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October 1, 2016 at 2:06 am #995435Up::0
Need advice,
A competitor has registered the trademark to my business name that is registered to me. and now has demanded we shut down and transfer our website to them.We had our name already registered but unfortunately we didn’t have the trademark to it . they then registered the trademark to our business name after we had already registered the name , can they do this, they are a competitor.
Thanks in advanced
October 1, 2016 at 5:04 am #1201884Up::0Whilst there are complexities in these kinds of issues… on a basic level a trademark trumps anything else.
Welcome to capitalism… they’ve played the game within the law and you’re going to have a hard time arguing against a trademark.
Registering a business (and definitely registering a domain name) doesn’t give you any legal rights to that name.
That doesn’t mean there’s nothing you can do because as I said, these are complex matters.
October 2, 2016 at 4:16 am #1201885Up::0Hi David,
We do have some experts in this area among our members. In particular [USER=20176]@JacquiPryor[/USER] is your go-to person.
In the meantime, one thing to clarify is that you’ll never have to transfer your actual website to them – worst case would be transfer of the domain name.
If you can provide some more details that will help the experts give you some advice. Your history of use of that name will likely be a factor (how long have you been in business etc).
Good luck!
DaveOctober 3, 2016 at 4:37 am #1201886Up::0Hi there – sorry for the situation!
More information will be needed to provide you with appropriate advice. However, if you actually used the name before they registered the trademark or first used (which ever is earlier) you may very well have a defence to allegations of infringement on your prior use of the name – meaning, they can’t make the demand for you to cease use/hand over domains etc.
The key above is actually using the name in the course of trade – merely holding a business name registration that is earlier in date will not meet the ‘prior rights’ criteria.
Also – have they actually registered the trademark, or have they filed an application and making premature claims? If the trademark is not actually registered yet there could be grounds to oppose their application to try and stop them registering.
Finally, if it is fully registered then if they have acted in bad faith in that application or you believe they are not the owner of the trademark, you might have options to cancel their trademark.
Each case is different so if you would like to email me ([email protected]) some further detail (particularly, what is the name in question; when did you register the business name; when did you first use the name as a way of ‘branding’ your goods/services; who is the competitor and have they actually used the name?) then I am happy to review and let you know some preliminary comments to consider.
October 3, 2016 at 4:40 am #1201887Up::0Addition to the above post – if you’d like to forward a copy of the correspondence they have sent you with the other information that would help advise of your options
October 4, 2016 at 12:51 am #1201888April 7, 2019 at 10:13 am #1201889Up::0davidbo, post: 239363, member: 32950 wrote:Need advice,
A competitor has registered the trademark to my business name ….What a terrible situation. Now that it’s been a while, could you give us a rundown of what ended up happening? I’m very interested to hear about how you handled this.
Much appreciated. -
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