How do I prevent somone using my trade name

[etiennevert1]

I have been trading as a limited plastering company for 1 year. We are based in Hull  - East Yorkshire and have trade accounts, booked yellow pages ads and registered the domain name.

I have just had a call from a guy who is also based in Hull, a plasterer and is using the exact same trade name without limited at the end. He is not registred at co's house and only set up 2 months ago. He did say that he would change his company's name, but I'm not convinced as he has got his van livery done. Is there anything I can do??? 

[Oneeyedvic]

Yes, yo ucan both sue him and get an injunction against him for using that name.

 

However, firstly, I would put your case in writing to him, give him a time scale and then make sure he sticks to it. If after the timescale has expired he has not done anything about it, consult a solicitor.

 

Although you are highly likely to win a case (based on the above info) it can get expensive and costs can be incurred.

 

Good luck

[Hgrove]

It sounds like he is committing the "tort of passing off" i.e. appropriating the good will you have built up in your business.  As Oneeyedvic says, it is better to write to him first.  Better to avoid legal costs if you can.

[Sludge]

It is a very long way from being as simple as set out above, and you should proceed with the utmost caution. There are clear and established circumstances where the other person can in fact stop you from using the name. To be able to clarify I need to know (1) are you using your own name (eg you John Smith Ltd and him John Smith) (2) or are you both using a manufactured name (eg Hull Plasterers) (3) have either of you trademarked the name, and (4) are you both competing for exactly the same clients?

[Oneeyedvic]

As stated, based on the above info I stand by my comments.

[smudge]

Is there really any point in replying if our advice is going to be classed as incorrect - well with the exception of one person.

We had the same situation within our Company, but I'll leave any valuable advice to the expert.

[etiennevert1]

Sludge - The name being used is a manufactured name (East Yorkshire Plastering) and has not been trademarked.  We are essentially competing for the same customers as we are both plasterers operating in same area but are not direct rivals for any given customers eg  Both tendering for work with Barrat Homes - however this could happen.

[Oneeyedvic]

Okay, just to confirm a couple of things:

 

First of all, if (as you say he has only been trading 2 months and you ahve had your company registered at companies house for over a year - East Yorkshire Plastering Ltd I guess), he probably would not have been able to get a trade mark (although Company Law and Trademark Law are different). I also doubt he would be able to get the name mentioned trademarked as it is not distinctive enough.

Bear in mind that applying for a trademark will cost �200.00. There is also a 3 month period for objections to be received so you are still in time to object.

 

Secondly, you are both plasterers (irrelevant of the size of business you are competing for (eg if you only went for new builds and he only did patch work - this is irrelevant. I could not open up a business called PC World and say that I only do servicing on computers - something PC world do not do) The point is that they are trading off your name.

 

I hope this clears up any confusion. As I originally said, you can both sue him and get a court injunction. But as I made clear, this will take time and cost money.

 

It is that simple, and don't let anyone fob you off.

[Sludge]

etiennevert1. Thank you. It seems as if you are suffering s straightforward injury. Given that you were by a long way in existence first your opponent has clearly and deliberately put into place a misleading device by which customers can be decived into diverting work from you to himself. There is an underlying rule in this that "he who sits on his rights loses them". You should therefore act quickly to end this fraud by combining two of the bits of advice given to you above by instructing your solicitor to straight away commence an action in passing off by applying for an injunction restraining your opponent from selling plastering services in the same name that you use. I usually see injunctions in place in 5-7 days. Counsel is required and 2 hearings a few days apart may be necessary. Protecting your company name is a legitimate business expense enabling you to reclaim VAT and set against top rate of tax. Costs can be recovered from your opponent. Budget therefore 2

hearings @ �1500 = �3000 less 80% recovered = �600 less 40% tax = cost to you about �360. I myself would not bother with warning letters and just terminally blast the nuisance off his perch with an injunction. The third piece of advise you received was to sue him, presumably meaning initiate an action for damages, but you can only do this if you are factually damaged.

[Hgrove]

I'd like to clarify something. I would be very surprised if you could trademark a trading name.  You can only trademark a trademark.  If you wrote to the Registrar saying "I'd like to trademark East Yorkshire Plastering please" he would turn you down.  If you have a trademark (artwork, something distinctive) you could register it; but - if a competitor then uses the name East Yorkshire Plastering, but not the trademark, registration will not helpful.  Registration of a trademark protects the trademark, not the name.  If he is using a name you have been using for a while to trade, and have built up goodwill in, then your protection is in passing off.  Another thing, if you fire off a registered letter straight away (let's say while you are looking for a solicitor) nobody can accuse you of sitting on your right. 

[Hgrove]

The Government's intellectual property website is http://www.intellectual-property.gov.uk/  . To find "passing off" you need to click on "other intellectual property rights".