Being accused of "passing off"

Equaliser123

zppp wrote: »

Um, the OP has stated they have a dormant company, hence why I have said what I have said. It may not answer the trademark question, but when the OP talks about protecting their company name, I have given guidance as such.

Um...as said by others, that wasn't the OP.

And a dormant company will have no impact on passing off as it has not generated goodwill - the key constituent for unregistered trademarks (i.e. passing off).

sam79_2

hi folks, sorry ive not been on line over the weekend.

right i am a domestic/office new build cleaning company. my company name is clean-tec. i started trading august 2009

the other company are a carpet and upholstery cleaning company. called clean tech. and has apparently been trading since 2004

i am a sole trader and am therefore not registered at companies house.

the letter sent to me read as follows........

Re your trading name of Clean tec

I notice you are using the above trading name.

I have been using the name of Clean Tech since 2004.

You are causing confusion by using this name and I must insist that you cease using the name as you are guilty of "passing off".

Please confirm in writing within 7 days that you will change your name to avoid further possible legal action against yourselves.



The letter was from the company direct and the address of the company was from the neighbouring county. i have looked at their website and the do apparently cover my postcode.

CeeBeeDeeBee

Hi Samantha

I think we are all in agreement here that the other company are trying their luck. Pasing off is a compex area and difficult to prove, from what I understand they would have to prove that you have caused considerable confusion and demonstrationable losses.

As your name is spelt differently, you operate in a slightly different area (of cleaning) and neither of you are Ltd co's I don't think they would be successful if they took it to court.

Them saying 'you are guilty' in their letter means absolutely nothing, it would be up to a judge to decide.

Speak with your solicitor and get them to send a reply telling them where to go!

Equaliser123

I think it is a try on. I would suggest writing back disputing the claim.

hippyadam

CeeBeeDeeBee wrote: »

Hi Samantha

I think we are all in agreement here that the other company are trying their luck. Pasing off is a compex area and difficult to prove, from what I understand they would have to prove that you have caused considerable confusion and demonstrationable losses.

As your name is spelt differently, you operate in a slightly different area (of cleaning) and neither of you are Ltd co's I don't think they would be successful if they took it to court.

Them saying 'you are guilty' in their letter means absolutely nothing, it would be up to a judge to decide.

Speak with your solicitor and get them to send a reply telling them where to go!

Seconded :beer:

Equaliser123

CeeBeeDeeBee wrote: »

As your name is spelt differently, you operate in a slightly different area (of cleaning) and neither of you are Ltd co's I don't think they would be successful if they took it to court.

Speak with your solicitor and get them to send a reply telling them where to go!

I agree with you generally but none of the points you raise would constitute an absolute defence.

A solicitor who specialises in intellectual property would be extremely expensive. A solicitor who does not specialise would be a total waste of money.

CeeBeeDeeBee

I agree Equaliser, it seems to be a tricky area of case law and the main point is the OP needs to speak to a solicitor to be sure.

I think there are a few points to consider; firstly that neither is a Ltd co, which I would think would weaken the agressors position, afterall how many Taj Mahal restaraunts are there lol! The OP has been trading for well over a year now - is there not a 12 month limitation?

Secondly the letter they sent was from the company themselves, not their solicitor which to me indicates that, unless thay are a large firm and have their own legal department, they probably have not gotten proper legal advice as it doesn't cost much in the scheme of things to issue a cease and desist letter.

As said before the OP should, if she has not done so already, seek legal advice and go from there.

Equaliser123

CeeBeeDeeBee wrote: »

I agree Equaliser, it seems to be a tricky area of case law and the main point is the OP needs to speak to a solicitor to be sure.

I think there are a few points to consider; firstly that neither is a Ltd co, which I would think would weaken the agressors position, afterall how many Taj Mahal restaraunts are there lol! The OP has been trading for well over a year now - is there not a 12 month limitation?

Secondly the letter they sent was from the company themselves, not their solicitor which to me indicates that, unless thay are a large firm and have their own legal department, they probably have not gotten proper legal advice as it doesn't cost much in the scheme of things to issue a cease and desist letter.

As said before the OP should, if she has not done so already, seek legal advice and go from there.

The Ltd company issue is a red herring as it is about how the business trades that is crucial.

hippyadam

Setting up a Ltd company wont impact on this situation directly, however if you are using a trading name it does give you some protection from having a competitor set up a Ltd company in exactly the same style.

Ie If your Joe Bloggs T/A Bloggs Cleaning it will stop someone registering Joe Bloggs Cleaning Ltd and its a lot easier than appealing to Companies House to object if someone does set up a co in your trading name

Equaliser123

hippyadam wrote: »

Ie If your Joe Bloggs T/A Bloggs Cleaning it will stop someone registering Joe Bloggs Cleaning Ltd and its a lot easier than appealing to Companies House to object if someone does set up a co in your trading name

I'm not sure it will. There has to be genuine confusion on the part of the public.

A quick look at Companies House shows a huge amount of very, very similar names.