Business names

[Freelancetrainer]

I’m confused. Everything I read states that businesses should not share the same name if providing the same goods/service. The advise is to do online searches and trademark searches to avoid this, stressing infringement and being told to change the name etc. Yet there are many ‘Perfect Petals’ and ‘The Perfect Petals’ flower shops. Plenty The Dukes Head and Woolpacks, plenty The Cod Father chip shops. All unrelated. How can this be? I’m being told I have to wait 2-3 months to see if anyone opposes my chosen name and find myself having to put everything on hold until such time and my name isn’t the same, it just has similarity. Makes one wonder why these rules exist if nobody seems to follow them or be bothered by other businesses having the same name?

 

[BannerPenguin]

Your last sentence is right - these people aren't bothered if they have the same name as someone elsewhere in the country. Especially if they're just a local business. Also, some things just can't be trademarked if they're generic like some of the examples given.

The main thing is to make sure you don't infringe someone else's trademark in the same class as your services. Fingers crossed you get your trademark agreed but likewise make sure you have money set aside to protect it which is one of the biggest parts

 

[Freelancetrainer]

Ah ok. So you can have the same name as another business so long as it’s not trade marked? I thought the rule applied irrespective. That’s actually a relief if so. When you say ‘have enough money set aside to protect it’ I’m assuming you mean should I need to in the case of someone else copying my name? I think I’m correct in saying however, that there is no need to spend money if there is clear infringement? I can just say I oppose? But if there were clear infringement then surely the trademark people wouldn’t accept the application to publish it for opposition purposes? Have I got all that correct? My head feels like mush.

 

[Freelancetrainer]

Sorry. I appreciate someone could use my name without applying for trademark but if it was a clear infringement then perhaps I wouldn’t need money set aside as such? That’s what I meant.

 

[BannerPenguin]

You're correct. As long as not trademarked then anyone can use the same name as long as legally they aren't trying to imitate themselves as the other business. However, as you know, no point having the same name as another business on the same road/town but it widens up scope for example if you're in the South and the other person with the same name is in the North.

If there was a clear infringement of your trademark you'd still need to issue legal proceedings. Even just a solicitors cease and desist letter is going to cost money. Of course, you could send a letter yourself but most people would ignore it I imagine. It's about showing you're serious into making them stopping and the case of if they don't stop, X is going to happen. I'm not sure of the law to be totally honest but you can obviously go to court and force them to stop but that's still time and money somewhere along the line I imagine.

This is totally different but as an example, my friend manufactures a pro tennis product and has a patent for it in every country they sell in. As I say, I know this is a patent and not a trademark so it is different but I have no clue how much different legally. Anyway... they had someone in the US saying their product infringes his patent and he was going to sue. His patent was so vague and it didn't infringe anything however to fight their corner and just to prove they were innocent they obviously needed a US patent lawyer and I think the whole thing halted production for about 4 months and cost north of £20,000 in fees which they couldn't get back.

 

[Freelancetrainer]

Wow. That’s scary. So if I get a cease and desist letter from the other trademark, will that mean I can’t use my name at all then? I’m beginning to wish I hadn’t applied for the trademark as I otherwise would probably not have been noticed.

 

[Freelancetrainer]

There is only one business with the same name as mine which is very close in geographical location to the existing trademark. I’m taking that as a good sign since they are still trading with that name.

 

[BannerPenguin]

Na, don't panic. If they object then you can just withdraw your application

 

[Freelancetrainer]

If I withdraw the trademark at the time, am I able to still use the name for my business? Just not trademark it?

 

[AcidPerm]

If I withdraw the trademark at the time, am I able to still use the name for my business? Just not trademark it?

There is only one business with the same name as mine which is very close in geographical location to the existing trademark. I’m taking that as a good sign since they are still trading with that name.

If the name you’ve chosen is very similar to a trademarked name, then they could issue proceedings at any time in the future so you’d potentially have to stop using that name. If you’ve been successfully trading under your name for 5 years, then you’d have to start a re-branding exercise which could be costly and time consuming.

If you successfully trademark your business name, no-one else will be able to stop you using it 5,10,20 years down the line.