Been accused of trademark infringement

hopefulfooluk

Thanks BonandDom, have posted there too.

Looks like opinions are split between challenging it and sucking it up.

MrsFreeburn

hopefulfooluk, as BonandDom mentioned, register at above mentioned forums. To me, what this comes down to when to "challenge it or sucking it up", always consider how much YOUR brand name is worth to you.

For example, if you have a website, most brands will notice that it will be brand keyword related terms that bring in the most traffic to their websites from search engines. Once you have a price in mind - this should help to make a decision to proceed to fight, or give it up... as well as weighing up all the other variables.

good luck and keep us posted, please?

Thank you.

hippyadam

TBH if they haven't objected to the Ltd company name i'd be tempted to tell them to hit the bricks... (but i'm renowned for being argumentative) :rolleyes:

As others have suggested i'd speak to a trademark solicitor before you decide anything... & do let us know how you all get on

magpiecottage

Speak to your PI Insurers first.

They should have lawyers who can advise you - and they need to know.

And if your turnover is less than £1 million you they have to treat you in accordance with FSA rules - including letting you go to the Ombudsman if necessary.

a11waysindebt

Unless it is a large company and you are trading in the same items/services I'd carry on with your name.

Exactly who did contact you about the name.

hopefulfooluk

Thanks all.

I have just spoken to my PI insurers and they have asked me to send them the letter I received along with any other information I feel is relevant, so I have just done that. Will wait to hear what they say - hopefully I will be covered should I decide to pursue it. If they tell me that they won't cover me then I feel I will have no option but to send the undertaking back to them as I don't want to risk having significant damages being awarded against me as I just can't afford for that to happen.

FWIW my turnover is less than £1m (it's about £80k) so it does sound like the ombudsman is an option. Would that afford me more time too?

Thanks again everybody.

hopefulfooluk

a11waysindebt wrote: »

Unless it is a large company and you are trading in the same items/services I'd carry on with your name.

Exactly who did contact you about the name.

A large solicitors who specialise in IP sent me a letter. Nobody from the company concerned has contacted me directly - this is the first I heard of the matter.

They are a very large company - about $300M in revenue. Totally in a different league.

kalaika

hopefulfooluk wrote: »

...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...

Obviously follow the advice given above first, but if you do decide to change your name, could you just adjust it, rather than change it completely, so that it's different enough to satisfy this large company?

e.g. using the example company names you used, could you change Protech Services to:
Pro-tech Services.
Pro Tech Services.
Protech (London) Services - or whatever location you operate in.
hopefulfooluk's Protech Services
Protech Products and Services
etc

If you can do this, the change might not be quite as bad as you expect. Some of your customers might not even notice...

hopefulfooluk

Thanks Kalaika - that's good advice too - I really appreciate the comments.

I've just spoken to a patent attorney (not quite the same, but their trademark person wasn't available) and he's said that the trademark they are listing in their legal letter is for a graphical mark of the word (their logo), rather than the word. So it looks like they may have just stuck that in to try and bluff that I'm infringing their registered trademark, when in fact I'm not.

However what he did say that it looks like they are solely bringing action against me for passing off, in which case they would be expected to substantiate it with hard evidence if it was taken to court. So they'd have to prove I was passing off as them (which I most certainly am not). He advised that if I did want to send the undertaking back, don't worry too much about the deadlines but send one back on my terms rather than crossing bits out of the existing one - ask them to pay my rebranding costs and see what they say. He said there's a lot of bully tactics that go on in this field and often it's not worth their while pursuing something like this.

I've also started a claim with my PI company and they've got their panel of solicitors on the case this afternoon too, so hopefully I will hear back from them in due course too. They are covering the cost of that so that's good too.

I will keep you posted on what my insurers say, but I am almost certain that I am not going to send this undertaking back now, given that most of what they were saying in the letter is irrelevant.

Cheers!

Chris

hippyadam

hopefulfooluk wrote: »

Thanks Kalaika - that's good advice too - I really appreciate the comments.

I've just spoken to a patent attorney (not quite the same, but their trademark person wasn't available) and he's said that the trademark they are listing in their legal letter is for a graphical mark of the word (their logo), rather than the word. So it looks like they may have just stuck that in to try and bluff that I'm infringing their registered trademark, when in fact I'm not.

However what he did say that it looks like they are solely bringing action against me for passing off, in which case they would be expected to substantiate it with hard evidence if it was taken to court. So they'd have to prove I was passing off as them (which I most certainly am not). He advised that if I did want to send the undertaking back, don't worry too much about the deadlines but send one back on my terms rather than crossing bits out of the existing one - ask them to pay my rebranding costs and see what they say. He said there's a lot of bully tactics that go on in this field and often it's not worth their while pursuing something like this.

I've also started a claim with my PI company and they've got their panel of solicitors on the case this afternoon too, so hopefully I will hear back from them in due course too. They are covering the cost of that so that's good too.

I will keep you posted on what my insurers say, but I am almost certain that I am not going to send this undertaking back now, given that most of what they were saying in the letter is irrelevant.

Cheers!

Chris

Go get 'em! I pity the fool that messes with my bidness!