Another business is using my name

[tru.playaz]

Hi, in brief another business is using my business name, its the same industry in around the same area. 

I have been trading using the name for 12 years and as far as I can see them only 3. 

I have owned the website, emails and url with the name and reported my tax returns under the business name in question. 

I am a sole trader, not too sure their status but would like to know if it makes a difference if its ltd company on their part.

I do not believe the business name can be trade marked but will be looking into this. 

Any advice would be greatly appreciated. 

I would like to try and keep the name out at the moment. 

Thanks in advnce

[unclebulgaria67]

Legally not sure there is much you can do.  The fact you are a sole trader and they might be a ltd company does not make any difference, as far as I know.

If you were known as for example, Jones the Builder and the new company for sake of argument, were called Jones The Builders Ltd, then anyone with the surname Jones would be entitled to set up company in that name.  

Of course a business would be in trouble if the business name was already trade marked.  e.g.,. McDonalds Burgers of Burnley, might lead to litigation from Ronald McDonald. 

Rather than get into any legal dispute that would cost you money, I would suggest that you contact the other business owners to see if you can reach an amicable resolution.

And in your business advertising, you should ensure that you note how many years you have been trading.

You may be able to get local advice from council  Trading Standards, if you start having issues with the other company.

[Ethel Street]

Is your business and the other business doing similar things?  When I've seen court cases about this sort of thing it often seems to hinge on whether customers might mistake the two businesses. So If, for example, both businesses were IT consultants the courts seem more likley to get involved than if, for example, you are an IT consultancy and other is a greengrocers.  I don't know the law in detail though.

[BankFodder]

It makes no difference that they are an incorporated company. The issues are exactly the same.

You are dealing here with the tort of passing off. Look it up on the Internet that basically it is the tort of trading in a way in which someone is passing off their goods or services as yours and thereby trading on your goodwill.

An important element is that it causes confusion amongst potential customers. This means that you would probably have to do find some people who were prepared to say that when they saw your competitor they thought it fact that they were dealing with you or that they were purchasing goods or services which somehow emanated from you.

You could certainly try trademarking your name now – and you probably should do – but if you are granted the mark then it could well be subject to an acknowledgement that your competitor was entitled to use the dame as they had been using it prior to your application.

I doubt whether you could challenge their use retrospectively as they were using the mark before you had registered it.

You need to be looking at the tort of passing off.

How is it you have just discovered this? You say that they have been trading for three years using that name or that get-up or whatever it is they are using.
One of the important things about passing off and also trademark infringement is that you need to react fairly quickly – especially in respect of passing off.

Have you had your customers complaining?
You could possibly sue somebody in the tort of passing off simply because of the likelihood of confusion but this would probably be fairly difficult unless you could show that they had deliberately adopted your name or your get up in order to ride on the back of your goodwill.

The best thing to do would be to produce some people who had been confused and had bought your competitor's product instead of yours believing that it was yours.