Home Forums Selling online My trademarked business name has been stolen, looking for advice

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  • #992793
    slacky741
    Member
    • Total posts: 5

    Hi there, please feel free to move this post into a better section as i wasn’t sure where to post it. I was wondering if anyone would have any advice for me. I run an online retail business and have a registered trademark for both my logo and my business name.
    Today i just found out someone else is also trading under an almost identical name who has only started recently. I have contacted the person politely and asked them if they were aware that my name is trademarked and they have just responded that there name has nothing to do with mine and claiming he isn’t even selling the same products as me, which is rediculous.
    My business name is Retro Geek Australia, selling gaming accessories for old school consoles.
    His name is Retro Geeks Video Games selling retro consoles and games, pretty much exactly the same category.
    I’m just wondering what the next step would be and would this be a costly exercise to do anything about it?

    #1188191
    GuestMember
    Member
    • Total posts: 318

    I really empathise with you. Your heart sinks when you see this. Usual disclaimer – I’m not a legal expert. Taking action for TM infringement is likely to be costly. IP protection is a warding off exercise and when someone ignores that, it is only worth your ability to see it through.

    They may have had a knee-jerk reaction. So give them time to reflect. You’re possibly not in the mood for empathy right now, but it can be very shocking to the other side as well if they didn’t know.

    Remember that many people come up with ideas completely independently. I once ‘invented’ what is now called the “Jar key” to open difficult lids. I’d never seen one before. Then I saw it in a specialist cookery shop. Now it’s everywhere. Completely innocent and thankfully not pursued to prototype. So try not to get too angry with them. They’re having a bad evening as well.

    Quite how close a name has to be to become an infringement is a job for a professional. You’ll probably also need to prove they are ‘passing off’ as you – that customers buying from them actually think they are buying from you.

    Also, there may be a difference between using words that are readily available in normal conversation and using your actual logo or similar. Words and phrases that are widely used are not normally the subject of a TM, as I understand it; but rather, it is their presentation in the logo. Again, hopefully a pro on here can help clarify this.

    Sometimes deals are struck where you agree they can do certain things for a fee and this can provide an income. I hope I don’t come across all Paul-i-anna but try to stay solution-focused and think how to turn a negative into a positive. Some great win-win deals are sometimes struck out of adversity.

    I really wish you well with this.

    #1188192
    MyGreatIdea
    Member
    • Total posts: 2,278

    I’d suggest you contact Jacqui Prior from Mark My Words Trademarks (she’s a member and can be found in the directory).

    Jacqui will be able to point you in the right direction.

    Wendy :)

    #1188193
    slacky741
    Member
    • Total posts: 5

    Thanks everyone for your advice, I’ll contact Jacqui and see what she says :)

    #1188194
    kathiemt
    Member
    • Total posts: 1,168

    How did you go? I had someone in QLD a few years ago advertising their business with my business name. I copied some text from the trademark website and sent that to them, along with proof of my registered trademark. I also contacted their webhost and advised that the website they were hosting was infringing on my trademark.

    End result was the website was taken down and the person had to rename their business. I was only alerted of this because of a fellow VA in Qld who knew me had seen this other business advertising and asked me if I knew about it?

    When you own a trademark it is important you keep alert and a watch on what others are doing with the possibility of your trademark being infringed.What I do is use Google Alert to alert me when my business name or similar is being published in articles, websites or anywhere so I know what’s going on out there. I let Google work for me :)

    #1188195
    Snakeman
    Participant
    • Total posts: 329

    Slacky 741, you are all good in terms of your battle.
    You own a words only trademark and with a wide claim (your other logo trademark gives you no protection in this case).
    I am not a lawyer, but do have expertise with trademarks and own several that are infringed by thieves on a daily basis.
    The person using your name or something similar is clearly infringing and also engaging in the act of misleading and deceptive conduct which is a criminal offence and can attract sanctions including jail.
    Trademark thieves always have a repertoire of bogus excuses to justify their crimes such as “I am not using your trademark” when they have one or a few letters different, or “I am not for profit” when they are directly using it, or “I am selling different goods and services”, when they are not.
    You will be hit with all this while they continue to steal your valuable clients and without telling you.
    In summary get onto a good lawyer and crunch the bastards down to every last infringement (and I mean removing of all usage of the trademark from ALL their internet properties).
    (See for example how Bunnings tolerates no usage of their trademarks by competitors online … and they are not stupid).
    At the same time do a websearch for other uses of your trademarks and stop every single one of them as best you can, as you’ll find that once an infringer gets a taste of your money by stealing your clients, they will be very hard to stop as they will fight for what they then assert is theirs (income).
    If you stop infringers before they get the taste of your money, they will usually comply with your legal demands as for them, there is no loss in doing so and it gets you off their back.
    If you ignore infringers or go soft and be too nice, you can end up with dramas beyond your wildest dreams, once they start to make money out of your trademark and the associated goodwill as seen in the link provided (moderator delete link if it breaches your guidelines):
    http://www.smuggled.com/trademark-infringement-online-breach-bootlegger-loses-over-800-illegal-webpages.htm
    I hope this helps

    #1188196
    PRO
    Member
    • Total posts: 450

    Write them an email/ letter. Identify your tm number, tell them they have 7 days to stop or you are going to take urgent legal action

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