OK, bit of a tricky one, if anyone can help with trademark issues.

Company A has been selling a product for 10 years plus but hasn’t trademarked it. Company B, a direct competitor who is very close geographically to Company A, realises an identical product ten years later and registers the name as a trademark. Both the companies use the same name for the product. Bear in mind Company A has been using it for some time. Company B have also managed successfully to trademark a place name and have also attempted and failed to trademark 2 other place names.

My question is, is where does Company A stand in regards to getting Company B to stop using the name that they (Company B) have trademarked. Company A can prove its use of the product name over this time with financial records etc.

Your thoughts, please?

my thoughts would be to ask an IP lawyer.

Your thoughts, please?

[url=http://www.dlapiper.com/uk/]DLA Piper[/url] is who we use.

EDIT: Touché Mr Smith

There will only be one real winner here.

The IP lawyer.

I was thinking the same with the IP lawyer, is anyone aware of any test cases or case studies?

the Internet Pretend Lawyer is in session – How may I help ?

Phone the IPO in Newport and get some advice, there may be some weight behind the people who had it for ages and used it but dont hold your breath.

http://www.ipo.gov.uk/tm.htm

is anyone aware of any test cases

It’ll be on about p.3-5 of a trademark law textbook. Go along to the nearest law school’s library and have a look. Or pay DLA Piper 2000 quid to have the summer clerk summarise those three pages for you as the initial letter of advice. 😉

is anyone aware of any test cases or case studies?

When I spent a day with our lawyers this did come up.

I don’t have the specifics to hand but from memory there is a case for A being able to continue using the name due to prior use. (but I am not a lawyer).

I asked a similar question a while back, although that was about company logos rather than names. However, it might be worth looking at ‘Passing Off’ guidelines

http://www.ipo.gov.uk/t-protect-passingoff.htm

Thanks for the information folks. IPO have been called and they suggested get legal advice and that was it.

Little chef are allowed to continue selling the Olympic breakfast even in view of the tightly bound ip of the London 2012 Olympics purely because they are able to prove a historical right.

They can’t however release an Olympic burger due to tm infringement.

I’m sure company A will be ‘reet but it may be worth getting a professional opinion…..ring Newport; their advice is free.

Trade mark names, a certain WWF (world wrestling federation) tried to stop another WWF (world wildlife fund) using the WWF abreviation, the latter pointed out they had been using the abreviation 30 years b4 the former even existed, wrestling is now called WWE need I say more?

need I say more?

IIRC it wasn’t that simple – there was an agreement that the WWF (big men in spandex) people couldn’t use the WWF moniker outside the US, or inside Europe, or some such. They breached this agreement, which is why the WWF (pandas and treehugging) people sued.

I think.