyrights can be criminal offences", but that's really about counterfeiting and, in any case, your correspondent does not have a trade mark.

    The safest course would be to engage a solicitor who could respond with the correct language and convey the answer given in Arkell v Pressdram.

    https://www.gov.uk/guidance/intellectual-property-crime-and-infringement
    • footyguy
    • By footyguy 15th May 17, 1:29 PM
    • 3,202 Posts
    • 1,225 Thanks
    footyguy
    • #3
    • 15th May 17, 1:29 PM
    • #3
    • 15th May 17, 1:29 PM
    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
    Originally posted by MartialArtsGuy
    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.
    • bingo bango
    • By bingo bango 15th May 17, 1:39 PM
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    bingo bango
    • #4
    • 15th May 17, 1:39 PM
    • #4
    • 15th May 17, 1:39 PM
    Certainly looks like passing off on the face of it, but if you have been operating for 5 years without this affecting the other business then it's unlikely he would be in a position to seek any damages.

    The register he has used only does one thing, and that is prove that it was in use at a point in time. The fact that the trademark is unregistered (with IPO/WIPO) does not mean that he can't take legal action against you, just that he is limited in what he can ask for. As mentioned above, you should probably try to get a free half hour with an IP lawyer, who should be able to give you a steer at least.
    • paddyrg
    • By paddyrg 15th May 17, 7:48 PM
    • 12,909 Posts
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    paddyrg
    • #5
    • 15th May 17, 7:48 PM
    • #5
    • 15th May 17, 7:48 PM
    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.
    • springdreams
    • By springdreams 15th May 17, 8:30 PM
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    springdreams
    • #6
    • 15th May 17, 8:30 PM
    • #6
    • 15th May 17, 8:30 PM
    I am a chartered trade mark attorney. However, I cannot offer you any legal advice on this board as it is against the rules for me to do so.

    Please contact CITMA to find a trade mark attorney local to you for assistance:

    https://www.citma.org.uk/home

    I would advise though that validly registered UK trade marks are registered through the UK Intellectual Property Office, not through the National Business Register.

    And trade mark infringement is not a criminal offence. It is a civil matter.
    Last edited by springdreams; 15-05-2017 at 8:32 PM.
    Smiles are as perfect a gift as hugs...
    ..one size fits all... and nobody minds if you give it back.
    Originally posted by squeaky
    ☆.。.:*・ Housework is so much easier without the clutter ☆.。.:*・
    SPC No. 518
    • MartialArtsGuy
    • By MartialArtsGuy 16th May 17, 9:01 AM
    • 2 Posts
    • 1 Thanks
    MartialArtsGuy
    • #7
    • 16th May 17, 9:01 AM
    • #7
    • 16th May 17, 9:01 AM
    Thank you everyone for your helpful responses. I have now sought guidance from an IPO Attorney.

    Many thanks
    • bingo bango
    • By bingo bango 16th May 17, 11:23 AM
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    bingo bango
    • #8
    • 16th May 17, 11:23 AM
    • #8
    • 16th May 17, 11:23 AM

    And trade mark infringement is not a criminal offence. It is a civil matter.
    Originally posted by springdreams
    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.
    Last edited by bingo bango; 16-05-2017 at 11:27 AM.
    • springdreams
    • By springdreams 16th May 17, 8:59 PM
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    springdreams
    • #9
    • 16th May 17, 8:59 PM
    • #9
    • 16th May 17, 8:59 PM
    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.
    Originally posted by bingo bango
    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.
    Last edited by springdreams; 16-05-2017 at 9:05 PM.
    Smiles are as perfect a gift as hugs...
    ..one size fits all... and nobody minds if you give it back.
    Originally posted by squeaky
    ☆.。.:*・ Housework is so much easier without the clutter ☆.。.:*・
    SPC No. 518
    • bingo bango
    • By bingo bango 17th May 17, 10:24 AM
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    • 1,444 Thanks
    bingo bango
    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.
    Originally posted by springdreams
    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 )
    • springdreams
    • By springdreams 17th May 17, 6:48 PM
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    • 31,247 Thanks
    springdreams
    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 )
    Originally posted by bingo bango
    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!
    Last edited by springdreams; 17-05-2017 at 6:52 PM.
    Smiles are as perfect a gift as hugs...
    ..one size fits all... and nobody minds if you give it back.
    Originally posted by squeaky
    ☆.。.:*・ Housework is so much easier without the clutter ☆.。.:*・
    SPC No. 518
    • bingo bango
    • By bingo bango 18th May 17, 10:30 AM
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    bingo bango
    See now I get where you're coming from.

    I agree that formal prosecutions would be like finding hen's teeth, but court isn't the only enforcement option in the toolkit. Those options go unreported, but can still be very effective. Although I suspect you would be hard pressed to find a court who understood the S.95 offence, even if a TSO decided to bring one.

    Additionally, some rights holders will not support a case where the numbers are small (perceived as damaging the brand if they admit that there are counterfeits - go figure). If the rights holder isn't interested, no point wasting money on an investigation which would fail as soon as a good IP lawyer found that point out! ^^

    Which is all good news for you! The way things are going, you should have another 10-15 years before TS see any type of funding increase.
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