Passing Off Advice

Bulldog1979

Hi Everyone,

I wanted to see if anyone knew of any Passing Off templates please? I am looking to send a letter to a competitor who (without going into a lot of detail on a public forum) has copied my companies advert and indeed our name (of which the TM has been published in the Journal)

To top it all they actually filed a proposal to oppose our trademark (without any cause or reason) and have even continued to use our TM AND even making new adverts using our TM word for word!

I want this to stop and thought about a cease and desist however I have been informed by my TM solicitor to start the passing off proceedings with the company & claim damages/compensation.

After being told I would have to pay in excess of £400 for the letter to be drafted I wanted to see if anyone could give me free legal advice on drafting the letter - I (think I) have the evidence required but don't know how to put it together?

Thank you in advance for any assistance you can give as we only started our business this year so after investing in the TM process we thought that would stop our unique concept being used and plagiarised however I was wrong!?

Pennywise

Please think VERY carefully about going down a legal route. What happens if you do send a cease and desist letter and they ignore it? Do you have the means to continue down the legal route? If it's £400 for a letter, how much do you think it will be to actually start legal action - it's thousands with no guarantee of success. Do you really have the time and money to see it through? Even if you stop them using your TM, they'll find other ways to compete - they're not just going to go away.

Can you not find other ways to compete? Such as being better, being cheaper, being quicker, better marketing, etc. Lots of businesses manage to compete with near identical competitors and do OK.

Mistral001

"Passing off" comes up fairly often in this forum. However, this seems to be a dispute over a trade mark.
Perhaps a closer look at your trade mark might do no harm at this stage. You say they have no reason for opposing it, but that is a business-owner talking. Business-owners treat their businesses and brands like their own children almost and nobody can say anything about them. Can you get an opinion from an independent and dispassionate source on that trademark at that stage. It might prove more worthwhile use of your money than kicking off a legal battle by sending solicitor's letters.. As Pennywise has said, it can be expensive if you go down the legal route.

paddyrg

Trademarks are such a subtle area - look at the American Football team Washington Redskins over in the US - trademark cancelled USPTO. If you're unable to afford legal assistance now, it's possible you didn't get advice when registering your mark, and that there are issues surrounding it, which the competition is exploiting.

Are you certain the exploitation is deliberate, not for instance the use of a common term? Even if it is, being right is only useful if you can afford to enforce it, so perhaps try an informal approach thanking the competition for promoting your brand and trademark but requesting them not to any longer. It may not be malicious, but incompetence, and they may not actually realise about trade marks etc.

HatAndScarf

Bulldog1979 wrote: »

Hi Everyone,

I wanted to see if anyone knew of any Passing Off templates please? I am looking to send a letter to a competitor who (without going into a lot of detail on a public forum) has copied my companies advert and indeed our name (of which the TM has been published in the Journal)

To top it all they actually filed a proposal to oppose our trademark (without any cause or reason) and have even continued to use our TM AND even making new adverts using our TM word for word!

I want this to stop and thought about a cease and desist however I have been informed by my TM solicitor to start the passing off proceedings with the company & claim damages/compensation.

After being told I would have to pay in excess of £400 for the letter to be drafted I wanted to see if anyone could give me free legal advice on drafting the letter - I (think I) have the evidence required but don't know how to put it together?

Thank you in advance for any assistance you can give as we only started our business this year so after investing in the TM process we thought that would stop our unique concept being used and plagiarised however I was wrong!?

Dear Sir or Madam,

I am writing this letter to you who (without going into a lot of detail here) has copied my companies advert and indeed our name (of which the TM has been published in the Journal)

To top it all you actually filed a proposal to oppose our trademark (without any cause or reason) and have even continued to use our TM AND even making new adverts using our TM word for word!

I want this to stop and thought about a cease and desist however I have been informed by my TM solicitor to start the passing off proceedings with the company & claim damages/compensation.

As a result, I now claim from you £..... [insert amount claimed] in damages/compensation

Yours faithfully,

Bulldog1979

Then spend £400 and get the job done properly

Mistral001

I hope you do not mind the devil's advocate role perhaps that I am playing, but if you have only been in business this year, are you certain that the other business has not been in business and using this name for longer than that?

Savvy_Sue

Bulldog1979 wrote: »

I wanted to see if anyone could give me free legal advice on drafting the letter

Free legal advice isn't worth the screen it's written on ...

Savvy_Sue

Savvy_Sue wrote: »

Free legal advice isn't worth the screen it's written on ...

Just to explain myself a bit better: the advice given on this forum may or may not right, but you cannot EVER 'rely' on it, because a) you have no idea who's on the keyboard behind the screen and b) you have no contractual relationship with them.

By 'rely', I mean 'sue the pants off the advice giver if it turns out to be wrong'.

If there are suitable templates out there, I'd say you're just as likely to find them with a google as you are through someone here.

Obviously you can use what's written here to follow up on suggestions, and you may find you can see a way forward as a result.

But it won't be legal advice, just advice.

Bulldog1979

Thank you all for your advice / comments,

I'll try and answer / respond to your comments, my apologies if it doesn't answer correctly.

I agree firstly with the financial implications of going down the legal route however that is the problem with the concept as we wanted to licence the concept to other businesses however this jeopardizes our opportunity as if we don't fight this (&publicly) we will lose out on future business with other businesses - In some ways we do need to get this beaten to show others that we wont sit back - otherwise as Mistral001 mentioned our TM would be worthless.

Our TM was checked by a solicitor prior to applying and went through the checks by the IPO. I spent a few £100 in the first instance to research the name / TM prior to applying so I just think it is a case of continuing the investment - our only issue (as you have all said) it is as long as a piece of string when going down the legal route however they haven't responded to a solicitors letter regarding their proposal to oppose - so who knows!

They are definitely copying the name on purpose as they have copied our advertisement word for word - bar a few obvious changes!

Thank you all again for your thoughts and I will have to proceed with the passing off process as I mentioned it's important for our future plans.

Bulldog1979

paddyrg

Thanks for the update. I, for one, would be interested to know how it all goes - any chance you could post here once in a while so I/we can follow along?

Bulldog1979

Hi Everyone,

I have an update - I sent a Passing Off Infringement letter to the defendant stating everything (including evidence) of how they had been passing off our TM - requesting them to comply by the following:

1 To immediately cease and to desist in the future from conducting the Actions as defined in your representative’s letter dated ** ******.
2 To immediately cease and to desist in the future from passing off ourselves or any business or goods or service of ours or with which we are associated as being that or those of or in any way associated or connected with you or your business.
3 Within 5 days of this undertaking, to deliver up all goods and associated materials (including advertising and marketing materials) in our possession, custody or control which relate to our acts of passing off as detailed in the Actions or any other acts covered by the above undertakings ('Infringing Items').
4 Within 5 days of this undertaking, provide full details of all purchasers to whom we have supplied Infringing Items and any suppliers to us of Infringing Items, as are in our possession, custody or control including (without limitation) contact details, quantities supplied or purchased and prices.
5 Within 7 days of their coming into our possession, custody or control, to deliver up all Infringing Items that in the future come into our possession, custody or control.
6 Within 5 days of this undertaking, to provide you with a witness statement, endorsed with a statement of truth, to confirm that we have complied with the undertakings given in paragraphs The Schedule Part A1 to The Schedule Part A5 above and that the details provided under paragraph The Schedule Part A4 above are correct and complete.
7 To pay such damages or account of profits in respect of the Actions as may reasonably be agreed with you or, in the absence of any agreement, as may be determined by the court.
8 To pay your reasonable legal costs in connection the Actions, such sum to be agreed between you and us or, in the absence of any agreement, as may be determined by assessment.


Now I only gave the defendant 48 hours to (a) sign the above schedule stating that within the set times above they would comply (mainly 7 days to comply) They then emailed us saying:

"I write on behalf of ******** . Your correspondence of ******** is noted. Your request for a signed undertaking by close of business by ******** is also noted. The timescales which you have set are unrealistic. I propose to take legal advice on the matters raised, and will aim to respond to your letter of claim within 14 days. I undertake that no use will be made of the phrase “********” for or on behalf of ******** in the intervening period. Without prejudice to liability, I confirm that any references to the term which appear on ********' website have been temporarily removed.

Should you proceed to issue proceedings prior to receipt of my response, I shall draw the court’s attention to the content of this email when it comes to deal with the issue of costs."

- I gave this small timescale as I couldnt give them the standard 14 days as this would fall after their next event where they are going to use the TM & offer our service as their own!

Not only that but we believe they have already printed a magazine using our TM as theirs which obviously we don't want!

Am i right in applying for an Interim Injunction (N244)? And if so how soon should i apply as the time I originally set in the letter has past?

It may sound like i know what im doing but belive me i would LOVE some assistance please!