Trademarks Dilemma

BakerBoy

Hello all,
I'm hoping to hear some peoples opinions/experience along the lines of my trademark dilemma.

Names have been changed to protect the innocent!!

In March 2012 I registered a trademark, The Green Valley Widget Company.

I have since learnt that there already exists a limited company called The Green River Valley Widget Ltd. (added 'river', no 'company')

However, this company is a major franchisee of a UK high street brand and trades under the brand name, not its limited company name.

I'm getting close to a stage where I want to launch my widget brand, and I reckon they will feel a bit put out.

In my opinion the target market for my widget has no knowledge of the name of the franchisee for the national brand, and will be none the wiser. Anyway I'm confident I can tell my story with my widget and not have any real difficulty over confusion. So that's not the issue.

I'm just wondering if they would have a case against me as they have been in existence longer than the two years I have had the trademark.

I have applied to register a plan B, Brigdet the Widget, just in case.

Thought appreciated. Thanks.

Aquamania

BakerBoy wrote: »

Hello all,
I'm hoping to hear some peoples opinions/experience along the lines of my trademark dilemma.

Names have been changed to protect the innocent!!

In March 2012 I registered a trademark, The Green Valley Widget Company.

I have since learnt that there already exists a limited company called The Green River Valley Widget Ltd. (added 'river', no 'company')

However, this company is a major franchisee of a UK high street brand and trades under the brand name, not its limited company name.

I'm getting close to a stage where I want to launch my widget brand, and I reckon they will feel a bit put out.

In my opinion the target market for my widget has no knowledge of the name of the franchisee for the national brand, and will be none the wiser. Anyway I'm confident I can tell my story with my widget and not have any real difficulty over confusion. So that's not the issue.

I'm just wondering if they would have a case against me as they have been in existence longer than the two years I have had the trademark.

I have applied to register a plan B, Brigdet the Widget, just in case.

Thought appreciated. Thanks.

Ah, Trademark disputes.

Arguably one of the most profitable litigation claims any lawyer can be involved in, closely followed by divorce claims and property boundary disputes.

I remember a dispute a few years back involving Harrods Vs a cafe on the northbound A12 in Essex - the cafe with an entirely different name just used a similar font to Harrods and Harrods didn't like it.

http://news.sky.com/story/782202/warning-sign-harrods-threatens-essex-cafe

The thing is, it's usually the one with the biggest pockets that wins in such a dispute.

In that case, I remember the cafe was forced to change their name after a long & expensive dispute (I think it re-launched as an American theme cafe)

I actually went past it the other day - it was derelict.


Now your dispute is, or may be as the case may be, with a large high st franchisee chain. Sounds like they have more money than you.

I would suggest you seek professional advice. They may suggest you you approach them now before spending too much more money with your plans and see if they have any objections. If, as you say, no one knows the real business name behind this well know franchisee that operates under a different brand name, I wouldn't have thought they will have much of an issue. But only the business involved can tell you with certainty.

paddyrg

Is it worth a fight? You suspect they may file some sort of claim, defending it will be staggeringly expensive, may as well save the heartache now and find a fresh branding

BakerBoy

Thanks for the replies. Probably not worth a fight, let alone an expensive one.