Copyright Law
Is your trading name a law suit waiting to happen?
By Trade Mark Attorney Sarah Chatterley of Coulson & Associates
In 1995 a company changed its name to include the words "Compass Logistics" (we’ll call them the "little guys"). They didn’t fully check out whether anyone else was trading under that name and they didn’t register their trade mark either. "Compass Logistics" traded for the best part of 8 years without being aware of a group of companies called "Compass".
We’ll call Compass "the big guys" because they had registered their trading name as a trade mark!
In 1996 – a year after the little guys changed their name - "Compass" registered a European-wide trade mark, known as a CTM. Then when they heard about the "little guys" they started legal proceedings for infringement of their registered trade mark.
The High Court ruled that there was trade mark infringement and the little guys found themselves in quite a mess. The law suit costs and damages involved in fighting the case were fatal. Shortly after the court case, Compass Logistics went out of business.
You might be thinking "Hang on, that’s not fair, Compass Logistics had already been using its name before the big guys registered their European-wide trade mark (CTM)!"
Well, you might be right. But Compass Logistics weren't considered to be big enough or sufficiently well known in their market to succeed in attacking the validity of the European registration (CTM). They could not use their prior use as a defence either because the relevant European law does not provide for this.
So, the CTM stood. It stood right in the way of the little guys.
The frustrating part of this story (which is true by the way) is that all of this could have been prevented. Compass Logistics should have checked out the name they wanted to use as a trade mark. (A registration at Companies House is not the same as a trade mark registration). For less than a few thousand pounds, it’s possible to obtain a registered trade mark and ensure the longevity of the business you are building.
Even though you may have adopted and used a brand or company name for some time, you are not on safe ground unless you are absolutely sure that no one else has been using or has registered the same trade mark or something similar. Being the first to use a trade mark might not even come to your rescue.
However, having a registration for your trade mark will.
Sarah Chatterley is a Registered Trade Mark Attorney at Coulson & Associates. Monkey Business readers qualify for a free 20 minute consultation: a chance to discuss your trading name and identify the risks.
Email sarah.chatterley@coulsonandassociates.com or visit www.coulsonandassociates.com