Which takes preference, Business Name or Trademark?

Zascar

Question: If you have a business name, and I come along and register a trademark of that same name, can I then demand the rights to your business name (and associated domain name)?

Here's the background: My dad registered a business name in August 2006. We got the corresponding domain name and have been trading under that name fine ever since.

A company in the UK with the same name coincidentally, are now claiming rights to it. They had the name registered in the UK since 2003, but they registered it as a trademark of the same name in Ireland, in April 2008.

I would have thought that they would not have been able to register a trademark when someone else am operating under that business name - but apparently they did.

They are now asking us to give up the business name and domain name.

What are the rules around this does anyone know?

maidhc

The rules are complicated enough and involve various things, but without giving legal advice, I would say things don't look good from your point of view.

This might be of interest.
http://www.icann.org/en/udrp/udrp.htm

ronnie3585

Pretty certain that business names are next to useless in terms of protecting your IP and a trademark will trump a business name regardless of the date of registration of the trademark. I think registration of a domain name changes things.

I worked on a file very similar to your dad's situation last summer, just cant remember the specific law off the top of my head. Im sure you'll get a definitive answer here but if you dont Ill have a look at it tomorrow.

maidhc

ronnie3585 wrote: »

Pretty certain that business names are next to useless in terms of protecting your IP and a trademark will trump a business name regardless of the date of registration of the trademark.

I worked on a file very similar to your dad's situation last summer. Im sure you'll get a definitive answer here but if you dont Ill have a look at it tomorrow.

That is about the size of it.

You can even register multiple identical business names.

Gangu

Zascar wrote: »

Question: If you have a business name, and I come along and register a trademark of that same name, can I then demand the rights to your business name (and associated domain name)?

Here's the background: My dad registered a business name in August 2006. We got the corresponding domain name and have been trading under that name fine ever since.

A company in the UK with the same name coincidentally, are now claiming rights to it. They had the name registered in the UK since 2003, but they registered it as a trademark of the same name in Ireland, in April 2008.

I would have thought that they would not have been able to register a trademark when someone else am operating under that business name - but apparently they did.

They are now asking us to give up the business name and domain name.

What are the rules around this does anyone know?

Common misconception that business names are any good in terms of brand protection. They are not. 'Might be an idea to get some legal advice, although if they have the registered trade mark in the same area as your Dad's business the boat may have sailed. Might be a passing off issue, but you need to get specific advice.

Carawaystick

trademarks only apply to specific areas - apple records vs apple computers were both valid trademarks.
Is the business in the same line of trade as the trademark?

Zascar

Yes we do exactly the same thing. The business name descscribes our business exactly.

To give a similar example, if we were house painters, the company would be called "PaintYourHouse.ie"

seamus

In terms of the .ie, provided that you registered the business name in good faith (i.e. you weren't deliberately trying to snatch the name from the other company, or get business based on them having a well-known name) and you're not using it to badmouth the other company, then you have a good chance of holding onto it. This is particularly true if the other company weren't well known or didn't operate in Ireland at the time that you registered your business name.

See www.iedr.ie for more details of dispute resolution.

One interesting one is this, which is probably most relevant:
http://www.wipo.int/amc/en/domains/decisions/html/2007/die2007-0007.html

WhatCar? magazine wanted the domain on account of being an established brand.

The owner of the domain, despite have started up well after WhatCar?, had a business which involved finding cars for people - so he had a legitimate claim to the domain and he won.

Now, I only skimmed it so I might have missed something, but it sounds like they're possibly just trying to bully you into getting out of their way.

Talk to a solicitor who specialises in that kind of stuff. Nobody can/will be able to give you a correct answer on it.

Zascar

Thanks that's really helpful.

The thing is, that if we fought this and lost, it would probably cost a fortune. We'd rather not risk it and rebrand. However if we do have a good change of keeping it we'd prefer that obviously.

Dad did contact an apparent specialist, but they came back with a response which was a joke, they had not read the info we sent them and had got it all wrong.

Might try to find someone else

kaiser sauze

Trademark trumps.

Are you certain that the trademark was registered in Ireland this year? It is definitely not a UK only one?

maidhc

Zascar wrote: »

Thanks that's really helpful.

The thing is, that if we fought this and lost, it would probably cost a fortune. We'd rather not risk it and rebrand. However if we do have a good change of keeping it we'd prefer that obviously.

Dad did contact an apparent specialist, but they came back with a response which was a joke, they had not read the info we sent them and had got it all wrong.

Might try to find someone else

Come to think of it, your story sounds like a matter litigated already in the courts a few years back. Someone with a law book handy might tell you. It involved Falcon travel IIRC who came into the market. A travel agent who used a similar brand got some compensation, which if my memory serves me correctly was calculated in a funny sort of manner (on the basis of the cost of an advertising campaign to educate the public...but was considerable).

Carawaystick

Diesel clothing in Ireland aren't the same as the rest of the world, so there must be some relief for preexisting businesses.

Carawaystick

Diesel clothing in Ireland aren't the same as the rest of the world, so there must be some relief for preexisting businesses.

Fey!

I may be wrong, but I don't think that having a business name automatically entitles you to that business name as your domain name. You could possible sell it to your rival, but I doubt that that would do your business much good.

OldCustomer

Registration of a business name is purely for the information of the public so that those carrying on business can be identified. The law obliging registration was first introduced in 1916 to identify enemy aliens carrying on business in the UK during WW1.

However usage of a business name (as opposed to registration) MAY enable the user to acquire common law rights to use the name. It depends upon individual circumstances which is why professional advice should be sought on the specifics of your query.

A general example of the complexity of this type of problem may be seen in the case report of C. & A. Modes and C. & A. Ireland, Plaintiffs v. C. & A. (Waterford) Limited - 1976 Irish Reports.