Business Name/Passing Off/Trademarks

Mr Yink

Hi,

I just registered a business name and a website address for my new business. I did loads of research on whether it was already used and everything seemed ok (its definitely not in Ireland, and I couldn't find the name anywhere else on the internet). However, whilst googling my company to see if it was searchable a website that didn't come up before comes up now (under a different address) and it appears trademarked.

What I mean is I put in for example

Trendy Shoes Services (for my business)

and I notice

Trendy Jeans

(These are not the actual names).

I've checked my ACTUAL business name (which is different from their's, though the field is similar) for trademarks and no-one has it trademarked. Am I in trouble already with it or as the names are (a)significantly different although they use the same first word, which you find in any dictionary; (b)we are in a similar but definably different field; (c)in different countries; is this ok?

What if they've trademarked the word trendy for example?

I imagine whatever name I choose someone will have something similar so maybe I'm being over anxious.

Buttercake

I've checked my ACTUAL business name (which is different from their's, though the field is similar)

If I understand this correctly, I had something similar a while ago

Business name registered, (for example) ABC Business

and I registered ABCbusiness.ie

Then 2 weeks later a new website popped up

ABC4business.ie they registered it with a 4 in the middle

is this example what you mean? or did you register an brand(trademarked) name as an irish business name?

TheCostumeShop.ie: Ronan

You can't trademark dictionary words! Think about it.

Also registering a business name with the CRO gives you absolutely no protection on the name. Having a limited company may offer some protection in Ireland against it's use, but if you really need to protect it prior to launch seek a trademark attorney.

All you need to prove is that you are not trying to pass yourself off as them or benefiting in anyway from their reputation. If those conditions are met they have no grounds to sue under common law. Also as long as your not having an impact on their business or reputation they most likely wont care, naming businesses is hard and good names are often recycled.

*Usual Disclaimer - I'm not a lawyer and don't pretend to be one on the internet. If unsure seek professional advice.

mneylon

TheCostumeShop.ie: Ronan wrote: »

You can't trademark dictionary words! Think about it.

Yes you can. They're harder to defend in many cases, but companies can and do protect them with trademarks.

TheCostumeShop.ie: Ronan

Really? Would be a bit pointless to trademark a single dictionary word as any amateur lawyer would overturn it in a court challenge.

Chet Zar

TheCostumeShop.ie: Ronan wrote: »

Really? Would be a bit pointless to trademark a single dictionary word as any amateur lawyer would overturn it in a court challenge.

Well, yes of course - do you think that 'match' isn't trademarked? So I think their lawyers might disagree with you there on the court challenge.

You can trademark dictionary words - it's that you don't have universal exclusive rights to it, rather that you have rights to it within that industry. So, I can go and set up Match Clothing Company tomorrow - Match won't care of have any claims since it's got nothing to do with them whatsoever. Match Dating Spark Ltd...now that's when the New York attorneys get called in.

TheCostumeShop.ie: Ronan

There's at least 15 dating services with Match in the domain, so im not sure about that. Again im no expert, but Match.com is the registered trademark not the word 'match', as it's specific to the business.

But the OP is talking about the difference between shoes / jeans type industries, not leeching off someones brand.

nompere

TheCostumeShop.ie: Ronan wrote: »

Really? Would be a bit pointless to trademark a single dictionary word as any amateur lawyer would overturn it in a court challenge.

Apple?

TheCostumeShop.ie: Ronan

nompere wrote: »

Apple?

You mean like the name "Apple" Computers used after the Beatles holding company Trademarked "Apple" (Apple Corps)? Are you on my (apparently loosing) side or theirs? Apple Corps sued the computing company several times for trademark infringement - when it entered the music business as it could be seen to benefit from the already known established brand name. After all, nowadays when you say Apple, people probably don't think of the origional owners of the trademark being a recording company founded by the Beatles. in 2007, Apple Inc. Paid a reported 500Million to buy out the Trademark and everyone learned a lesson.

I just don't think you'd get away with such loose trademarks these days as you would have in the 70's.

When i tried to register Zatori as a Limited company they turned the application down because it wasn't specific enough, so i'd image a single dictionary word would be much harded to register as a company, let alone an enforceable trademark.

mneylon

It depends on the jurisdiction in which you register the trademark.

The Irish trademark office might be a little bit more conservative than some of the others.

The other thing to bear in mind is the Madrid classes, so you can have multiple marks but without conflict if the classes differ.

In our case, for example, we have a number of "word marks" registered in multiple jurisdictions.

We couldn't register our logo due to another company having one which was quite similar (considering it's basically a chess piece we were bound to run into issues with that one!)