TradeMark Law question

Edward9

Hi if a person Owns a registered trademark for example'' Craggy Island Dog Groomers ''
And there is a unregistered group of people called '''Craggy Island Dog Groomers Association''

Does that person have legal right to ask this Association to stop using that title without permission??

DecksDerivative

The short answer is 'It depends'

In that example you gave probably yes. A Trade Mark is registered in certain classes (1 to 45) for specific goods and services and if you have protection in the class that the other person is using your mark in, then you could require them to stop. There is a specific exemption which allows concurrent registration of a Trade Mark through 'Honest Concurrent Use', but they would need to show they had been using the Trade Mark for a 3-5 years honestly and without notice of the Registered Trade Mark for it to be possible.

Using your example above, if you had a registered Trade Mark for "Craggy Island Dog Groomers" you could probably stop "Craggy Island Dog Groomers" but not "Craggy Island Window Cleaners" and whether you could stop "Craggy Island Cat Groomers" would be open to question, but probably.

A Trade Mark is supposed to work as a badge of origin to distinguish goods or services, and if there's a danger that people dealing with Craggy Island Dog Groomers Association would think they were dealing with Craggy Island Dog Groomers, than there's an issue, both in Trade Mark and possibly under the law of passing off.

Edward9

DecksDerivative wrote: »

The short answer is 'It depends'

In that example you gave probably yes. A Trade Mark is registered in certain classes (1 to 45) for specific goods and services and if you have protection in the class that the other person is using your mark in, then you could require them to stop. There is a specific exemption which allows concurrent registration of a Trade Mark through 'Honest Concurrent Use', but they would need to show they had been using the Trade Mark for a 3-5 years honestly and without notice of the Registered Trade Mark for it to be possible.

Using your example above, if you had a registered Trade Mark for "Craggy Island Dog Groomers" you could probably stop "Craggy Island Dog Groomers" but not "Craggy Island Window Cleaners" and whether you could stop "Craggy Island Cat Groomers" would be open to question, but probably.

A Trade Mark is supposed to work as a badge of origin to distinguish goods or services, and if there's a danger that people dealing with Craggy Island Dog Groomers Association would think they were dealing with Craggy Island Dog Groomers, than there's an issue, both in Trade Mark and possibly under the law of passing off.

Thanks Brian.
If the Craggy Island Dog Groomers was set up AFTER the Association was set up what is the case?

Bear in mind Craggy Island Dog Groomers is a registered trademark but the association is unregistered and their association name has had slight changes to their name over the years.

There is no malice in my questions its just I am wondering if the association decided they were not happy with my business trademark been registered what can they do. I only just want to use my chosen title for my business.
Thanks

Pat Mustard

DecksDeriviative has been banned for advertising his company so you won't get an answer from him, unfortunately.

Mr. Incognito

If you have a trade mark and it is being infringed you can sue on foot of that infringment and also for the tort of passing off.

If you can show you had an established use before the trademark was registered it can be a defence to any action but will normally be limited in territoriality to that area you have established that us.

Carawaystick

If you have a trademark and don't try stop infringement, you can loose your trademark.