We often get calls from business owners who have recently learned that their business name is being used by another company or person. They want to know what can be done to stop the use of their business name, and what it will cost to get the work done.
If you have a business, you should have some knowledge about the legal requirements. You might be asked to prepare legal documents including:
- articles of association;
- shareholders agreement;
- employment contracts;
any anything relevant to your business.
One legal service that is often mentioned is trademark registration, which isn’t compulsory, but makes a big difference if your business name is being used by someone else, without permission.
I have a trademark, what can I do to stop use of my business name?
If you have a registered your business name as a trademark, you have the legal right to stop another business or person from using your business name. Any Illegal use of your business name would be considered trademark infringement.
Trademark infringement is an unauthorised use of a trade mark to that is likely to confuse, deceive or mislead customers.
To stop another person or business from infringing your trademark, you need to.
- Collect information, which shows the other party has used your business name.
- Send a carefully worded Cease and Desist letter to other party to open communication and bring about an amicable settlement without the need for legal action.
If this stops the use of your business name, then the matter has concluded. However, you can request financial details as part of the Cease and Desist letter if the other party has benefitted financially from the illegal use of your trademark.
If there is no response, then you can make a claim in the Chancery Division of the High Court (the Court of Session in Scotland), or the Intellectual Property and Enterprise Court (IPEC).
You can discuss the matter in more detail with us if you want to escalate a trademark infringement matter.
I don’t have a trademark, can I do something to stop use of my business name?
In most cases, no. It isn’t easy to stop use of your business name if it hasn’t been trademarked. The only way you can enforce your rights is through protection provided to businesses through the rules of ‘passing off’.
Passing off is defined as making false representation which is likely to make customers believe that a company’s goods or services are those of another.
Passing off is only available if your business name has fulfilled these requirements:
- Goodwill, which is the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom.
- Misrepresentation, which requires demonstrate that the public has been led or will likely be led to believe that the goods and services provided by another party is actually yours.
- Damage, you have to establish that you have suffered or will likely to suffer damage due to the misrepresentation.
Passing off isn’t easy to enforce and requires a lot of work to enforce.
Our recommendation is to register your trademark if you want to stop someone else from being able to use your business name. As stated above, you can always give us a call or email us on 020 3475 6751 to discuss your legal matter.
