What to do if your business name is stolen

You’ve brainstormed, you’ve picked out a brand name, you’ve launched your business … and then you discover another company using your name. Is there anything that you can do?

The answer is not necessarily straightforward, and depends on a few different factors, including:

1. whether you have taken steps to protect your brand name (i.e., obtained a trade mark);
2. whether the other company has taken steps to protect their brand name; and
3. which company came, and built up a reputation, first.

The best-case scenario is that you have already secured a trade mark for your brand name, and the other business started using their name after you secured protection for yours.

This is because trade marks provide strong protection; they allow owners to enjoy a monopoly right to use the trade mark in respect of the territories and the goods and services for which it is registered.

So, if another business is using the same name for the same or similar goods and / or services, whereby customers may confuse your two businesses, this is likely to be trade mark infringement, and you can take legal action by sending a cease and desist letter.

If you have not yet secured your trade mark, all is not lost. It is possible to rely on unregistered rights and the common law of passing off. For this, you will need to show that you have built up significant goodwill in your brand name through your business activities, and that the other company has misrepresented themselves by using your name, thereby causing damage to your business.

If the other company has secured a trade mark, you may be in danger of inadvertently infringing their trade mark by using the same name. To avoid this, it is sensible to conduct clearance searches prior to deciding on any brand name. This can involve a search of trade mark registers to look for any already registered trade marks, as well as more general searches (e.g., Google searches) to look for companies which may have built up unregistered rights.

Even if a business does not have a registered trade mark, they may well have built up unregistered rights in their name. For example, if you find that someone has applied for a new trade mark for the name that you have been using for many years, you may be able to oppose the application based on your unregistered rights, or, if you have missed the opposition window and the mark has proceeded to registration, you could seek to cancel the trade mark, on the basis that you have prior unregistered rights.

Whilst relying on unregistered rights is possible, it can be difficult to prove and evidence the requisite elements for a passing off claim (i.e., goodwill, misrepresentation and damage), making it harder to rely on and enforce than registered rights. It is therefore highly advisable to conduct clearance searches and secure your trade mark at the earliest opportunity, to avoid issues down the line.

To find out more about trade marks, unregistered rights and how to protect your brand, get in touch with one of our specialist IP lawyers.

Laura Gathercole – Solicitor