Passing Off

margaretdublin

I have a dormant company set up to protect a name in the state but hsaven't trade marked it. I am diversifying my business into a new area so could now look for the trade mark as no one else owns it in Ireland
However, I have discovered there is a Northern Ireland business not registered as a company, selling in the Republic.
My product would be slightly different to theirs but in the same class for trade mark. purposes.
Could they object to my submission for a trade mark? Would I be leaving myself open to a passing off action?

The company name I have registered was incorporated before the Northern Ireland business set up. Would appreciate any advice

mneylon

Short answer - possibly.
You'd really need to get professional legal advice but most TM law is backed by "use in commerce", so if they have established usage before you then they'd be able to claim common law rights and / or oppose your TM claim / registration.

margaretdublin

Thank you Blacknight.
If people in Northern Ireland don't have to register a business name where should we look to ensure we are not taking a persons goodwill? If I was to set up a new company in the morning here how I would I know who was using what in Northern Ireland?

mneylon

You probably need to speak to someone who specialises in trademark law

margaretdublin

Thanks, will do

Just curious though, on a side issue if someone had a business name in NI say for eg Pretty Pink and there was a company registered in Ireland called Pretty Pink who would get the Pretty Pink domain name? The one who applies first?

mneylon

margaretdublin wrote: »

Thanks, will do

Just curious though, on a side issue if someone had a business name in NI say for eg Pretty Pink and there was a company registered in Ireland called Pretty Pink who would get the Pretty Pink domain name? The one who applies first?

Domains are "first come, first served"