Been accused of trademark infringement

hopefulfooluk

Hi all,

I wonder if any of you can advise. I've been trading for about 5 years with the same name (I'm a sole trader), and today received a letter from a trademark lawyer on behalf of their (massive, corporate) client saying that I am infringing on their client's trademark, causing damage to their business.

I won't say exactly what the trademark or the name of the company is, but I will give an example.

The company accusing me is called (for instance) "ProTech inc" and they have a a registered UK trademark listed as "ProTech"

My company is called (for instance) "Protech Services" (note capitalisation)

Their trademark is in class 9 - I operate in class 42. They have asked me to stop using my name to trade as it infringes on their trademark, but since we operate in different classes (despite being in the same technology-based industry), I do not believe I am infringing on their trademark. I'm also not sure whether the capitalisation affects this either.

The obvious answer is to get a trademark lawyer on the case for me, but I do not have bucketloads of cash to throw around so was wondering if any of you had any opinions on the best course of action for me to take? Rebranding really isn't an option - it'll take too long, have a massive negative effect on my business, and quite frankly I don't believe I should have to.

Any thoughts would be greatly appreciated.

Thanks.

hippyadam

A cheap way to protect your name & see if they really do have grounds for infringement you could try registering a ltd co in your trading as name. This will:

A. Protect your name by stopping anyone registering it as a ltd company and
B. The company claiming infringement will have to object to said ltd co name at Companies House & they will decide if the names are "too close".

Not the most elegant solution, but maybe one worth considering

hopefulfooluk

Thanks hippyadam. I already have my trading as name registered at companies house as a dormant (non-trading) ltd co and have had this registered for about 3 years. Nothing at all was said when the company was registered about potential TM infringement - I guess it would have been if companies house felt that there was a potential TM issue?

RichyRich

It is your responsibility to ensure that your name does not infringe anyone else's trademark, and whilst CH will not allow any blatent infringements to be registered I'd be very surprised if they took responsibility for any registrations that happened to infringe but passed through.

olly300

OP I suggest you google about how Macdonalds deals with companies using names similar to them .

The capitalisation doesn't actually matter would matters is that to the normal man on the street is that they can clearly distinguish the companies are different. According to the trademark owner they can't and so to them you are passing yourself off as them.

Personally I would just change the name as it would be cheaper than paying for a solicitor.

Your paperwork would for about 2 years be in the form of "Newtech Services formly Protech Services". Many companies change their name i.e. Norwich Union/Aviva, Post Office/Consignia/Post Office so it's not a big deal.

hopefulfooluk

Thanks everyone.

I have a Professional Indemnity policy - from the wording of it, it would appear that I may be covered for this if they do decide to sue me, but I'd like a second opinion - does this sound like I might be covered:

"If during the period of insurance, and as a result of your business activity within the
geographical limits for clients, any party brings a claim against you for infringement of intellectual property rights including copyright, trademark or moral rights or any act of passing-off, including any liability you have for infringement of intellectual property rights under an indemnity in a written contract with your client for the supply of deliverables we will indemnify you against the sums you have to pay as compensation. We will pay defence costs but we will not pay costs for any part of a claim not covered by this section."

My limit is £1M. I will call them on Monday but in the meantime I'll rest easier if other people think that the wording also suggests that I am covered.

Thanks.

lynzpower

What you DONT want to happen, is that you start getting embroiled in the legals, then your insurer finds a way of wriggling out of paying it :eek:

hopefulfooluk

lynzpower wrote: »

What you DONT want to happen, is that you start getting embroiled in the legals, then your insurer finds a way of wriggling out of paying it :eek:

Yes that's true. Definitely don't want that to happen!

I think I have resigned myself to changing name - it won't be pretty, but the alternative is months of uncertainty and quite possibly massive legal costs.

Just seems unfair that I'm being bullied into it by a massive corporate who is losing nothing at all by my use of it, whereas I stand to lose massively.

paulwf

Don't make a decision to change your company name within 24 hours!

Why not get some specialist advice first, there are probably more specialist forums out there or you could contact some legal firms that deal with trademark and you might be able to get some initial free advice.

I'm wondering if they are trying it on? They might do a search for any name vaguely related then send out a generic letter. A quick solicitors letter back saying you have taken advice and they don't have a case might be enough to get them to back off. I'm just speculating...I know large companies (when dealing with issues totally unrelated to the case here) do take a chance knowing most small businesses will give in, as soon as you stand up for yourselves they give up and move on.

hopefulfooluk

Thanks Paulwf, that's really reassuring.

I'll have a look around for some free legal advice first thing on monday - I think what has riled them is that somehow I now appear on the first page of google when you look up their company name! Not quite sure how that's happened, but it's a bit of a compliment I guess that they see me as enough of a threat to write to!

Thinking of approaching the other companies with very similar names too, to see if they've tried it on with them - a good idea you think?

Thanks again, made me feel much better about it.

Cheers!

BonandDom

Register on ukbusinessforums and there will be someone there who can advise you