Being accused of "passing off"

sam79_2

Hi folks

I am hoping to pick all of your brains.

I started my cleaning business in August 2009, under the name of "Clean-Tec", I registered this name after I checked in my county if anyone had the same name. They did not.

Today I have received a letter from a "Clean Tech" stating that I am guilty of "passing off" as they have been using their name since 2004. They are in the neighbouring county.

Is there anything I can do, or any advice would be gratefully received as the letter states that " they insist i cease using the name " and that I have "7 days to respond in writing to avoid further possible legal action" against me.

I look forward to reading your responses,

Kind regards

Samantha

paulwf

Hi Samantha,

What do you and they mean by registering? Is it an issue over name clashes at Companies House (i.e. your limited company name) or is it to do with registered trademarks? This will make a difference as to what type of professional you need to defend you.

The company that wrote to you might retain legal services that just do an automatic trawl of similar names then blasts out lots of letters and sees what happens. On the other hand they might be taking it more seriously. I would suggest taking some professional advice to see how seriously the other company is and take it from there. Also have a think about how important the name is to you, is it less hassle to just rebrand?

sam79_2

sorry, yes i meant i told the HMRC the name. i understand now that i "cant" register the name. the other company is not limited either. and as for the name, i have paid a lot out to have the name on it. so its financial aswel as hassle.

CeeBeeDeeBee

Hi Samantha

First of all try not to worry too much, often these type of things look and sound alot worse than they actually are.

You must get proper legal advice, your insurance will probably offer a legal helpline which could be your first port of call.

Was the letter from a legal firm/solicitor or from the company themselves? They may just be trying to bully you into submission without going legal.

For them to prove to a judge you are 'passing off' I think they would need to prove that the spelling is the same, the logo is near identical etc. It's not as simple as they are trying to make out.

Also check if the name has been registered as a trademark.

I personally think that if they are not a Ltd company registered at Companies House and dont have the trademark and the logos are not near identical then they don't have a leg to stand on and you should repond as such!

Is your company a Ltd company?

sam79_2

the letter was from the company themselves, threatening further "possible" legal action

and no my company is not Ltd.

CeeBeeDeeBee

Hi Samantha

Have you made any enquiries about this company? Do you both offer the same services ie are you a direct competitor?

I don't think there is really much that they can do - passing off is generally if you were to use a name and logo of a widely known company in order to con people into thinking you are that company.

As your name is spelt differently is the logo different or similar?

CeeBeeDeeBee

I've just done a quick look on Google, it seems it is quite difficult to prove passing off;

http://www.berryman.co.uk/upload/A%20guide%20to%20passing%20off.pdf

If you think about it passing off happens all the time, supermarkets use similar colours, shapes etc to mimic the market leading brands.

I would just get your solicitor to write back dismissing their claim and see what they do - after all if they want to spend money taking you to court you can always back down before it gets there!

paulwf

I'm wondering if it is worth making the first move and registering your company at Companies House (very cheap to register a dormant company, it won't change how you trade at all) and registering a trademark might not be too pricey?

Please take professional advice before doing this, it is just a thought not concrete advice. However I bet if you jump in ahead of them and get the company and trademark registered it will vastly strengthen your position.

hippyadam

paulwf wrote: »

I'm wondering if it is worth making the first move and registering your company at Companies House (very cheap to register a dormant company, it won't change how you trade at all) and registering a trademark might not be too pricey?

Please take professional advice before doing this, it is just a thought not concrete advice. However I bet if you jump in ahead of them and get the company and trademark registered it will vastly strengthen your position.

That would be my suggestion too, i've had a look and i cant find a company registered simply as "Clean Tech" but there are a few others with similar names.

Does this other company operate in a similar field? Ie are you both say cleaners (just a guess not saying your a cleaner) if not passing off will be difficult (but not impossible) to argue as your in different industries...

Unfortunately passing off is a complicated field mainly based on case law and not statute, so its open to interpretation. My intial feeling is they are trying it on but it may be worth trying to find a solicitor that specialises in intellectual property rights. Or failing that, just A.N. Friendly solicitor if you know one.

zppp

OP I know a bit about company names and passing off. I need a bit more info, namely:

• Type of business - is it incorporated (registered with Companies House) or not?
• What type of business is it (you have said not Ltd) but can you confirm it is not and LLP (Limited Liability Partnership)
• You state you have registered your name. What have you done to protect or register your name?

Once I know this I can give you a bit more info.

Equaliser123

Registering the company name at Co's House is poor advice. For a start it would mean that the nature of the company moves from (presumably) a sole trader to a limited company which will involve a whole new regime - different taxation, governance, formalities, etc.

How long has your business been trading?

In my view (lawyer who used to do a lot of work in respect of IP infringement) it is a bluff and they will not take action against you unless they can demonstrate that a substantial number of customers have been confused.