My friend is of the belief that the old owner had abandoned the brand
name and therefore with the brand name registration would put him in a
strong position. Is this truly the case?
On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
[snip]
My friend is of the belief that the old owner had abandoned the brand
name and therefore with the brand name registration would put him in a
strong position. Is this truly the case?
He is in a strong position, yes. Providing he isn't in any way purporting to be the original trader, and isn't attempting to benefit from any goodwill built up by the original trader, then an action for passing off is very unlikely to succeed. So the most plausible course of action by the original trader would be to attempt to get the trade mark revoked. But that is an uphill task, particularly if he was notified at the time of the original regstration and didn't object. So I think your friend is justified in his belief that he has a strong case should it go to court.
The only exception to that may be the logo. You say that it's "similar", but don't say how much, and don't describe it at all. So a lot would depend
there on whether there has been any attempt to copy or reuse the original logo, or whether the similarity is purely coincidental.
To illustrate that, if, say, the business name is "Oak Tree IT Services",
and both the old and new logos are of an oak tree, then it's likely to be persuasive to argue that using an image of an oak tree for a businesss named Oak Tree is simply a statement of the obvious, and that therefore the new logo is not a copy or derivative of the old one, but merely an independent expression of the same thought. But if, say, the business name is "David Jones IT Services", and the old and new logos are both oak trees, then it would be much harder to argue that the similarity is mere coincidence as there's no obvious reason to use an oak tree as a logo for that name. In which case, an action for design right infringement would have a much stronger chance of success.
On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
[snip]
My friend is of the belief that the old owner had abandoned the brand
name and therefore with the brand name registration would put him in a
strong position. Is this truly the case?
He is in a strong position, yes. Providing he isn't in any way purporting to be the original trader, and isn't attempting to benefit from any goodwill built up by the original trader,
then an action for passing off is very
unlikely to succeed. So the most plausible course of action by the original trader would be to attempt to get the trade mark revoked.
But that is an
uphill task, particularly if he was notified at the time of the original regstration and didn't object. So I think your friend is justified in his belief that he has a strong case should it go to court.
The only exception to that may be the logo. You say that it's "similar", but don't say how much, and don't describe it at all. So a lot would depend
there on whether there has been any attempt to copy or reuse the original logo, or whether the similarity is purely coincidental.
What are the risks associated with a friend of mine who has taken on a trading name without the previous user's/owner's consent.
The old owner has abandoned his product for some months with all media
and websites taken offline.
There was a email dialogue between new and old parties where the money
asked by the 'old' owner was considered too much for his logo and other
IP including the brand name.
In the mean time, new owner registered a trademark with the brand name
and has now been through the publishing and process by the IPO, received
no opposition, so has been awarded to the new owner. This process took
some months.
As a result new company have began marketing, with a similar logo to the
old branding on a new and different website and the 'old' owner is
naturally upset and threatening legal action, plus threatening
bad-mouthing the new owner's and his product.
I've suggested he re-contacts the old owner with a view of salvaging
good will, but without any admission he's done anything wrong.
I had thought that once a trademark was registered, it is an uphill
struggle to go against this registration?
My friend is of the belief that the old owner had abandoned the brand
name and therefore with the brand name registration would put him in a
strong position. Is this truly the case?
On 17/12/2023 20:58, Mark Goodge wrote:
On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
[snip]
My friend is of the belief that the old owner had abandoned the brand
name and therefore with the brand name registration would put him in a
strong position. Is this truly the case?
He is in a strong position, yes. Providing he isn't in any way
purporting to
be the original trader, and isn't attempting to benefit from any goodwill
built up by the original trader, then an action for passing off is very
unlikely to succeed. So the most plausible course of action by the
original
trader would be to attempt to get the trade mark revoked. But that is an
uphill task, particularly if he was notified at the time of the original
regstration and didn't object. So I think your friend is justified in his
belief that he has a strong case should it go to court.
The old owner wasn't notified at the time of registration. However the trademark would have been published, but then who looks at the London Gazette?...
On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
[snip]
My friend is of the belief that the old owner had abandoned the brand
name and therefore with the brand name registration would put him in a
strong position. Is this truly the case?
He is in a strong position, yes. Providing he isn't in any way purporting to be the original trader, and isn't attempting to benefit from any goodwill built up by the original trader, then an action for passing off is very unlikely to succeed. So the most plausible course of action by the original trader would be to attempt to get the trade mark revoked. But that is an uphill task, particularly if he was notified at the time of the original regstration and didn't object. So I think your friend is justified in his belief that he has a strong case should it go to court.
The only exception to that may be the logo. You say that it's "similar", but don't say how much, and don't describe it at all. So a lot would depend
there on whether there has been any attempt to copy or reuse the original logo, or whether the similarity is purely coincidental.
To illustrate that, if, say, the business name is "Oak Tree IT Services",
and both the old and new logos are of an oak tree, then it's likely to be persuasive to argue that using an image of an oak tree for a businesss named Oak Tree is simply a statement of the obvious, and that therefore the new logo is not a copy or derivative of the old one, but merely an independent expression of the same thought. But if, say, the business name is "David Jones IT Services", and the old and new logos are both oak trees, then it would be much harder to argue that the similarity is mere coincidence as there's no obvious reason to use an oak tree as a logo for that name. In which case, an action for design right infringement would have a much stronger chance of success.
On 17/12/2023 22:33, Fredxx wrote:
On 17/12/2023 20:58, Mark Goodge wrote:
On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
[snip]
My friend is of the belief that the old owner had abandoned the brand
name and therefore with the brand name registration would put him in a >>>> strong position. Is this truly the case?
He is in a strong position, yes. Providing he isn't in any way
purporting to
be the original trader, and isn't attempting to benefit from any
goodwill
built up by the original trader, then an action for passing off is very
unlikely to succeed. So the most plausible course of action by the
original
trader would be to attempt to get the trade mark revoked. But that is an >>> uphill task, particularly if he was notified at the time of the original >>> regstration and didn't object. So I think your friend is justified in
his
belief that he has a strong case should it go to court.
The old owner wasn't notified at the time of registration. However the
trademark would have been published, but then who looks at the London
Gazette?...
Trade Mark and Patent Agents, who then notify the owner of possible infringements. My Patent Agent even notified me of a possible
infringement in Germany and we came to an amicable agreement with the
company there, as, while we were both in the medical field, our areas of operation and products were sufficiently different for there to be no
chance of confusion.
On 17/12/2023 20:58, Mark Goodge wrote:
On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
[snip]
My friend is of the belief that the old owner had abandoned the brand
name and therefore with the brand name registration would put him in a
strong position. Is this truly the case?
He is in a strong position, yes. Providing he isn't in any way
purporting to
be the original trader, and isn't attempting to benefit from any goodwill
built up by the original trader,
Sole purpose of exercise by the sound of it. Why else?
then an action for passing off is very
unlikely to succeed. So the most plausible course of action by the
original
trader would be to attempt to get the trade mark revoked.
It's actually the other way round. If the old owner had a trade mark registration it is the friend who needs to get that revoked, if he can.
But that is an
uphill task, particularly if he was notified at the time of the original
regstration and didn't object. So I think your friend is justified in his
belief that he has a strong case should it go to court.
It's not a get-out-of-jail free card. The friend's registration will
almost certainly be invalid on the grounds of prior use by the old owner.
The only exception to that may be the logo. You say that it's
"similar", but
don't say how much, and don't describe it at all. So a lot would depend
there on whether there has been any attempt to copy or reuse the original
logo, or whether the similarity is purely coincidental.
It's pretty clear the two are deliberately similar. Again, it seems the sole purpose of exercise to ride on the earlier reputation built up be
the old owner.
If any of the above assumptions are incorrect, I expect we'll be told.
On 17/12/2023 20:58, Mark Goodge wrote:
On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
[snip]
My friend is of the belief that the old owner had abandoned the brand
name and therefore with the brand name registration would put him in a
strong position. Is this truly the case?
He is in a strong position, yes. Providing he isn't in any way purporting to >> be the original trader, and isn't attempting to benefit from any goodwill
built up by the original trader,
Sole purpose of exercise by the sound of it. Why else?
then an action for passing off is very
unlikely to succeed. So the most plausible course of action by the original >> trader would be to attempt to get the trade mark revoked.
It's actually the other way round. If the old owner had a trade mark >registration it is the friend who needs to get that revoked, if he can.
But that is an
uphill task, particularly if he was notified at the time of the original
regstration and didn't object. So I think your friend is justified in his
belief that he has a strong case should it go to court.
It's not a get-out-of-jail free card. The friend's registration will
almost certainly be invalid on the grounds of prior use by the old owner.
The only exception to that may be the logo. You say that it's "similar", but >> don't say how much, and don't describe it at all. So a lot would depend
there on whether there has been any attempt to copy or reuse the original
logo, or whether the similarity is purely coincidental.
It's pretty clear the two are deliberately similar. Again, it seems the
sole purpose of exercise to ride on the earlier reputation built up be
the old owner.
On 17/12/2023 20:58, Mark Goodge wrote:
On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
[snip]
My friend is of the belief that the old owner had abandoned the brand
name and therefore with the brand name registration would put him in a
strong position. Is this truly the case?
He is in a strong position, yes. Providing he isn't in any way purporting to >> be the original trader, and isn't attempting to benefit from any goodwill
built up by the original trader, then an action for passing off is very
unlikely to succeed. So the most plausible course of action by the original >> trader would be to attempt to get the trade mark revoked. But that is an
uphill task, particularly if he was notified at the time of the original
regstration and didn't object. So I think your friend is justified in his
belief that he has a strong case should it go to court.
Wouldn't the entire purpose of choosing a similar name and then
registering a similar logo appear to be passing off as the original
trader and riding on the coat tails of his previous good reputation in
the market? Goodwill has a market value and can be sold on.
To illustrate that, if, say, the business name is "Oak Tree IT Services",
and both the old and new logos are of an oak tree, then it's likely to be
persuasive to argue that using an image of an oak tree for a businesss named >> Oak Tree is simply a statement of the obvious, and that therefore the new
logo is not a copy or derivative of the old one, but merely an independent >> expression of the same thought. But if, say, the business name is "David
Jones IT Services", and the old and new logos are both oak trees, then it
would be much harder to argue that the similarity is mere coincidence as
there's no obvious reason to use an oak tree as a logo for that name. In
which case, an action for design right infringement would have a much
stronger chance of success.
I am more inclined than you to view someone setting up a company with a >similar logo and name to be indulging in passing off that you are.
Whether it is worth the original business owner enforcing his rights is >another matter. It may not be realistic to pursue such a claim.
On 18/12/2023 10:34, Colin Bignell wrote:....
Trade Mark and Patent Agents, who then notify the owner of possible
infringements. My Patent Agent even notified me of a possible
infringement in Germany and we came to an amicable agreement with the
company there, as, while we were both in the medical field, our areas
of operation and products were sufficiently different for there to be
no chance of confusion.
I'm sure agents and the like would run their lists against the London
Gazette once a month or so.
But if there was no agent and just a private
individual who lost interest in the trademark didn't keep a check, is
there a way he can assign the registered name to himself post registration?
On 17/12/2023 23:08, Norman Wells wrote:
On 17/12/2023 20:58, Mark Goodge wrote:
On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
My friend is of the belief that the old owner had abandoned the brand
name and therefore with the brand name registration would put him in a >>>> strong position. Is this truly the case?
He is in a strong position, yes. Providing he isn't in any way purporting >>> to be the original trader, and isn't attempting to benefit from any
goodwill built up by the original trader,
Sole purpose of exercise by the sound of it. Why else?
Maybe, the old owner stated to his customers and media he was ceasing
trading using this name.
There was very little goodwill and pissed a lot of people off.
then an action for passing off is very
unlikely to succeed. So the most plausible course of action by the
original trader would be to attempt to get the trade mark revoked.
It's actually the other way round. If the old owner had a trade mark
registration it is the friend who needs to get that revoked, if he can.
He didn't. Sorry if I didn't make that clear
But that is an
uphill task, particularly if he was notified at the time of the original >>> regstration and didn't object. So I think your friend is justified in
his
belief that he has a strong case should it go to court.
It's not a get-out-of-jail free card. The friend's registration will
almost certainly be invalid on the grounds of prior use by the old owner.
Maybe, but he never objected to the registration, nor had the name
registered
and had told the world that he had ceased trading using this
name.
The only exception to that may be the logo. You say that it's
"similar", but
don't say how much, and don't describe it at all. So a lot would depend
there on whether there has been any attempt to copy or reuse the
original
logo, or whether the similarity is purely coincidental.
It's pretty clear the two are deliberately similar. Again, it seems
the sole purpose of exercise to ride on the earlier reputation built
up be the old owner.
Quite, but case law would be more useful otherwise the consequences are entirely unknown.
On Sun, 17 Dec 2023 23:08:47 +0000, Norman Wells <hex@unseen.ac.am> wrote:
On 17/12/2023 20:58, Mark Goodge wrote:
On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
My friend is of the belief that the old owner had abandoned the brand
name and therefore with the brand name registration would put him in a >>>> strong position. Is this truly the case?
He is in a strong position, yes. Providing he isn't in any way purporting to
be the original trader, and isn't attempting to benefit from any goodwill >>> built up by the original trader,
Sole purpose of exercise by the sound of it. Why else?
Maybe because it's a nice name. Maybe it happens to reflect the trader's own name, or the location in which the trader operates.
then an action for passing off is very
unlikely to succeed. So the most plausible course of action by the original >>> trader would be to attempt to get the trade mark revoked.
It's actually the other way round. If the old owner had a trade mark
registration it is the friend who needs to get that revoked, if he can.
If you were to actually read the OP's post, rather than merely my response
to it,
you would see that the new trader has already obtained a trade mark
for the name. So either there was no trade mark for it at all previously, or there was but it had lapsed.
And, given that the new trader now owns the
mark, it's up to the old one to pursue revocation if he wants to.
But that is an
uphill task, particularly if he was notified at the time of the original >>> regstration and didn't object. So I think your friend is justified in his >>> belief that he has a strong case should it go to court.
It's not a get-out-of-jail free card. The friend's registration will
almost certainly be invalid on the grounds of prior use by the old owner.
Prior use only applies to prior use which is still ongoing.
If a prior use
has lapsed, then there is no barrier to registering a new trade mark for the name.
You might want to ask yourself, for example, why the company currently trading as GWR managed to register that as a trade mark despite there having been a very well known, but entirely unrelated, company which previously
held that mark for a large number of years.
The only exception to that may be the logo. You say that it's "similar", but
don't say how much, and don't describe it at all. So a lot would depend
there on whether there has been any attempt to copy or reuse the original >>> logo, or whether the similarity is purely coincidental.
It's pretty clear the two are deliberately similar. Again, it seems the
sole purpose of exercise to ride on the earlier reputation built up be
the old owner.
I presume you've seen them, then, given that nobody could possibly be stupid enough to make that claim without having done so. In which case, maybe you could supply a link to them, so that we can see whether we agree with you.
On Mon, 18 Dec 2023 11:19:57 +0000, Martin Brown <'''newspam'''@nonad.co.uk> wrote:
On 17/12/2023 20:58, Mark Goodge wrote:
On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
My friend is of the belief that the old owner had abandoned the brand
name and therefore with the brand name registration would put him in a >>>> strong position. Is this truly the case?
He is in a strong position, yes. Providing he isn't in any way purporting to
be the original trader, and isn't attempting to benefit from any goodwill >>> built up by the original trader, then an action for passing off is very
unlikely to succeed. So the most plausible course of action by the original >>> trader would be to attempt to get the trade mark revoked. But that is an >>> uphill task, particularly if he was notified at the time of the original >>> regstration and didn't object. So I think your friend is justified in his >>> belief that he has a strong case should it go to court.
Wouldn't the entire purpose of choosing a similar name and then
registering a similar logo appear to be passing off as the original
trader and riding on the coat tails of his previous good reputation in
the market? Goodwill has a market value and can be sold on.
It does depend a lot on the nature of the name. Quite a lot of trading names are the personal names of the owner. If elderly Mr John Smith has now
retired and his business, Smith Trading, is now defunct it's not
unreasonable for young, but unrelated, Mr David Smith to want to be able to advertise his own new business as Smith Trading.
Another example would be names linked to places. If Little Dribblepatch Plumbing Services closes down, another plumber based in Little Dribblepatch might well want to use the same name in order to boost their chances of appearing in a web search for plumbers in Little Dribblepatch.
That's an
entirely valid desire, just as taxi firms once used to vie to be the first
in alphabetical order so that they would be at the start of the listings in Yellow Pages. Practically every town has an A1 Taxis, and if one of them
ever closes down then another will take its place.
That's precisely why both trade marks and company registrations can lapse
and are open to be reused. Otherwise, the number of available business names would rapidly dry up.
I've benefitted from that myself; my limited company
name was previously registered to someone else but they let it be struck off and I re-registered it.
I am more inclined than you to view someone setting up a company with a
similar logo and name to be indulging in passing off that you are.
Whether it is worth the original business owner enforcing his rights is
another matter. It may not be realistic to pursue such a claim.
Passing off requires more than just similarity, or even deliberate copying
of the name. There has to be a real probability that people, on seeing the name, will actually believe it to be a service or product offered by the original user of the name, and that that confusion is potentially harmful to the original user. But if it can be shown that the original user is no
longer trading, then the reuse of the name cannot be causing them any harm.
Passing off, by definition, can only be carried out by a trader's
competitor. But an entity which is no longer trading has no competitors, and therefore cannot be the victim of passing off.
On 18/12/2023 14:10, Fredxx wrote:
On 17/12/2023 23:08, Norman Wells wrote:
On 17/12/2023 20:58, Mark Goodge wrote:
On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote: >>>>
My friend is of the belief that the old owner had abandoned the brand >>>>> name and therefore with the brand name registration would put him in a >>>>> strong position. Is this truly the case?
He is in a strong position, yes. Providing he isn't in any way
purporting
to be the original trader, and isn't attempting to benefit from any
goodwill built up by the original trader,
Sole purpose of exercise by the sound of it. Why else?
Maybe, the old owner stated to his customers and media he was ceasing
trading using this name.
Under the law, that's irrelevant. He still has rights.
There was very little goodwill and pissed a lot of people off.
Then why is he trying to ride on the back of such a reputation by
imitating him, as he clearly is? It just doesn't make sense.
then an action for passing off is very
unlikely to succeed. So the most plausible course of action by the
original trader would be to attempt to get the trade mark revoked.
It's actually the other way round. If the old owner had a trade mark
registration it is the friend who needs to get that revoked, if he can.
He didn't. Sorry if I didn't make that clear
It seems, though, that he had a trade mark that he used and a logo, both
of which are now used by your friend either in identical or very similar form. That is exceptionally strong evidence that he is trying to take whatever goodwill there was in order to attract custom to himself by
what is in fact a deception. It is exactly the sort of case where passing-off applies.
And passing-off does not require any earlier trade mark registration,
just use and any acquired reputation whether good or allegedly bad.
But that is an
uphill task, particularly if he was notified at the time of the
original
regstration and didn't object. So I think your friend is justified
in his
belief that he has a strong case should it go to court.
It's not a get-out-of-jail free card. The friend's registration will
almost certainly be invalid on the grounds of prior use by the old
owner.
Maybe, but he never objected to the registration, nor had the name
registered
He didn't need to.
and had told the world that he had ceased trading using this name.
Irrelevant.
The only exception to that may be the logo. You say that it's
"similar", but
don't say how much, and don't describe it at all. So a lot would depend >>>> there on whether there has been any attempt to copy or reuse the
original
logo, or whether the similarity is purely coincidental.
It's pretty clear the two are deliberately similar. Again, it seems
the sole purpose of exercise to ride on the earlier reputation built
up be the old owner.
Quite, but case law would be more useful otherwise the consequences
are entirely unknown.
I suggest you look up the fundamental principles of passing-off, then
tell us why you think they don't apply.
On 18/12/2023 13:37, Mark Goodge wrote:
On Sun, 17 Dec 2023 23:08:47 +0000, Norman Wells <hex@unseen.ac.am> wrote: >>> On 17/12/2023 20:58, Mark Goodge wrote:
On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote: >>>>
My friend is of the belief that the old owner had abandoned the brand >>>>> name and therefore with the brand name registration would put him in a >>>>> strong position. Is this truly the case?
He is in a strong position, yes. Providing he isn't in any way purporting to
be the original trader, and isn't attempting to benefit from any goodwill >>>> built up by the original trader,
Sole purpose of exercise by the sound of it. Why else?
Maybe because it's a nice name. Maybe it happens to reflect the trader's own >> name, or the location in which the trader operates.
None of that gives him any right to take them as his own.
then an action for passing off is very
unlikely to succeed. So the most plausible course of action by the original
trader would be to attempt to get the trade mark revoked.
It's actually the other way round. If the old owner had a trade mark
registration it is the friend who needs to get that revoked, if he can.
If you were to actually read the OP's post, rather than merely my response >> to it,
And if you were to actually read the thread, you'd see I did.
It's pretty clear the two are deliberately similar. Again, it seems the >>> sole purpose of exercise to ride on the earlier reputation built up be
the old owner.
I presume you've seen them, then, given that nobody could possibly be stupid >> enough to make that claim without having done so. In which case, maybe you >> could supply a link to them, so that we can see whether we agree with you.
We've been told they are 'similar'. We've been told that the friend has >adopted the brand name of the earlier user. It's pretty naive to think
the logos are not also so similar that they are not deliberately
designed to deceive.
On 18/12/2023 17:02, Norman Wells wrote:
On 18/12/2023 14:10, Fredxx wrote:
On 17/12/2023 23:08, Norman Wells wrote:
On 17/12/2023 20:58, Mark Goodge wrote:
On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid>
wrote:
My friend is of the belief that the old owner had abandoned the brand >>>>>> name and therefore with the brand name registration would put him
in a
strong position. Is this truly the case?
He is in a strong position, yes. Providing he isn't in any way
purporting
to be the original trader, and isn't attempting to benefit from any
goodwill built up by the original trader,
Sole purpose of exercise by the sound of it. Why else?
Maybe, the old owner stated to his customers and media he was ceasing
trading using this name.
Under the law, that's irrelevant. He still has rights.
There was very little goodwill and pissed a lot of people off.
Then why is he trying to ride on the back of such a reputation by
imitating him, as he clearly is? It just doesn't make sense.
then an action for passing off is very
unlikely to succeed. So the most plausible course of action by the
original trader would be to attempt to get the trade mark revoked.
It's actually the other way round. If the old owner had a trade
mark registration it is the friend who needs to get that revoked, if
he can.
He didn't. Sorry if I didn't make that clear
It seems, though, that he had a trade mark that he used and a logo,
both of which are now used by your friend either in identical or very
similar form. That is exceptionally strong evidence that he is trying
to take whatever goodwill there was in order to attract custom to
himself by what is in fact a deception. It is exactly the sort of
case where passing-off applies.
And passing-off does not require any earlier trade mark registration,
just use and any acquired reputation whether good or allegedly bad.
But that is an
uphill task, particularly if he was notified at the time of the
original
regstration and didn't object. So I think your friend is justified
in his
belief that he has a strong case should it go to court.
It's not a get-out-of-jail free card. The friend's registration
will almost certainly be invalid on the grounds of prior use by the
old owner.
Maybe, but he never objected to the registration, nor had the name
registered
He didn't need to.
and had told the world that he had ceased trading using this name.
Irrelevant.
The only exception to that may be the logo. You say that it's
"similar", but
don't say how much, and don't describe it at all. So a lot would
depend
there on whether there has been any attempt to copy or reuse the
original
logo, or whether the similarity is purely coincidental.
It's pretty clear the two are deliberately similar. Again, it seems
the sole purpose of exercise to ride on the earlier reputation built
up be the old owner.
Quite, but case law would be more useful otherwise the consequences
are entirely unknown.
I suggest you look up the fundamental principles of passing-off, then
tell us why you think they don't apply.
There are a number of websites that quote the holy trinity of passing
off, namely:
1 Goodwill: Established goodwill or reputation in the UK (i.e., a
customer following) in the relevant marketplace in the mind of the
purchasing public and are known by some distinguishing feature. For
example, this could be via a particular shape, colour or style of
packing or “get up” used. The infringing act must have taken place
within the geographical limits of the claimant’s goodwill. This means
that the infringer must operate within the same trade market or
geographical location as the claimant.
2 Misrepresentation: The claimant must demonstrate the defendant has misrepresented (intentionally or unintentionally) their products or
services as being related to their business, which leads to or is likely
to deceive customers into thinking that the goods/ services offered by
the defendant are those of the claimant.
3 Damage: The misrepresentation causes or is likely to cause the
claimant damage (i.e. financial loss) as a result.
Where for a successful case of passing off all 3 must be shown by the claimant.
1) He sent emails to his suppliers that he was ceasing trading. Goodwill
is unlikely to survive if the existing goodwill has been killed off.
2) This fails because of (1) There can be no deception if the name is associated with a new entity.
3) A ceased trading company can suffer no loss.
I'm sure YMMV but I'm looking for cases, not unsubstantiated opinion,
that will sway me into believing one way or another.
On Mon, 18 Dec 2023 17:44:20 +0000, Norman Wells <hex@unseen.ac.am> wrote:
On 18/12/2023 13:37, Mark Goodge wrote:
On Sun, 17 Dec 2023 23:08:47 +0000, Norman Wells <hex@unseen.ac.am> wrote: >>>> On 17/12/2023 20:58, Mark Goodge wrote:
On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote: >>>>>
My friend is of the belief that the old owner had abandoned the brand >>>>>> name and therefore with the brand name registration would put him in a >>>>>> strong position. Is this truly the case?
He is in a strong position, yes. Providing he isn't in any way purporting to
be the original trader, and isn't attempting to benefit from any goodwill >>>>> built up by the original trader,
Sole purpose of exercise by the sound of it. Why else?
Maybe because it's a nice name. Maybe it happens to reflect the trader's own
name, or the location in which the trader operates.
None of that gives him any right to take them as his own.
It does, if they're not *currently* being used by anyone else.
If you were to actually read the OP's post, rather than merely my response >>> to it,then an action for passing off is very
unlikely to succeed. So the most plausible course of action by the original
trader would be to attempt to get the trade mark revoked.
It's actually the other way round. If the old owner had a trade mark
registration it is the friend who needs to get that revoked, if he can. >>>
And if you were to actually read the thread, you'd see I did.
Then why did you respond to me with a statement that you knew at the time to be false?
We've been told they are 'similar'. We've been told that the friend hasIt's pretty clear the two are deliberately similar. Again, it seems the >>>> sole purpose of exercise to ride on the earlier reputation built up be >>>> the old owner.
I presume you've seen them, then, given that nobody could possibly be stupid
enough to make that claim without having done so. In which case, maybe you >>> could supply a link to them, so that we can see whether we agree with you. >>
adopted the brand name of the earlier user. It's pretty naive to think
the logos are not also so similar that they are not deliberately
designed to deceive.
OK, so you are making a statement based solely on the internal workings of your own imagination. I'm glad you're at least willing to admit that.
On 18/12/2023 18:42, Fredxx wrote:
On 18/12/2023 17:02, Norman Wells wrote:
On 18/12/2023 14:10, Fredxx wrote:
On 17/12/2023 23:08, Norman Wells wrote:
On 17/12/2023 20:58, Mark Goodge wrote:
On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid>
wrote:
My friend is of the belief that the old owner had abandoned the
brand
name and therefore with the brand name registration would put him >>>>>>> in a
strong position. Is this truly the case?
He is in a strong position, yes. Providing he isn't in any way
purporting
to be the original trader, and isn't attempting to benefit from
any goodwill built up by the original trader,
Sole purpose of exercise by the sound of it. Why else?
Maybe, the old owner stated to his customers and media he was
ceasing trading using this name.
Under the law, that's irrelevant. He still has rights.
There was very little goodwill and pissed a lot of people off.
Then why is he trying to ride on the back of such a reputation by
imitating him, as he clearly is? It just doesn't make sense.
then an action for passing off is very
unlikely to succeed. So the most plausible course of action by the >>>>>> original trader would be to attempt to get the trade mark revoked.
It's actually the other way round. If the old owner had a trade
mark registration it is the friend who needs to get that revoked,
if he can.
He didn't. Sorry if I didn't make that clear
It seems, though, that he had a trade mark that he used and a logo,
both of which are now used by your friend either in identical or very
similar form. That is exceptionally strong evidence that he is
trying to take whatever goodwill there was in order to attract custom
to himself by what is in fact a deception. It is exactly the sort of
case where passing-off applies.
And passing-off does not require any earlier trade mark registration,
just use and any acquired reputation whether good or allegedly bad.
But that is an
uphill task, particularly if he was notified at the time of the
original
regstration and didn't object. So I think your friend is justified >>>>>> in his
belief that he has a strong case should it go to court.
It's not a get-out-of-jail free card. The friend's registration
will almost certainly be invalid on the grounds of prior use by the
old owner.
Maybe, but he never objected to the registration, nor had the name
registered
He didn't need to.
and had told the world that he had ceased trading using this name.
Irrelevant.
The only exception to that may be the logo. You say that it's
"similar", but
don't say how much, and don't describe it at all. So a lot would
depend
there on whether there has been any attempt to copy or reuse the
original
logo, or whether the similarity is purely coincidental.
It's pretty clear the two are deliberately similar. Again, it
seems the sole purpose of exercise to ride on the earlier
reputation built up be the old owner.
Quite, but case law would be more useful otherwise the consequences
are entirely unknown.
I suggest you look up the fundamental principles of passing-off, then
tell us why you think they don't apply.
There are a number of websites that quote the holy trinity of passing
off, namely:
1 Goodwill: Established goodwill or reputation in the UK (i.e., a
customer following) in the relevant marketplace in the mind of the
purchasing public and are known by some distinguishing feature. For
example, this could be via a particular shape, colour or style of
packing or “get up” used. The infringing act must have taken place
within the geographical limits of the claimant’s goodwill. This means
that the infringer must operate within the same trade market or
geographical location as the claimant.
2 Misrepresentation: The claimant must demonstrate the defendant has
misrepresented (intentionally or unintentionally) their products or
services as being related to their business, which leads to or is
likely to deceive customers into thinking that the goods/ services
offered by the defendant are those of the claimant.
3 Damage: The misrepresentation causes or is likely to cause the
claimant damage (i.e. financial loss) as a result.
Where for a successful case of passing off all 3 must be shown by the
claimant.
1) He sent emails to his suppliers that he was ceasing trading.
Goodwill is unlikely to survive if the existing goodwill has been
killed off.
The goodwill that existed continues, and the creator of that is entitled
to benefit from it, not your friend.
You still haven't told us why your friend decided to adopt the same
brand name and a similar logo if not to benefit from that goodwill.
Perhaps you'd say.
2) This fails because of (1) There can be no deception if the name is
associated with a new entity.
Of course there can. The name is associated in the minds of customers
and the buying public with the original entity selling the goods, npt
your friend. And that is what matters. The reason your friend wants to use the same brand name and logo, it is absolutely clear to me, is to
divert the original trader's sales to himself by riding on that
goodwill. If you disagree, tell us why he did not choose an entirely different name and logo.
3) A ceased trading company can suffer no loss.
While there is existing goodwill, which there is, it is goodwill
belonging to the original trader, not your friend. He is perfectly
entitled to resume trading if he wishes, and to benefit exclusively from
the goodwill he has built up.
I'm sure YMMV but I'm looking for cases, not unsubstantiated opinion,
that will sway me into believing one way or another.
I don't care what you believe. I just give you the facts.
I can assure you, the cases, if and when you find them, will support and
be in full agreement with what I've said.
On 18/12/2023 21:40, Norman Wells wrote:
I'm sure YMMV but I'm looking for cases, not unsubstantiated opinion,
that will sway me into believing one way or another.
I don't care what you believe. I just give you the facts.
Facts as you see them do not a legal argument make.
I can assure you, the cases, if and when you find them, will support
and be in full agreement with what I've said.
No, they're not, hence the holy trinity of passing off. Now if you can
find a case that gives weight to your belief I'm all ears.
On 18/12/2023 21:40, Norman Wells wrote:
I don't care what you believe. I just give you the facts.
Facts as you see them do not a legal argument make.
I can assure you, the cases, if and when you find them, will support and
be in full agreement with what I've said.
No, they're not, hence the holy trinity of passing off. Now if you can
find a case that gives weight to your belief I'm all ears.
On 18/12/2023 21:10, Mark Goodge wrote:
It does, if they're not *currently* being used by anyone else.
Got any support for that contention?
If you were to actually read the OP's post, rather than merely my response >>>> to it,
And if you were to actually read the thread, you'd see I did.
Then why did you respond to me with a statement that you knew at the time to >> be false?
I have no idea what you're referring to, nor why you think it was false.
On Mon, 18 Dec 2023 11:19:57 +0000, Martin Brown <'''newspam'''@nonad.co.uk> wrote:
On 17/12/2023 20:58, Mark Goodge wrote:
To illustrate that, if, say, the business name is "Oak Tree IT Services", >>> and both the old and new logos are of an oak tree, then it's likely to be >>> persuasive to argue that using an image of an oak tree for a businesss named
Oak Tree is simply a statement of the obvious, and that therefore the new >>> logo is not a copy or derivative of the old one, but merely an independent >>> expression of the same thought. But if, say, the business name is "David >>> Jones IT Services", and the old and new logos are both oak trees, then it >>> would be much harder to argue that the similarity is mere coincidence as >>> there's no obvious reason to use an oak tree as a logo for that name. In >>> which case, an action for design right infringement would have a much
stronger chance of success.
I am more inclined than you to view someone setting up a company with a
similar logo and name to be indulging in passing off that you are.
Whether it is worth the original business owner enforcing his rights is
another matter. It may not be realistic to pursue such a claim.
Passing off requires more than just similarity, or even deliberate copying
of the name. There has to be a real probability that people, on seeing the name, will actually believe it to be a service or product offered by the original user of the name, and that that confusion is potentially harmful to the original user. But if it can be shown that the original user is no
longer trading, then the reuse of the name cannot be causing them any harm. Passing off, by definition, can only be carried out by a trader's
competitor. But an entity which is no longer trading has no competitors, and therefore cannot be the victim of passing off.
On 17/12/2023 19:28, Fredxx wrote:
What are the risks associated with a friend of mine who has taken on a
trading name without the previous user's/owner's consent.
Protracted and costly legal battles until one or both parties lose
either the will to continue fighting or the funds to do so.
How much money is your friend prepared to sink into the fight?
How much money does he believe "the old owner" is willing to lose?
Even the big guns with very deep pockets sometimes strike a deal rather
than continuing with lengthy legal actions as evidenced by the Colin / Cuthbert the Caterpillar saga.
The old owner has abandoned his product for some months with all media
and websites taken offline.
There was a email dialogue between new and old parties where the money
asked by the 'old' owner was considered too much for his logo and
other IP including the brand name.
In the mean time, new owner registered a trademark with the brand name
and has now been through the publishing and process by the IPO,
received no opposition, so has been awarded to the new owner. This
process took some months.
As a result new company have began marketing, with a similar logo to
the old branding on a new and different website and the 'old' owner is
naturally upset and threatening legal action, plus threatening
bad-mouthing the new owner's and his product.
I've suggested he re-contacts the old owner with a view of salvaging
good will, but without any admission he's done anything wrong.
I had thought that once a trademark was registered, it is an uphill
struggle to go against this registration?
My friend is of the belief that the old owner had abandoned the brand
name and therefore with the brand name registration would put him in a
strong position. Is this truly the case?
I would suggest that "some months" is not sufficiently long enough to
prove abandonment, however...
This is a complex and specialist area of law. I would therefore suggest
it requires specialist advice on the specifics of this precise case and comments here, regardless of how accurate or well-meaning they are,
could give the wrong impression to you / your friend which could be incredibly costly in the long run.
On Mon, 18 Dec 2023 22:35:18 +0000, Norman Wells <hex@unseen.ac.am> wrote:
On 18/12/2023 21:10, Mark Goodge wrote:
It does, if they're not *currently* being used by anyone else.
Got any support for that contention?
The simple fact that there are lots of current companies which have reused the names of previous ones. I gave the example of GWR, but it's relatively easy to find other business names at Companies House where a previous holder of the name was dissolved and a new company with the same name has been registered.
If you were to actually read the OP's post, rather than merely my response
to it,
And if you were to actually read the thread, you'd see I did.
Then why did you respond to me with a statement that you knew at the time to
be false?
I have no idea what you're referring to, nor why you think it was false.
The OP said that
In the mean time, new owner registered a trademark with the brand name
and has now been through the publishing and process by the IPO, received
no opposition, so has been awarded to the new owner.
to which I commented, inter alia, that
So the most plausible course of action by the original trader would be to
attempt to get the trade mark revoked.
but, in response to me, you said
It's actually the other way round. If the old owner had a trade mark
registration it is the friend who needs to get that revoked, if he can.
Now, as you can clearly see from the OP's first post, the OP's friend
doesn't need to take any action at all to get the trade mark revoked, for
the simple reason that his application for it was granted and he now owns
it. So why did you say that he needs to get it revoked?
On Mon, 18 Dec 2023 23:02:07 +0000, Fredxx <fredxx@spam.invalid> wrote:
On 18/12/2023 21:40, Norman Wells wrote:
I don't care what you believe. I just give you the facts.
Facts as you see them do not a legal argument make.
I can assure you, the cases, if and when you find them, will support and >>> be in full agreement with what I've said.
No, they're not, hence the holy trinity of passing off. Now if you can
find a case that gives weight to your belief I'm all ears.
If I was your friend, I'd be more worried about my legal position if Norman said he was OK.
Copyright law always seems much more complex in actual practice.
Witness the live example of the Tolkien estate vs US author & PolyChron
over "The Lord of the Kings" fan fiction book.
https://www.theguardian.com/books/2023/dec/18/copyright-claim-against-tolkien-estate-backfires-on-lord-of-the-rings-fanfiction-author
Or the handful of "The Hobbit" pubs that started getting persecuted when
the big budget films were launched...
https://channelx.world/2012/03/the-hobbit-pub-ordered-to-change-name-for-ip-infringement/
On 18/12/2023 14:08, Mark Goodge wrote:
On Mon, 18 Dec 2023 11:19:57 +0000, Martin Brown
<'''newspam'''@nonad.co.uk>
wrote:
On 17/12/2023 20:58, Mark Goodge wrote:
To illustrate that, if, say, the business name is "Oak Tree IT
Services",
and both the old and new logos are of an oak tree, then it's likely
to be
persuasive to argue that using an image of an oak tree for a
businesss named
Oak Tree is simply a statement of the obvious, and that therefore
the new
logo is not a copy or derivative of the old one, but merely an
independent
expression of the same thought. But if, say, the business name is
"David
Jones IT Services", and the old and new logos are both oak trees,
then it
would be much harder to argue that the similarity is mere
coincidence as
there's no obvious reason to use an oak tree as a logo for that
name. In
which case, an action for design right infringement would have a much
stronger chance of success.
I am more inclined than you to view someone setting up a company with a
similar logo and name to be indulging in passing off that you are.
Whether it is worth the original business owner enforcing his rights is
another matter. It may not be realistic to pursue such a claim.
Passing off requires more than just similarity, or even deliberate
copying
of the name. There has to be a real probability that people, on seeing
the
name, will actually believe it to be a service or product offered by the
original user of the name, and that that confusion is potentially
harmful to
the original user. But if it can be shown that the original user is no
longer trading, then the reuse of the name cannot be causing them any
harm.
Passing off, by definition, can only be carried out by a trader's
competitor. But an entity which is no longer trading has no
competitors, and
therefore cannot be the victim of passing off.
Copyright law always seems much more complex in actual practice.
Witness the live example of the Tolkien estate vs US author & PolyChron
over "The Lord of the Kings" fan fiction book.
https://www.theguardian.com/books/2023/dec/18/copyright-claim-against-tolkien-estate-backfires-on-lord-of-the-rings-fanfiction-author
Or the handful of "The Hobbit" pubs that started getting persecuted when
the big budget films were launched...
https://channelx.world/2012/03/the-hobbit-pub-ordered-to-change-name-for-ip-infringement/
ISTR various frivolous ones like Microsoft issuing a cease and desist
notice to M&S over their Microsoft tights branding at one point.
On 17/12/2023 22:33, Fredxx wrote:
On 17/12/2023 20:58, Mark Goodge wrote:
independent
expression of the same thought. But if, say, the business name is "David >>> Jones IT Services", and the old and new logos are both oak trees, then it >>> would be much harder to argue that the similarity is mere coincidence as >>> there's no obvious reason to use an oak tree as a logo for that name. In >>> which case, an action for design right infringement would have a much
stronger chance of success.
Many thanks I will pass on your words. I think a comparison would be
between an oak tree and say a sycamore tree. Both being trees of course.
However the business has nothing to do with trees but I assume the
similarity was intentional.
"Similarity" is not enough, nor is it the basis of the legal test in an >action for passing off.
The MIL case is 'interesting' as it concerns so-called 'initial interest >confusion' and clarifies whether or not this is sufficient alone for an >action in passing off to be successful. (Spoiler Alert: It isn't!)
As the High Court concluded: "a recognition on the part of the relevant >public that the name and/or packaging of the former looks similar, even >strikingly similar to the name and/or packaging of the latter would not
by itself translate into an actionable misrepresentation on the part of >Aldi."
Case law, however, distils down to what legal practitioners now say it
is. For example:
"A claim in passing off is based on the premise that no one has the
right to represent their goods or services as being those of somebody
else. A common scenario is where the defendant has copied the claimants >packaging, get up or brand in order to misrepresent the source of its
goods or services."
https://www.lexisnexis.co.uk/legal/guidance/introduction-to-passing-off
On 19/12/2023 10:35, Simon Parker wrote:
On 17/12/2023 19:28, Fredxx wrote:
The old owner has abandoned his product for some months with all
media and websites taken offline.
There was a email dialogue between new and old parties where the
money asked by the 'old' owner was considered too much for his logo
and other IP including the brand name.
In the mean time, new owner registered a trademark with the brand
name and has now been through the publishing and process by the IPO,
received no opposition, so has been awarded to the new owner. This
process took some months.
As a result new company have began marketing, with a similar logo to
the old branding on a new and different website and the 'old' owner
is naturally upset and threatening legal action, plus threatening
bad-mouthing the new owner's and his product.
I've suggested he re-contacts the old owner with a view of salvaging
good will, but without any admission he's done anything wrong.
I had thought that once a trademark was registered, it is an uphill
struggle to go against this registration?
My friend is of the belief that the old owner had abandoned the brand
name and therefore with the brand name registration would put him in
a strong position. Is this truly the case?
I would suggest that "some months" is not sufficiently long enough to
prove abandonment, however...
The old owner sent an email to his customer saying he had ceased
trading. But I take your point.
I have been told there is a recorded telephone conversation where the
old owner said the new owner could use the name.
This is a complex and specialist area of law. I would therefore
suggest it requires specialist advice on the specifics of this precise
case and comments here, regardless of how accurate or well-meaning
they are, could give the wrong impression to you / your friend which
could be incredibly costly in the long run.
Or better still for them to come to an amicable agreement. However,
emotions seem to be getting in the way.
On Tue, 19 Dec 2023 10:39:22 +0000, Simon Parker <simonparkerulm@gmail.com> wrote:
"Similarity" is not enough, nor is it the basis of the legal test in an
action for passing off.
Just for clarity (since I raised the question of similarity), I was
referring specifically to design right or copyright in the logo itself,
where similarity can be enough - it doesn't need to be an exact copy. It would all revolve around whether the new logo is substantially the same as the old one, and if so whether the similarity was merely coincidental.
I entirely agree that any action for passing off would be almost impossible to succeed here.
On 19/12/2023 09:44, Mark Goodge wrote:
On Mon, 18 Dec 2023 22:35:18 +0000, Norman Wells <hex@unseen.ac.am> wrote: >>
On 18/12/2023 21:10, Mark Goodge wrote:
It does, if they're not *currently* being used by anyone else.
Got any support for that contention?
The simple fact that there are lots of current companies which have reused >> the names of previous ones. I gave the example of GWR, but it's relatively >> easy to find other business names at Companies House where a previous holder >> of the name was dissolved and a new company with the same name has been
registered.
The only check Companies House performs is to see whether a company of
the exact name sought to be registered is already and currently registered.
But you still seem to be labouring under your misapprehension that >registration of a company name (or a trade mark for that matter) gives
the right to use that name or mark. It doesn't.
The OP said that
In the mean time, new owner registered a trademark with the brand name
and has now been through the publishing and process by the IPO, received >> no opposition, so has been awarded to the new owner.
to which I commented, inter alia, that
So the most plausible course of action by the original trader would be to >> attempt to get the trade mark revoked.
but, in response to me, you said
It's actually the other way round. If the old owner had a trade mark
registration it is the friend who needs to get that revoked, if he can. >>
Now, as you can clearly see from the OP's first post, the OP's friend
doesn't need to take any action at all to get the trade mark revoked, for
the simple reason that his application for it was granted and he now owns
it. So why did you say that he needs to get it revoked?
He would (if it existed, which we've subsequently found out it doesn't)
need to get it revoked in order to avoid infringement of the earlier >registration.
The new applicant getting a trade mark registered gives him no rights at
all to use it or to avoid any earlier rights that others may have.
It's a conceptual matter you seem to have difficulty appreciating.
On 19/12/2023 11:28, Fredxx wrote:
On 19/12/2023 10:35, Simon Parker wrote:
On 17/12/2023 19:28, Fredxx wrote:
The old owner has abandoned his product for some months with all
media and websites taken offline.
There was a email dialogue between new and old parties where the
money asked by the 'old' owner was considered too much for his logo
and other IP including the brand name.
In the mean time, new owner registered a trademark with the brand
name and has now been through the publishing and process by the IPO,
received no opposition, so has been awarded to the new owner. This
process took some months.
As a result new company have began marketing, with a similar logo to
the old branding on a new and different website and the 'old' owner
is naturally upset and threatening legal action, plus threatening
bad-mouthing the new owner's and his product.
I've suggested he re-contacts the old owner with a view of salvaging
good will, but without any admission he's done anything wrong.
I had thought that once a trademark was registered, it is an uphill
struggle to go against this registration?
My friend is of the belief that the old owner had abandoned the
brand name and therefore with the brand name registration would put
him in a strong position. Is this truly the case?
I would suggest that "some months" is not sufficiently long enough to
prove abandonment, however...
The old owner sent an email to his customer saying he had ceased
trading. But I take your point.
I have been told there is a recorded telephone conversation where the
old owner said the new owner could use the name.
Presumably, for a price (as per the 'email dialogue' you referred to
above), which it seems was not agreed.
Had it been agreed, you would
not have said, as is still there above, 'the 'old' owner is naturally
upset and threatening legal action'.
It is abundantly clear no agreement was reached at all.
This is a complex and specialist area of law. I would therefore
suggest it requires specialist advice on the specifics of this
precise case and comments here, regardless of how accurate or
well-meaning they are, could give the wrong impression to you / your
friend which could be incredibly costly in the long run.
Or better still for them to come to an amicable agreement. However,
emotions seem to be getting in the way.
I'm not surprised. Your friend has just assumed he was entitled to take
the original seller's trading name, brand name and a 'similar' logo
without a by-your-leave.
Which he wasn't.
Can you tell us please *why* your friend decided to adopt the earlier trader's trading name, trade mark and similar logo if he did not intend
to ride on the goodwill that existed in them? He could easily have
chosen others after all.
And why do even you think the old owner is 'naturally upset' by his actions. Is it because you know deep down the whole thing is extremely suspect?
On Tue, 19 Dec 2023 11:49:07 +0000, Norman Wells <hex@unseen.ac.am> wrote:
On 19/12/2023 09:44, Mark Goodge wrote:
On Mon, 18 Dec 2023 22:35:18 +0000, Norman Wells <hex@unseen.ac.am> wrote: >>>
On 18/12/2023 21:10, Mark Goodge wrote:
It does, if they're not *currently* being used by anyone else.
Got any support for that contention?
The simple fact that there are lots of current companies which have reused >>> the names of previous ones. I gave the example of GWR, but it's relatively >>> easy to find other business names at Companies House where a previous holder
of the name was dissolved and a new company with the same name has been
registered.
The only check Companies House performs is to see whether a company of
the exact name sought to be registered is already and currently registered.
Kerching!
But you still seem to be labouring under your misapprehension that
registration of a company name (or a trade mark for that matter) gives
the right to use that name or mark. It doesn't.
Given that the whole point of registering a company name or trade mark is to give yourself the ability to use it and prevent others from use it, your position here seems a little untenable.
The OP said that
In the mean time, new owner registered a trademark with the brand name >>> and has now been through the publishing and process by the IPO, received
no opposition, so has been awarded to the new owner.
to which I commented, inter alia, that
So the most plausible course of action by the original trader would be to
attempt to get the trade mark revoked.
but, in response to me, you said
It's actually the other way round. If the old owner had a trade mark >>> registration it is the friend who needs to get that revoked, if he can. >>>
Now, as you can clearly see from the OP's first post, the OP's friend
doesn't need to take any action at all to get the trade mark revoked, for >>> the simple reason that his application for it was granted and he now owns >>> it. So why did you say that he needs to get it revoked?
He would (if it existed, which we've subsequently found out it doesn't)
need to get it revoked in order to avoid infringement of the earlier
registration.
There's no "subsequently" about it. The fact that there was not a currently active trade mark for the brand name was clear from the OP's OP.
The new applicant getting a trade mark registered gives him no rights at
all to use it or to avoid any earlier rights that others may have.
The fact that the new owner got the trade mark registered is absolute proof that no active prior registration existed.
Even if the original owner had
registered the name as a trade mark, it must have lapsed if someone else was able to subsequently register it (at least, to register it for the same class(es) of goods).
So there are absolutely no circumstances whatsoever in
which the new owner would have had to get any previous mark revoked.
It's a conceptual matter you seem to have difficulty appreciating.
I must admit that I'm struggling to understand why you insist on repeating something that you yourself have demonstrated is untrue. That is, indeed, a very strange concept.
On 19/12/2023 16:19, Mark Goodge wrote:
There's no "subsequently" about it. The fact that there was not a currently >> active trade mark for the brand name was clear from the OP's OP.
No it wasn't. We were told the earlier trader had 'his logo and other
IP including the brand name'. That could well have included a trade
mark registration.
The new applicant getting a trade mark registered gives him no rights at >>> all to use it or to avoid any earlier rights that others may have.
The fact that the new owner got the trade mark registered is absolute proof >> that no active prior registration existed.
Sorry, no it isn't at all. The Intellectual Property Office does not
examine applications for such.
Even if the original owner had
registered the name as a trade mark, it must have lapsed if someone else was >> able to subsequently register it (at least, to register it for the same
class(es) of goods).
No, not so.
On Tue, 19 Dec 2023 19:21:45 +0000, Norman Wells <hex@unseen.ac.am> wrote:
On 19/12/2023 16:19, Mark Goodge wrote:
There's no "subsequently" about it. The fact that there was not a currently >>> active trade mark for the brand name was clear from the OP's OP.
No it wasn't. We were told the earlier trader had 'his logo and other
IP including the brand name'. That could well have included a trade
mark registration.
It could well have done, yes. But, if he did, then it must have lapsed by
the time the OP's friend registered his.
The new applicant getting a trade mark registered gives him no rights at >>>> all to use it or to avoid any earlier rights that others may have.
The fact that the new owner got the trade mark registered is absolute proof >>> that no active prior registration existed.
Sorry, no it isn't at all. The Intellectual Property Office does not
examine applications for such.
Of course it does! Try to register a trade mark, and the absolute first
thing that will be done is to check that the requested mark does not have a currently active trade mark in the same class. The website describing the process says that
The IPO will:
check that your trade mark is not the same as, or similar to, any existing
trade marks
https://www.gov.uk/how-to-register-a-trade-mark
Even if the original owner had
registered the name as a trade mark, it must have lapsed if someone else was
able to subsequently register it (at least, to register it for the same
class(es) of goods).
No, not so.
See above. Or are you now going to argue that the gov.uk website is giving incorrect information?
On 19/12/2023 21:46, Mark Goodge wrote:
On Tue, 19 Dec 2023 19:21:45 +0000, Norman Wells <hex@unseen.ac.am> wrote:
Sorry, no it isn't at all. The Intellectual Property Office does not
examine applications for such.
Of course it does! Try to register a trade mark, and the absolute first
thing that will be done is to check that the requested mark does not have a >> currently active trade mark in the same class. The website describing the
process says that
The IPO will:
check that your trade mark is not the same as, or similar to, any existing
trade marks
https://www.gov.uk/how-to-register-a-trade-mark
And it merely informs you if there is.
On Tue, 19 Dec 2023 23:47:26 +0000, Norman Wells <hex@unseen.ac.am> wrote:
On 19/12/2023 21:46, Mark Goodge wrote:
On Tue, 19 Dec 2023 19:21:45 +0000, Norman Wells <hex@unseen.ac.am> wrote:
Sorry, no it isn't at all. The Intellectual Property Office does not
examine applications for such.
Of course it does! Try to register a trade mark, and the absolute first
thing that will be done is to check that the requested mark does not have a >>> currently active trade mark in the same class. The website describing the >>> process says that
The IPO will:
check that your trade mark is not the same as, or similar to, any existing
trade marks
https://www.gov.uk/how-to-register-a-trade-mark
And it merely informs you if there is.
So you do accept, at least, that you were incorrect to say that the IPO doesn't check whether previous registrations exist?
On 20/12/2023 10:32, Mark Goodge wrote:
On Tue, 19 Dec 2023 23:47:26 +0000, Norman Wells <hex@unseen.ac.am> wrote: >>> On 19/12/2023 21:46, Mark Goodge wrote:
On Tue, 19 Dec 2023 19:21:45 +0000, Norman Wells <hex@unseen.ac.am> wrote: >>
Sorry, no it isn't at all. The Intellectual Property Office does not >>>>> examine applications for such.
Of course it does! Try to register a trade mark, and the absolute first >>>> thing that will be done is to check that the requested mark does not have a
currently active trade mark in the same class. The website describing the >>>> process says that
The IPO will:
check that your trade mark is not the same as, or similar to, any existing
trade marks
https://www.gov.uk/how-to-register-a-trade-mark
And it merely informs you if there is.
So you do accept, at least, that you were incorrect to say that the IPO
doesn't check whether previous registrations exist?
It sends you a simple computer-generated list, for your information, on
which it takes no action and makes no decisions whatsoever.
So the IPO does more than just tell you if it finds existing marks that are the same as, or similar to, the one you want to register. It will also contact the owners of those marks to give them the opportunity to object.
Given that you originally said it doesn't even check them, a statement which is demonstrably false, and then went on to say it does nothing other than inform the applicant, another statement which is demonstrably false, are you really sure you want to carry on digging this hole?
On 20/12/2023 14:31, Mark Goodge wrote:
So the IPO does more than just tell you if it finds existing marks that are >> the same as, or similar to, the one you want to register. It will also
contact the owners of those marks to give them the opportunity to object.
Given that you originally said it doesn't even check them, a statement which >> is demonstrably false, and then went on to say it does nothing other than
inform the applicant, another statement which is demonstrably false, are you >> really sure you want to carry on digging this hole?
The answer is still the same.
That's what's important and relevant in the matter we're considering,
not the trivial formalities that apparently fill your head.
On Tue, 19 Dec 2023 10:39:22 +0000, Simon Parker <simonparkerulm@gmail.com> wrote:
On 17/12/2023 22:33, Fredxx wrote:
On 17/12/2023 20:58, Mark Goodge wrote:
independent
expression of the same thought. But if, say, the business name is "David >>>> Jones IT Services", and the old and new logos are both oak trees, then it >>>> would be much harder to argue that the similarity is mere coincidence as >>>> there's no obvious reason to use an oak tree as a logo for that name. In >>>> which case, an action for design right infringement would have a much
stronger chance of success.
Many thanks I will pass on your words. I think a comparison would be
between an oak tree and say a sycamore tree. Both being trees of course. >>> However the business has nothing to do with trees but I assume the
similarity was intentional.
"Similarity" is not enough, nor is it the basis of the legal test in an >>action for passing off.
Just for clarity (since I raised the question of similarity), I was
referring specifically to design right or copyright in the logo itself,
where similarity can be enough - it doesn't need to be an exact copy. It would all revolve around whether the new logo is substantially the same as the old one, and if so whether the similarity was merely coincidental.
I entirely agree that any action for passing off would be almost impossible to succeed here. But, unlike goodwill, which is ephemeral, the intellectual property inherent in an artistic work persists beyond the use of that work. Even though Woolworths as a company is long gone now, I still couldn't use their W-in-a-circle logo without infringing the rights of whoever happens to now possess that particular intellectual property.
If a company went completely out of business without successfully
selling a trademark, would it be up for re-use?
On 2023-12-19, Mark Goodge wrote:
I entirely agree that any action for passing off would be almost impossible >> to succeed here. But, unlike goodwill, which is ephemeral, the intellectual >> property inherent in an artistic work persists beyond the use of that work. >> Even though Woolworths as a company is long gone now, I still couldn't use >> their W-in-a-circle logo without infringing the rights of whoever happens to >> now possess that particular intellectual property.
Because some company now owns the trademark, I assume.
If a company went completely out of business without successfully
selling a trademark, would it be up for re-use?
On 2023-12-19, Mark Goodge wrote:
On Tue, 19 Dec 2023 10:39:22 +0000, Simon Parker <simonparkerulm@gmail.com> >> wrote:
On 17/12/2023 22:33, Fredxx wrote:
On 17/12/2023 20:58, Mark Goodge wrote:
independent
expression of the same thought. But if, say, the business name is "David >>>>> Jones IT Services", and the old and new logos are both oak trees, then it >>>>> would be much harder to argue that the similarity is mere coincidence as >>>>> there's no obvious reason to use an oak tree as a logo for that name. In >>>>> which case, an action for design right infringement would have a much >>>>> stronger chance of success.
Many thanks I will pass on your words. I think a comparison would be
between an oak tree and say a sycamore tree. Both being trees of course. >>>> However the business has nothing to do with trees but I assume the
similarity was intentional.
"Similarity" is not enough, nor is it the basis of the legal test in an
action for passing off.
Just for clarity (since I raised the question of similarity), I was
referring specifically to design right or copyright in the logo itself,
where similarity can be enough - it doesn't need to be an exact copy. It
would all revolve around whether the new logo is substantially the same as >> the old one, and if so whether the similarity was merely coincidental.
I entirely agree that any action for passing off would be almost impossible >> to succeed here. But, unlike goodwill, which is ephemeral, the intellectual >> property inherent in an artistic work persists beyond the use of that work. >> Even though Woolworths as a company is long gone now, I still couldn't use >> their W-in-a-circle logo without infringing the rights of whoever happens to >> now possess that particular intellectual property.
Because some company now owns the trademark, I assume.
If a company went completely out of business without successfully
selling a trademark, would it be up for re-use?
On 17/12/2023 22:33, Fredxx wrote:
The old owner wasn't notified at the time of registration. However the trademark would have been published, but then who looks at the London Gazette?...
Trade Mark and Patent Agents, who then notify the owner of possible infringements. My Patent Agent even notified me of a possible
infringement in Germany and we came to an amicable agreement with the
company there, as, while we were both in the medical field, our areas of operation and products were sufficiently different for there to be no
chance of confusion.
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