What are the risks associated with a friend of mine who has taken on a
trading name without the previous user's/owner's consent.

The old owner has abandoned his product for some months with all media
and websites taken offline.

There was a email dialogue between new and old parties where the money
asked by the 'old' owner was considered too much for his logo and other
IP including the brand name.

In the mean time, new owner registered a trademark with the brand name
and has now been through the publishing and process by the IPO, received
no opposition, so has been awarded to the new owner. This process took
some months.

As a result new company have began marketing, with a similar logo to the
old branding on a new and different website and the 'old' owner is
naturally upset and threatening legal action, plus threatening
bad-mouthing the new owner's and his product.

I've suggested he re-contacts the old owner with a view of salvaging
good will, but without any admission he's done anything wrong.

I had thought that once a trademark was registered, it is an uphill
struggle to go against this registration?

My friend is of the belief that the old owner had abandoned the brand
name and therefore with the brand name registration would put him in a
strong position. Is this truly the case?

On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:

[snip]

>My friend is of the belief that the old owner had abandoned the brand
>name and therefore with the brand name registration would put him in a
>strong position. Is this truly the case?

He is in a strong position, yes. Providing he isn't in any way purporting to
be the original trader, and isn't attempting to benefit from any goodwill
built up by the original trader, then an action for passing off is very
unlikely to succeed. So the most plausible course of action by the original
trader would be to attempt to get the trade mark revoked. But that is an
uphill task, particularly if he was notified at the time of the original
regstration and didn't object. So I think your friend is justified in his
belief that he has a strong case should it go to court.

The only exception to that may be the logo. You say that it's "similar", but
don't say how much, and don't describe it at all. So a lot would depend
there on whether there has been any attempt to copy or reuse the original
logo, or whether the similarity is purely coincidental.

To illustrate that, if, say, the business name is "Oak Tree IT Services",
and both the old and new logos are of an oak tree, then it's likely to be
persuasive to argue that using an image of an oak tree for a businesss named
Oak Tree is simply a statement of the obvious, and that therefore the new
logo is not a copy or derivative of the old one, but merely an independent
expression of the same thought. But if, say, the business name is "David
Jones IT Services", and the old and new logos are both oak trees, then it
would be much harder to argue that the similarity is mere coincidence as
there's no obvious reason to use an oak tree as a logo for that name. In
which case, an action for design right infringement would have a much
stronger chance of success.

Mark

On 17/12/2023 20:58, Mark Goodge wrote:
> On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
>
> [snip]
>
>> My friend is of the belief that the old owner had abandoned the brand
>> name and therefore with the brand name registration would put him in a
>> strong position. Is this truly the case?
>
> He is in a strong position, yes. Providing he isn't in any way purporting to
> be the original trader, and isn't attempting to benefit from any goodwill
> built up by the original trader, then an action for passing off is very
> unlikely to succeed. So the most plausible course of action by the original
> trader would be to attempt to get the trade mark revoked. But that is an
> uphill task, particularly if he was notified at the time of the original
> regstration and didn't object. So I think your friend is justified in his
> belief that he has a strong case should it go to court.

The old owner wasn't notified at the time of registration. However the
trademark would have been published, but then who looks at the London
Gazette?

> The only exception to that may be the logo. You say that it's "similar", but
> don't say how much, and don't describe it at all. So a lot would depend
> there on whether there has been any attempt to copy or reuse the original
> logo, or whether the similarity is purely coincidental.
>
> To illustrate that, if, say, the business name is "Oak Tree IT Services",
> and both the old and new logos are of an oak tree, then it's likely to be
> persuasive to argue that using an image of an oak tree for a businesss named
> Oak Tree is simply a statement of the obvious, and that therefore the new
> logo is not a copy or derivative of the old one, but merely an independent
> expression of the same thought. But if, say, the business name is "David
> Jones IT Services", and the old and new logos are both oak trees, then it
> would be much harder to argue that the similarity is mere coincidence as
> there's no obvious reason to use an oak tree as a logo for that name. In
> which case, an action for design right infringement would have a much
> stronger chance of success.

Many thanks I will pass on your words. I think a comparison would be
between an oak tree and say a sycamore tree. Both being trees of course.
However the business has nothing to do with trees but I assume the
similarity was intentional.

On 17/12/2023 19:28, Fredxx wrote:
> What are the risks associated with a friend of mine who has taken on a
> trading name without the previous user's/owner's consent.
>
> The old owner has abandoned his product for some months with all media
> and websites taken offline.
>
> There was a email dialogue between new and old parties where the money
> asked by the 'old' owner was considered too much for his logo and other
> IP including the brand name.
>
> In the mean time, new owner registered a trademark with the brand name
> and has now been through the publishing and process by the IPO, received
> no opposition, so has been awarded to the new owner. This process took
> some months.
>
> As a result new company have began marketing, with a similar logo to the
> old branding on a new and different website and the 'old' owner is
> naturally upset and threatening legal action, plus threatening
> bad-mouthing the new owner's and his product.
>
> I've suggested he re-contacts the old owner with a view of salvaging
> good will, but without any admission he's done anything wrong.
>
> I had thought that once a trademark was registered, it is an uphill
> struggle to go against this registration?
>
> My friend is of the belief that the old owner had abandoned the brand
> name and therefore with the brand name registration would put him in a
> strong position. Is this truly the case?

No it isn't.

By 'taking on the trading name' of the previous owner, he is clearly
attempting to ride on the back of any goodwill the previous owner had in
that name, and that forms the basis of an action for passing-off, which
looks to have no defence.

Registration of a trade mark gives no rights to use that mark. It
merely gives a right to stop others using the same or a similar mark on
the same or similar goods.

The 'old owner' has not lost any rights he had, including 'IP including
the brand name', whatever you mean by that, simply by virtue of his
having ceased using the mark for a few months. If his 'IP' was a trade
mark registration, that would not be invalidated, and he could use that
against your friend.

Can you tell us please exactly why your friend has done what he has done
rather than choose an entirely different name?

On 17/12/2023 20:58, Mark Goodge wrote:
> On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
>
> [snip]
>
>> My friend is of the belief that the old owner had abandoned the brand
>> name and therefore with the brand name registration would put him in a
>> strong position. Is this truly the case?
>
> He is in a strong position, yes. Providing he isn't in any way purporting to
> be the original trader, and isn't attempting to benefit from any goodwill
> built up by the original trader,

Sole purpose of exercise by the sound of it. Why else?

> then an action for passing off is very
> unlikely to succeed. So the most plausible course of action by the original
> trader would be to attempt to get the trade mark revoked.

It's actually the other way round. If the old owner had a trade mark
registration it is the friend who needs to get that revoked, if he can.

> But that is an
> uphill task, particularly if he was notified at the time of the original
> regstration and didn't object. So I think your friend is justified in his
> belief that he has a strong case should it go to court.

It's not a get-out-of-jail free card. The friend's registration will
almost certainly be invalid on the grounds of prior use by the old owner.

> The only exception to that may be the logo. You say that it's "similar", but
> don't say how much, and don't describe it at all. So a lot would depend
> there on whether there has been any attempt to copy or reuse the original
> logo, or whether the similarity is purely coincidental.

It's pretty clear the two are deliberately similar. Again, it seems the
sole purpose of exercise to ride on the earlier reputation built up be
the old owner.

If any of the above assumptions are incorrect, I expect we'll be told.

On 17/12/2023 22:33, Fredxx wrote:
> On 17/12/2023 20:58, Mark Goodge wrote:
>> On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
>>
>> [snip]
>>
>>> My friend is of the belief that the old owner had abandoned the brand
>>> name and therefore with the brand name registration would put him in a
>>> strong position. Is this truly the case?
>>
>> He is in a strong position, yes. Providing he isn't in any way
>> purporting to
>> be the original trader, and isn't attempting to benefit from any goodwill
>> built up by the original trader, then an action for passing off is very
>> unlikely to succeed. So the most plausible course of action by the
>> original
>> trader would be to attempt to get the trade mark revoked. But that is an
>> uphill task, particularly if he was notified at the time of the original
>> regstration and didn't object. So I think your friend is justified in his
>> belief that he has a strong case should it go to court.
>
> The old owner wasn't notified at the time of registration. However the
> trademark would have been published, but then who looks at the London
> Gazette?...

Trade Mark and Patent Agents, who then notify the owner of possible
infringements. My Patent Agent even notified me of a possible
infringement in Germany and we came to an amicable agreement with the
company there, as, while we were both in the medical field, our areas of
operation and products were sufficiently different for there to be no
chance of confusion.

--
Colin Bignell

On 17/12/2023 20:58, Mark Goodge wrote:
> On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
>
> [snip]
>
>> My friend is of the belief that the old owner had abandoned the brand
>> name and therefore with the brand name registration would put him in a
>> strong position. Is this truly the case?
>
> He is in a strong position, yes. Providing he isn't in any way purporting to
> be the original trader, and isn't attempting to benefit from any goodwill
> built up by the original trader, then an action for passing off is very
> unlikely to succeed. So the most plausible course of action by the original
> trader would be to attempt to get the trade mark revoked. But that is an
> uphill task, particularly if he was notified at the time of the original
> regstration and didn't object. So I think your friend is justified in his
> belief that he has a strong case should it go to court.

Wouldn't the entire purpose of choosing a similar name and then
registering a similar logo appear to be passing off as the original
trader and riding on the coat tails of his previous good reputation in
the market? Goodwill has a market value and can be sold on.

> The only exception to that may be the logo. You say that it's "similar", but
> don't say how much, and don't describe it at all. So a lot would depend
> there on whether there has been any attempt to copy or reuse the original
> logo, or whether the similarity is purely coincidental.

It will get very interesting if the previous owner does have a trademark
registration for *his* logo. When Fisons bought the company I worked for
they (rather their expensive overpaid agents) didn't do very good due
diligence and they failed to buy our company's logo. We didn't volunteer
the information that it wasn't owned by the company but by a personal
friend of the founder whose family retains that IP even today. Fisons
were forced to grind the logo off every piece of work in progress on
completion of the sale. These were large high grade stainless steel
parts so it was not an easy job. Every CNC machining tape had to be
altered to remove it in addition.

The guy involved was not happy about the takeover and saw his
opportunity to make life very difficult for the hapless buyer. The old
logo still exists today attached to a company making very similar parts!

> To illustrate that, if, say, the business name is "Oak Tree IT Services",
> and both the old and new logos are of an oak tree, then it's likely to be
> persuasive to argue that using an image of an oak tree for a businesss named
> Oak Tree is simply a statement of the obvious, and that therefore the new
> logo is not a copy or derivative of the old one, but merely an independent
> expression of the same thought. But if, say, the business name is "David
> Jones IT Services", and the old and new logos are both oak trees, then it
> would be much harder to argue that the similarity is mere coincidence as
> there's no obvious reason to use an oak tree as a logo for that name. In
> which case, an action for design right infringement would have a much
> stronger chance of success.

I am more inclined than you to view someone setting up a company with a
similar logo and name to be indulging in passing off that you are.
Whether it is worth the original business owner enforcing his rights is
another matter. It may not be realistic to pursue such a claim.

--
Martin Brown

On 18/12/2023 10:34, Colin Bignell wrote:
> On 17/12/2023 22:33, Fredxx wrote:
>> On 17/12/2023 20:58, Mark Goodge wrote:
>>> On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
>>>
>>> [snip]
>>>
>>>> My friend is of the belief that the old owner had abandoned the brand
>>>> name and therefore with the brand name registration would put him in a
>>>> strong position. Is this truly the case?
>>>
>>> He is in a strong position, yes. Providing he isn't in any way
>>> purporting to
>>> be the original trader, and isn't attempting to benefit from any
>>> goodwill
>>> built up by the original trader, then an action for passing off is very
>>> unlikely to succeed. So the most plausible course of action by the
>>> original
>>> trader would be to attempt to get the trade mark revoked. But that is an
>>> uphill task, particularly if he was notified at the time of the original
>>> regstration and didn't object. So I think your friend is justified in
>>> his
>>> belief that he has a strong case should it go to court.
>>
>> The old owner wasn't notified at the time of registration. However the
>> trademark would have been published, but then who looks at the London
>> Gazette?...
>
> Trade Mark and Patent Agents, who then notify the owner of possible
> infringements. My Patent Agent even notified me of a possible
> infringement in Germany and we came to an amicable agreement with the
> company there, as, while we were both in the medical field, our areas of
> operation and products were sufficiently different for there to be no
> chance of confusion.

I'm sure agents and the like would run their lists against the London
Gazette once a month or so. But if there was no agent and just a private
individual who lost interest in the trademark didn't keep a check, is
there a way he can assign the registered name to himself post registration?

On 17/12/2023 23:08, Norman Wells wrote:
> On 17/12/2023 20:58, Mark Goodge wrote:
>> On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
>>
>> [snip]
>>
>>> My friend is of the belief that the old owner had abandoned the brand
>>> name and therefore with the brand name registration would put him in a
>>> strong position. Is this truly the case?
>>
>> He is in a strong position, yes. Providing he isn't in any way
>> purporting to
>> be the original trader, and isn't attempting to benefit from any goodwill
>> built up by the original trader,
>
> Sole purpose of exercise by the sound of it.  Why else?

Maybe, the old owner stated to his customers and media he was ceasing
trading using this name. There was very little goodwill and pissed a lot
of people off.

>> then an action for passing off is very
>> unlikely to succeed. So the most plausible course of action by the
>> original
>> trader would be to attempt to get the trade mark revoked.
>
> It's actually the other way round.  If the old owner had a trade mark
> registration it is the friend who needs to get that revoked, if he can.

He didn't. Sorry if I didn't make that clear

>> But that is an
>> uphill task, particularly if he was notified at the time of the original
>> regstration and didn't object. So I think your friend is justified in his
>> belief that he has a strong case should it go to court.
>
> It's not a get-out-of-jail free card.  The friend's registration will
> almost certainly be invalid on the grounds of prior use by the old owner.

Maybe, but he never objected to the registration, nor had the name
registered and had told the world that he had ceased trading using this
name.

>> The only exception to that may be the logo. You say that it's
>> "similar", but
>> don't say how much, and don't describe it at all. So a lot would depend
>> there on whether there has been any attempt to copy or reuse the original
>> logo, or whether the similarity is purely coincidental.
>
> It's pretty clear the two are deliberately similar.  Again, it seems the
> sole purpose of exercise to ride on the earlier reputation built up be
> the old owner.

Quite, but case law would be more useful otherwise the consequences are
entirely unknown.

> If any of the above assumptions are incorrect, I expect we'll be told.

Of course.

On Sun, 17 Dec 2023 23:08:47 +0000, Norman Wells <hex@unseen.ac.am> wrote:

>On 17/12/2023 20:58, Mark Goodge wrote:
>> On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
>>
>> [snip]
>>
>>> My friend is of the belief that the old owner had abandoned the brand
>>> name and therefore with the brand name registration would put him in a
>>> strong position. Is this truly the case?
>>
>> He is in a strong position, yes. Providing he isn't in any way purporting to
>> be the original trader, and isn't attempting to benefit from any goodwill
>> built up by the original trader,
>
>Sole purpose of exercise by the sound of it. Why else?

Maybe because it's a nice name. Maybe it happens to reflect the trader's own
name, or the location in which the trader operates.

>> then an action for passing off is very
>> unlikely to succeed. So the most plausible course of action by the original
>> trader would be to attempt to get the trade mark revoked.
>
>It's actually the other way round. If the old owner had a trade mark
>registration it is the friend who needs to get that revoked, if he can.

If you were to actually read the OP's post, rather than merely my response
to it, you would see that the new trader has already obtained a trade mark
for the name. So either there was no trade mark for it at all previously, or
there was but it had lapsed. And, given that the new trader now owns the
mark, it's up to the old one to pursue revocation if he wants to.

>> But that is an
>> uphill task, particularly if he was notified at the time of the original
>> regstration and didn't object. So I think your friend is justified in his
>> belief that he has a strong case should it go to court.
>
>It's not a get-out-of-jail free card. The friend's registration will
>almost certainly be invalid on the grounds of prior use by the old owner.

Prior use only applies to prior use which is still ongoing. If a prior use
has lapsed, then there is no barrier to registering a new trade mark for the
name. You might want to ask yourself, for example, why the company currently
trading as GWR managed to register that as a trade mark despite there having
been a very well known, but entirely unrelated, company which previously
held that mark for a large number of years.

>> The only exception to that may be the logo. You say that it's "similar", but
>> don't say how much, and don't describe it at all. So a lot would depend
>> there on whether there has been any attempt to copy or reuse the original
>> logo, or whether the similarity is purely coincidental.
>
>It's pretty clear the two are deliberately similar. Again, it seems the
>sole purpose of exercise to ride on the earlier reputation built up be
>the old owner.

I presume you've seen them, then, given that nobody could possibly be stupid
enough to make that claim without having done so. In which case, maybe you
could supply a link to them, so that we can see whether we agree with you.

Mark

On Mon, 18 Dec 2023 11:19:57 +0000, Martin Brown <'''newspam'''@nonad.co.uk>
wrote:

>On 17/12/2023 20:58, Mark Goodge wrote:
>> On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
>>
>> [snip]
>>
>>> My friend is of the belief that the old owner had abandoned the brand
>>> name and therefore with the brand name registration would put him in a
>>> strong position. Is this truly the case?
>>
>> He is in a strong position, yes. Providing he isn't in any way purporting to
>> be the original trader, and isn't attempting to benefit from any goodwill
>> built up by the original trader, then an action for passing off is very
>> unlikely to succeed. So the most plausible course of action by the original
>> trader would be to attempt to get the trade mark revoked. But that is an
>> uphill task, particularly if he was notified at the time of the original
>> regstration and didn't object. So I think your friend is justified in his
>> belief that he has a strong case should it go to court.
>
>Wouldn't the entire purpose of choosing a similar name and then
>registering a similar logo appear to be passing off as the original
>trader and riding on the coat tails of his previous good reputation in
>the market? Goodwill has a market value and can be sold on.

It does depend a lot on the nature of the name. Quite a lot of trading names
are the personal names of the owner. If elderly Mr John Smith has now
retired and his business, Smith Trading, is now defunct it's not
unreasonable for young, but unrelated, Mr David Smith to want to be able to
advertise his own new business as Smith Trading.

Another example would be names linked to places. If Little Dribblepatch
Plumbing Services closes down, another plumber based in Little Dribblepatch
might well want to use the same name in order to boost their chances of
appearing in a web search for plumbers in Little Dribblepatch. That's an
entirely valid desire, just as taxi firms once used to vie to be the first
in alphabetical order so that they would be at the start of the listings in
Yellow Pages. Practically every town has an A1 Taxis, and if one of them
ever closes down then another will take its place.

That's precisely why both trade marks and company registrations can lapse
and are open to be reused. Otherwise, the number of available business names
would rapidly dry up. I've benefitted from that myself; my limited company
name was previously registered to someone else but they let it be struck off
and I re-registered it.

>> To illustrate that, if, say, the business name is "Oak Tree IT Services",
>> and both the old and new logos are of an oak tree, then it's likely to be
>> persuasive to argue that using an image of an oak tree for a businesss named
>> Oak Tree is simply a statement of the obvious, and that therefore the new
>> logo is not a copy or derivative of the old one, but merely an independent
>> expression of the same thought. But if, say, the business name is "David
>> Jones IT Services", and the old and new logos are both oak trees, then it
>> would be much harder to argue that the similarity is mere coincidence as
>> there's no obvious reason to use an oak tree as a logo for that name. In
>> which case, an action for design right infringement would have a much
>> stronger chance of success.
>
>I am more inclined than you to view someone setting up a company with a
>similar logo and name to be indulging in passing off that you are.
>Whether it is worth the original business owner enforcing his rights is
>another matter. It may not be realistic to pursue such a claim.

Passing off requires more than just similarity, or even deliberate copying
of the name. There has to be a real probability that people, on seeing the
name, will actually believe it to be a service or product offered by the
original user of the name, and that that confusion is potentially harmful to
the original user. But if it can be shown that the original user is no
longer trading, then the reuse of the name cannot be causing them any harm.
Passing off, by definition, can only be carried out by a trader's
competitor. But an entity which is no longer trading has no competitors, and
therefore cannot be the victim of passing off.

Mark

On 18/12/2023 14:18, Fredxx wrote:
> On 18/12/2023 10:34, Colin Bignell wrote:
.....
>> Trade Mark and Patent Agents, who then notify the owner of possible
>> infringements. My Patent Agent even notified me of a possible
>> infringement in Germany and we came to an amicable agreement with the
>> company there, as, while we were both in the medical field, our areas
>> of operation and products were sufficiently different for there to be
>> no chance of confusion.
>
> I'm sure agents and the like would run their lists against the London
> Gazette once a month or so.

When I had a job that required me to check it, I had to read it daily,
Monday to Friday. I would expect others with a need to know what is in
it to do the same, although there may be robots or AI to do it these days.

> But if there was no agent and just a private
> individual who lost interest in the trademark didn't keep a check, is
> there a way he can assign the registered name to himself post registration?

I did transfer a Trade Mark from a company I had bought to the one that
bought it, so they can be transferred. However, I don't know the
mechanism as I simply asked my agent to do it.

--
Colin Bignell

On 18/12/2023 14:10, Fredxx wrote:
> On 17/12/2023 23:08, Norman Wells wrote:
>> On 17/12/2023 20:58, Mark Goodge wrote:
>>> On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
>>>
>>>> My friend is of the belief that the old owner had abandoned the brand
>>>> name and therefore with the brand name registration would put him in a
>>>> strong position. Is this truly the case?
>>>
>>> He is in a strong position, yes. Providing he isn't in any way purporting
>>> to be the original trader, and isn't attempting to benefit from any
>>> goodwill built up by the original trader,
>>
>> Sole purpose of exercise by the sound of it.  Why else?
>
> Maybe, the old owner stated to his customers and media he was ceasing
> trading using this name.

Under the law, that's irrelevant. He still has rights.

> There was very little goodwill and pissed a lot of people off.

Then why is he trying to ride on the back of such a reputation by
imitating him, as he clearly is? It just doesn't make sense.

>>> then an action for passing off is very
>>> unlikely to succeed. So the most plausible course of action by the
>>> original trader would be to attempt to get the trade mark revoked.
>>
>> It's actually the other way round.  If the old owner had a trade mark
>> registration it is the friend who needs to get that revoked, if he can.
>
> He didn't. Sorry if I didn't make that clear

It seems, though, that he had a trade mark that he used and a logo, both
of which are now used by your friend either in identical or very similar
form. That is exceptionally strong evidence that he is trying to take
whatever goodwill there was in order to attract custom to himself by
what is in fact a deception. It is exactly the sort of case where
passing-off applies.

And passing-off does not require any earlier trade mark registration,
just use and any acquired reputation whether good or allegedly bad.

>>> But that is an
>>> uphill task, particularly if he was notified at the time of the original
>>> regstration and didn't object. So I think your friend is justified in
>>> his
>>> belief that he has a strong case should it go to court.
>>
>> It's not a get-out-of-jail free card.  The friend's registration will
>> almost certainly be invalid on the grounds of prior use by the old owner.
>
> Maybe, but he never objected to the registration, nor had the name
> registered

He didn't need to.

> and had told the world that he had ceased trading using this
> name.

Irrelevant.

>>> The only exception to that may be the logo. You say that it's
>>> "similar", but
>>> don't say how much, and don't describe it at all. So a lot would depend
>>> there on whether there has been any attempt to copy or reuse the
>>> original
>>> logo, or whether the similarity is purely coincidental.
>>
>> It's pretty clear the two are deliberately similar.  Again, it seems
>> the sole purpose of exercise to ride on the earlier reputation built
>> up be the old owner.
>
> Quite, but case law would be more useful otherwise the consequences are
> entirely unknown.

I suggest you look up the fundamental principles of passing-off, then
tell us why you think they don't apply.

On 18/12/2023 14:08, Mark Goodge wrote:
> On Mon, 18 Dec 2023 11:19:57 +0000, Martin Brown <'''newspam'''@nonad.co.uk>
> wrote:
>> On 17/12/2023 20:58, Mark Goodge wrote:
>>> On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
>>>
>>>> My friend is of the belief that the old owner had abandoned the brand
>>>> name and therefore with the brand name registration would put him in a
>>>> strong position. Is this truly the case?
>>>
>>> He is in a strong position, yes. Providing he isn't in any way purporting to
>>> be the original trader, and isn't attempting to benefit from any goodwill
>>> built up by the original trader, then an action for passing off is very
>>> unlikely to succeed. So the most plausible course of action by the original
>>> trader would be to attempt to get the trade mark revoked. But that is an
>>> uphill task, particularly if he was notified at the time of the original
>>> regstration and didn't object. So I think your friend is justified in his
>>> belief that he has a strong case should it go to court.
>>
>> Wouldn't the entire purpose of choosing a similar name and then
>> registering a similar logo appear to be passing off as the original
>> trader and riding on the coat tails of his previous good reputation in
>> the market? Goodwill has a market value and can be sold on.
>
> It does depend a lot on the nature of the name. Quite a lot of trading names
> are the personal names of the owner. If elderly Mr John Smith has now
> retired and his business, Smith Trading, is now defunct it's not
> unreasonable for young, but unrelated, Mr David Smith to want to be able to
> advertise his own new business as Smith Trading.

He may want to, but he may not legally be able to.

If his given names were William Harold it would still be passing-off and
trade mark infringement if he set up selling books under the name W H
Smith for example.

> Another example would be names linked to places. If Little Dribblepatch
> Plumbing Services closes down, another plumber based in Little Dribblepatch
> might well want to use the same name in order to boost their chances of
> appearing in a web search for plumbers in Little Dribblepatch.

Again, he may want to but may not legally be able to. It depends on
whether there will be confusion or deception as to who the provider of
the service is.

> That's an
> entirely valid desire, just as taxi firms once used to vie to be the first
> in alphabetical order so that they would be at the start of the listings in
> Yellow Pages. Practically every town has an A1 Taxis, and if one of them
> ever closes down then another will take its place.

It depends again on the likelihood of confusion or deception.

> That's precisely why both trade marks and company registrations can lapse
> and are open to be reused. Otherwise, the number of available business names
> would rapidly dry up.

No they wouldn't. There is *always* a way of distinguishing your
company name from any other.

Even if you are able to register a company name or a trade mark, it is
still your own responsibility to ensure that any use you make of them
does not infringe anyone else's rights.

> I've benefitted from that myself; my limited company
> name was previously registered to someone else but they let it be struck off
> and I re-registered it.

All the Companies Registry does is block the registration of two
absolutely identical company names. Registration of any name or trade
mark gives you no rights to use it.

>> I am more inclined than you to view someone setting up a company with a
>> similar logo and name to be indulging in passing off that you are.
>> Whether it is worth the original business owner enforcing his rights is
>> another matter. It may not be realistic to pursue such a claim.
>
> Passing off requires more than just similarity, or even deliberate copying
> of the name. There has to be a real probability that people, on seeing the
> name, will actually believe it to be a service or product offered by the
> original user of the name, and that that confusion is potentially harmful to
> the original user. But if it can be shown that the original user is no
> longer trading, then the reuse of the name cannot be causing them any harm.

Not so. Reputations last, and the possibility of passing-off
accordingly lasts too.

> Passing off, by definition, can only be carried out by a trader's
> competitor. But an entity which is no longer trading has no competitors, and
> therefore cannot be the victim of passing off.

Again, not so. The earlier trader may wish to resume trading, and is
perfectly entitled to do so.

On 18/12/2023 13:37, Mark Goodge wrote:
> On Sun, 17 Dec 2023 23:08:47 +0000, Norman Wells <hex@unseen.ac.am> wrote:
>> On 17/12/2023 20:58, Mark Goodge wrote:
>>> On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
>>>
>>>> My friend is of the belief that the old owner had abandoned the brand
>>>> name and therefore with the brand name registration would put him in a
>>>> strong position. Is this truly the case?
>>>
>>> He is in a strong position, yes. Providing he isn't in any way purporting to
>>> be the original trader, and isn't attempting to benefit from any goodwill
>>> built up by the original trader,
>>
>> Sole purpose of exercise by the sound of it. Why else?
>
> Maybe because it's a nice name. Maybe it happens to reflect the trader's own
> name, or the location in which the trader operates.

None of that gives him any right to take them as his own.

>>> then an action for passing off is very
>>> unlikely to succeed. So the most plausible course of action by the original
>>> trader would be to attempt to get the trade mark revoked.
>>
>> It's actually the other way round. If the old owner had a trade mark
>> registration it is the friend who needs to get that revoked, if he can.
>
> If you were to actually read the OP's post, rather than merely my response
> to it,

And if you were to actually read the thread, you'd see I did.

> you would see that the new trader has already obtained a trade mark
> for the name. So either there was no trade mark for it at all previously, or
> there was but it had lapsed.

No, not so. There is no examination of trade mark applications on
so-called relative grounds, ie potential conflict with other registrations.

Registration of a trade mark anyway gives no right to use it, contrary
to what you seem to believe.

> And, given that the new trader now owns the
> mark, it's up to the old one to pursue revocation if he wants to.

That's up to him. He doesn't lose any rights he has if he doesn't.

>>> But that is an
>>> uphill task, particularly if he was notified at the time of the original
>>> regstration and didn't object. So I think your friend is justified in his
>>> belief that he has a strong case should it go to court.
>>
>> It's not a get-out-of-jail free card. The friend's registration will
>> almost certainly be invalid on the grounds of prior use by the old owner.
>
> Prior use only applies to prior use which is still ongoing.

Sorry, no it doesn't.

> If a prior use
> has lapsed, then there is no barrier to registering a new trade mark for the
> name.

It still provides grounds for objection, and will render the later
registration invalid.

> You might want to ask yourself, for example, why the company currently
> trading as GWR managed to register that as a trade mark despite there having
> been a very well known, but entirely unrelated, company which previously
> held that mark for a large number of years.

Probably because there is no possibility of anyone being confused or
deceived. But I don't know because it's probably irrelevant.

>>> The only exception to that may be the logo. You say that it's "similar", but
>>> don't say how much, and don't describe it at all. So a lot would depend
>>> there on whether there has been any attempt to copy or reuse the original
>>> logo, or whether the similarity is purely coincidental.
>>
>> It's pretty clear the two are deliberately similar. Again, it seems the
>> sole purpose of exercise to ride on the earlier reputation built up be
>> the old owner.
>
> I presume you've seen them, then, given that nobody could possibly be stupid
> enough to make that claim without having done so. In which case, maybe you
> could supply a link to them, so that we can see whether we agree with you.

We've been told they are 'similar'. We've been told that the friend has
adopted the brand name of the earlier user. It's pretty naive to think
the logos are not also so similar that they are not deliberately
designed to deceive.

On 18/12/2023 17:02, Norman Wells wrote:
> On 18/12/2023 14:10, Fredxx wrote:
>> On 17/12/2023 23:08, Norman Wells wrote:
>>> On 17/12/2023 20:58, Mark Goodge wrote:
>>>> On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
>>>>
>>>>> My friend is of the belief that the old owner had abandoned the brand
>>>>> name and therefore with the brand name registration would put him in a
>>>>> strong position. Is this truly the case?
>>>>
>>>> He is in a strong position, yes. Providing he isn't in any way
>>>> purporting
>>>> to be the original trader, and isn't attempting to benefit from any
>>>> goodwill built up by the original trader,
>>>
>>> Sole purpose of exercise by the sound of it.  Why else?
>>
>> Maybe, the old owner stated to his customers and media he was ceasing
>> trading using this name.
>
> Under the law, that's irrelevant.  He still has rights.
>
>> There was very little goodwill and pissed a lot of people off.
>
> Then why is he trying to ride on the back of such a reputation by
> imitating him, as he clearly is?  It just doesn't make sense.
>
>>>> then an action for passing off is very
>>>> unlikely to succeed. So the most plausible course of action by the
>>>> original trader would be to attempt to get the trade mark revoked.
>>>
>>> It's actually the other way round.  If the old owner had a trade mark
>>> registration it is the friend who needs to get that revoked, if he can.
>>
>> He didn't. Sorry if I didn't make that clear
>
> It seems, though, that he had a trade mark that he used and a logo, both
> of which are now used by your friend either in identical or very similar
> form.  That is exceptionally strong evidence that he is trying to take
> whatever goodwill there was in order to attract custom to himself by
> what is in fact a deception.  It is exactly the sort of case where
> passing-off applies.
>
> And passing-off does not require any earlier trade mark registration,
> just use and any acquired reputation whether good or allegedly bad.
>
>>>> But that is an
>>>> uphill task, particularly if he was notified at the time of the
>>>> original
>>>> regstration and didn't object. So I think your friend is justified
>>>> in his
>>>> belief that he has a strong case should it go to court.
>>>
>>> It's not a get-out-of-jail free card.  The friend's registration will
>>> almost certainly be invalid on the grounds of prior use by the old
>>> owner.
>>
>> Maybe, but he never objected to the registration, nor had the name
>> registered
>
> He didn't need to.
>
>> and had told the world that he had ceased trading using this name.
>
> Irrelevant.
>
>>>> The only exception to that may be the logo. You say that it's
>>>> "similar", but
>>>> don't say how much, and don't describe it at all. So a lot would depend
>>>> there on whether there has been any attempt to copy or reuse the
>>>> original
>>>> logo, or whether the similarity is purely coincidental.
>>>
>>> It's pretty clear the two are deliberately similar.  Again, it seems
>>> the sole purpose of exercise to ride on the earlier reputation built
>>> up be the old owner.
>>
>> Quite, but case law would be more useful otherwise the consequences
>> are entirely unknown.
>
> I suggest you look up the fundamental principles of passing-off, then
> tell us why you think they don't apply.

There are a number of websites that quote the holy trinity of passing
off, namely:

1 Goodwill: Established goodwill or reputation in the UK (i.e., a
customer following) in the relevant marketplace in the mind of the
purchasing public and are known by some distinguishing feature. For
example, this could be via a particular shape, colour or style of
packing or “get up” used. The infringing act must have taken place
within the geographical limits of the claimant’s goodwill. This means
that the infringer must operate within the same trade market or
geographical location as the claimant.

2 Misrepresentation: The claimant must demonstrate the defendant has
misrepresented (intentionally or unintentionally) their products or
services as being related to their business, which leads to or is likely
to deceive customers into thinking that the goods/ services offered by
the defendant are those of the claimant.

3 Damage: The misrepresentation causes or is likely to cause the
claimant damage (i.e. financial loss) as a result.

Where for a successful case of passing off all 3 must be shown by the
claimant.

1) He sent emails to his suppliers that he was ceasing trading. Goodwill
is unlikely to survive if the existing goodwill has been killed off.
2) This fails because of (1) There can be no deception if the name is
associated with a new entity.
3) A ceased trading company can suffer no loss.

I'm sure YMMV but I'm looking for cases, not unsubstantiated opinion,
that will sway me into believing one way or another.

On Mon, 18 Dec 2023 17:44:20 +0000, Norman Wells <hex@unseen.ac.am> wrote:

>On 18/12/2023 13:37, Mark Goodge wrote:
>> On Sun, 17 Dec 2023 23:08:47 +0000, Norman Wells <hex@unseen.ac.am> wrote:
>>> On 17/12/2023 20:58, Mark Goodge wrote:
>>>> On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
>>>>
>>>>> My friend is of the belief that the old owner had abandoned the brand
>>>>> name and therefore with the brand name registration would put him in a
>>>>> strong position. Is this truly the case?
>>>>
>>>> He is in a strong position, yes. Providing he isn't in any way purporting to
>>>> be the original trader, and isn't attempting to benefit from any goodwill
>>>> built up by the original trader,
>>>
>>> Sole purpose of exercise by the sound of it. Why else?
>>
>> Maybe because it's a nice name. Maybe it happens to reflect the trader's own
>> name, or the location in which the trader operates.
>
>None of that gives him any right to take them as his own.

It does, if they're not *currently* being used by anyone else.

>>>> then an action for passing off is very
>>>> unlikely to succeed. So the most plausible course of action by the original
>>>> trader would be to attempt to get the trade mark revoked.
>>>
>>> It's actually the other way round. If the old owner had a trade mark
>>> registration it is the friend who needs to get that revoked, if he can.
>>
>> If you were to actually read the OP's post, rather than merely my response
>> to it,
>
>And if you were to actually read the thread, you'd see I did.

Then why did you respond to me with a statement that you knew at the time to
be false?

>>>
>>> It's pretty clear the two are deliberately similar. Again, it seems the
>>> sole purpose of exercise to ride on the earlier reputation built up be
>>> the old owner.
>>
>> I presume you've seen them, then, given that nobody could possibly be stupid
>> enough to make that claim without having done so. In which case, maybe you
>> could supply a link to them, so that we can see whether we agree with you.
>
>We've been told they are 'similar'. We've been told that the friend has
>adopted the brand name of the earlier user. It's pretty naive to think
>the logos are not also so similar that they are not deliberately
>designed to deceive.

OK, so you are making a statement based solely on the internal workings of
your own imagination. I'm glad you're at least willing to admit that.

Mark

On 18/12/2023 18:42, Fredxx wrote:
> On 18/12/2023 17:02, Norman Wells wrote:
>> On 18/12/2023 14:10, Fredxx wrote:
>>> On 17/12/2023 23:08, Norman Wells wrote:
>>>> On 17/12/2023 20:58, Mark Goodge wrote:
>>>>> On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid>
>>>>> wrote:
>>>>>
>>>>>> My friend is of the belief that the old owner had abandoned the brand
>>>>>> name and therefore with the brand name registration would put him
>>>>>> in a
>>>>>> strong position. Is this truly the case?
>>>>>
>>>>> He is in a strong position, yes. Providing he isn't in any way
>>>>> purporting
>>>>> to be the original trader, and isn't attempting to benefit from any
>>>>> goodwill built up by the original trader,
>>>>
>>>> Sole purpose of exercise by the sound of it.  Why else?
>>>
>>> Maybe, the old owner stated to his customers and media he was ceasing
>>> trading using this name.
>>
>> Under the law, that's irrelevant.  He still has rights.
>>
>>> There was very little goodwill and pissed a lot of people off.
>>
>> Then why is he trying to ride on the back of such a reputation by
>> imitating him, as he clearly is?  It just doesn't make sense.
>>
>>>>> then an action for passing off is very
>>>>> unlikely to succeed. So the most plausible course of action by the
>>>>> original trader would be to attempt to get the trade mark revoked.
>>>>
>>>> It's actually the other way round.  If the old owner had a trade
>>>> mark registration it is the friend who needs to get that revoked, if
>>>> he can.
>>>
>>> He didn't. Sorry if I didn't make that clear
>>
>> It seems, though, that he had a trade mark that he used and a logo,
>> both of which are now used by your friend either in identical or very
>> similar form.  That is exceptionally strong evidence that he is trying
>> to take whatever goodwill there was in order to attract custom to
>> himself by what is in fact a deception.  It is exactly the sort of
>> case where passing-off applies.
>>
>> And passing-off does not require any earlier trade mark registration,
>> just use and any acquired reputation whether good or allegedly bad.
>>
>>>>> But that is an
>>>>> uphill task, particularly if he was notified at the time of the
>>>>> original
>>>>> regstration and didn't object. So I think your friend is justified
>>>>> in his
>>>>> belief that he has a strong case should it go to court.
>>>>
>>>> It's not a get-out-of-jail free card.  The friend's registration
>>>> will almost certainly be invalid on the grounds of prior use by the
>>>> old owner.
>>>
>>> Maybe, but he never objected to the registration, nor had the name
>>> registered
>>
>> He didn't need to.
>>
>>> and had told the world that he had ceased trading using this name.
>>
>> Irrelevant.
>>
>>>>> The only exception to that may be the logo. You say that it's
>>>>> "similar", but
>>>>> don't say how much, and don't describe it at all. So a lot would
>>>>> depend
>>>>> there on whether there has been any attempt to copy or reuse the
>>>>> original
>>>>> logo, or whether the similarity is purely coincidental.
>>>>
>>>> It's pretty clear the two are deliberately similar.  Again, it seems
>>>> the sole purpose of exercise to ride on the earlier reputation built
>>>> up be the old owner.
>>>
>>> Quite, but case law would be more useful otherwise the consequences
>>> are entirely unknown.
>>
>> I suggest you look up the fundamental principles of passing-off, then
>> tell us why you think they don't apply.
>
> There are a number of websites that quote the holy trinity of passing
> off, namely:
>
> 1 Goodwill: Established goodwill or reputation in the UK (i.e., a
> customer following) in the relevant marketplace in the mind of the
> purchasing public and are known by some distinguishing feature. For
> example, this could be via a particular shape, colour or style of
> packing or “get up” used. The infringing act must have taken place
> within the geographical limits of the claimant’s goodwill. This means
> that the infringer must operate within the same trade market or
> geographical location as the claimant.
>
> 2 Misrepresentation: The claimant must demonstrate the defendant has
> misrepresented (intentionally or unintentionally) their products or
> services as being related to their business, which leads to or is likely
> to deceive customers into thinking that the goods/ services offered by
> the defendant are those of the claimant.
>
> 3 Damage: The misrepresentation causes or is likely to cause the
> claimant damage (i.e. financial loss) as a result.
>
> Where for a successful case of passing off all 3 must be shown by the
> claimant.
>
> 1) He sent emails to his suppliers that he was ceasing trading. Goodwill
> is unlikely to survive if the existing goodwill has been killed off.

The goodwill that existed continues, and the creator of that is entitled
to benefit from it, not your friend.

You still haven't told us why your friend decided to adopt the same
brand name and a similar logo if not to benefit from that goodwill.
Perhaps you'd say.

> 2) This fails because of (1) There can be no deception if the name is
> associated with a new entity.

Of course there can. The name is associated in the minds of customers
and the buying public with the original entity selling the goods, npt
your friend. And that is what matters. The reason your friend wants to
use the same brand name and logo, it is absolutely clear to me, is to
divert the original trader's sales to himself by riding on that
goodwill. If you disagree, tell us why he did not choose an entirely
different name and logo.

> 3) A ceased trading company can suffer no loss.

While there is existing goodwill, which there is, it is goodwill
belonging to the original trader, not your friend. He is perfectly
entitled to resume trading if he wishes, and to benefit exclusively from
the goodwill he has built up.

> I'm sure YMMV but I'm looking for cases, not unsubstantiated opinion,
> that will sway me into believing one way or another.

I don't care what you believe. I just give you the facts.

I can assure you, the cases, if and when you find them, will support and
be in full agreement with what I've said.

On 18/12/2023 21:40, Norman Wells wrote:
> On 18/12/2023 18:42, Fredxx wrote:
>> On 18/12/2023 17:02, Norman Wells wrote:
>>> On 18/12/2023 14:10, Fredxx wrote:
>>>> On 17/12/2023 23:08, Norman Wells wrote:
>>>>> On 17/12/2023 20:58, Mark Goodge wrote:
>>>>>> On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid>
>>>>>> wrote:
>>>>>>
>>>>>>> My friend is of the belief that the old owner had abandoned the
>>>>>>> brand
>>>>>>> name and therefore with the brand name registration would put him
>>>>>>> in a
>>>>>>> strong position. Is this truly the case?
>>>>>>
>>>>>> He is in a strong position, yes. Providing he isn't in any way
>>>>>> purporting
>>>>>> to be the original trader, and isn't attempting to benefit from
>>>>>> any goodwill built up by the original trader,
>>>>>
>>>>> Sole purpose of exercise by the sound of it.  Why else?
>>>>
>>>> Maybe, the old owner stated to his customers and media he was
>>>> ceasing trading using this name.
>>>
>>> Under the law, that's irrelevant.  He still has rights.
>>>
>>>> There was very little goodwill and pissed a lot of people off.
>>>
>>> Then why is he trying to ride on the back of such a reputation by
>>> imitating him, as he clearly is?  It just doesn't make sense.
>>>
>>>>>> then an action for passing off is very
>>>>>> unlikely to succeed. So the most plausible course of action by the
>>>>>> original trader would be to attempt to get the trade mark revoked.
>>>>>
>>>>> It's actually the other way round.  If the old owner had a trade
>>>>> mark registration it is the friend who needs to get that revoked,
>>>>> if he can.
>>>>
>>>> He didn't. Sorry if I didn't make that clear
>>>
>>> It seems, though, that he had a trade mark that he used and a logo,
>>> both of which are now used by your friend either in identical or very
>>> similar form.  That is exceptionally strong evidence that he is
>>> trying to take whatever goodwill there was in order to attract custom
>>> to himself by what is in fact a deception.  It is exactly the sort of
>>> case where passing-off applies.
>>>
>>> And passing-off does not require any earlier trade mark registration,
>>> just use and any acquired reputation whether good or allegedly bad.
>>>
>>>>>> But that is an
>>>>>> uphill task, particularly if he was notified at the time of the
>>>>>> original
>>>>>> regstration and didn't object. So I think your friend is justified
>>>>>> in his
>>>>>> belief that he has a strong case should it go to court.
>>>>>
>>>>> It's not a get-out-of-jail free card.  The friend's registration
>>>>> will almost certainly be invalid on the grounds of prior use by the
>>>>> old owner.
>>>>
>>>> Maybe, but he never objected to the registration, nor had the name
>>>> registered
>>>
>>> He didn't need to.
>>>
>>>> and had told the world that he had ceased trading using this name.
>>>
>>> Irrelevant.
>>>
>>>>>> The only exception to that may be the logo. You say that it's
>>>>>> "similar", but
>>>>>> don't say how much, and don't describe it at all. So a lot would
>>>>>> depend
>>>>>> there on whether there has been any attempt to copy or reuse the
>>>>>> original
>>>>>> logo, or whether the similarity is purely coincidental.
>>>>>
>>>>> It's pretty clear the two are deliberately similar.  Again, it
>>>>> seems the sole purpose of exercise to ride on the earlier
>>>>> reputation built up be the old owner.
>>>>
>>>> Quite, but case law would be more useful otherwise the consequences
>>>> are entirely unknown.
>>>
>>> I suggest you look up the fundamental principles of passing-off, then
>>> tell us why you think they don't apply.
>>
>> There are a number of websites that quote the holy trinity of passing
>> off, namely:
>>
>> 1 Goodwill: Established goodwill or reputation in the UK (i.e., a
>> customer following) in the relevant marketplace in the mind of the
>> purchasing public and are known by some distinguishing feature. For
>> example, this could be via a particular shape, colour or style of
>> packing or “get up” used. The infringing act must have taken place
>> within the geographical limits of the claimant’s goodwill. This means
>> that the infringer must operate within the same trade market or
>> geographical location as the claimant.
>>
>> 2 Misrepresentation: The claimant must demonstrate the defendant has
>> misrepresented (intentionally or unintentionally) their products or
>> services as being related to their business, which leads to or is
>> likely to deceive customers into thinking that the goods/ services
>> offered by the defendant are those of the claimant.
>>
>> 3 Damage: The misrepresentation causes or is likely to cause the
>> claimant damage (i.e. financial loss) as a result.
>>
>> Where for a successful case of passing off all 3 must be shown by the
>> claimant.
>>
>> 1) He sent emails to his suppliers that he was ceasing trading.
>> Goodwill is unlikely to survive if the existing goodwill has been
>> killed off.
>
> The goodwill that existed continues, and the creator of that is entitled
> to benefit from it, not your friend.
>
> You still haven't told us why your friend decided to adopt the same
> brand name and a similar logo if not to benefit from that goodwill.
> Perhaps you'd say.
>
>> 2) This fails because of (1) There can be no deception if the name is
>> associated with a new entity.
>
> Of course there can.  The name is associated in the minds of customers
> and the buying public with the original entity selling the goods, npt
> your friend.  And that is what matters.  The reason your friend wants to
> use the same brand name and logo, it is absolutely clear to me, is to
> divert the original trader's sales to himself by riding on that
> goodwill.  If you disagree, tell us why he did not choose an entirely
> different name and logo.
>
>> 3) A ceased trading company can suffer no loss.
>
> While there is existing goodwill, which there is, it is goodwill
> belonging to the original trader, not your friend.  He is perfectly
> entitled to resume trading if he wishes, and to benefit exclusively from
> the goodwill he has built up.
>
>> I'm sure YMMV but I'm looking for cases, not unsubstantiated opinion,
>> that will sway me into believing one way or another.
>
> I don't care what you believe.  I just give you the facts.

Facts as you see them do not a legal argument make.

> I can assure you, the cases, if and when you find them, will support and
> be in full agreement with what I've said.

No, they're not, hence the holy trinity of passing off. Now if you can
find a case that gives weight to your belief I'm all ears.

On 18/12/2023 21:10, Mark Goodge wrote:
> On Mon, 18 Dec 2023 17:44:20 +0000, Norman Wells <hex@unseen.ac.am> wrote:
>
>> On 18/12/2023 13:37, Mark Goodge wrote:
>>> On Sun, 17 Dec 2023 23:08:47 +0000, Norman Wells <hex@unseen.ac.am> wrote:
>>>> On 17/12/2023 20:58, Mark Goodge wrote:
>>>>> On Sun, 17 Dec 2023 19:28:17 +0000, Fredxx <fredxx@spam.invalid> wrote:
>>>>>
>>>>>> My friend is of the belief that the old owner had abandoned the brand
>>>>>> name and therefore with the brand name registration would put him in a
>>>>>> strong position. Is this truly the case?
>>>>>
>>>>> He is in a strong position, yes. Providing he isn't in any way purporting to
>>>>> be the original trader, and isn't attempting to benefit from any goodwill
>>>>> built up by the original trader,
>>>>
>>>> Sole purpose of exercise by the sound of it. Why else?
>>>
>>> Maybe because it's a nice name. Maybe it happens to reflect the trader's own
>>> name, or the location in which the trader operates.
>>
>> None of that gives him any right to take them as his own.
>
> It does, if they're not *currently* being used by anyone else.

Got any support for that contention?

>>>>> then an action for passing off is very
>>>>> unlikely to succeed. So the most plausible course of action by the original
>>>>> trader would be to attempt to get the trade mark revoked.
>>>>
>>>> It's actually the other way round. If the old owner had a trade mark
>>>> registration it is the friend who needs to get that revoked, if he can.
>>>
>>> If you were to actually read the OP's post, rather than merely my response
>>> to it,
>>
>> And if you were to actually read the thread, you'd see I did.
>
> Then why did you respond to me with a statement that you knew at the time to
> be false?

I have no idea what you're referring to, nor why you think it was false.

>>>> It's pretty clear the two are deliberately similar. Again, it seems the
>>>> sole purpose of exercise to ride on the earlier reputation built up be
>>>> the old owner.
>>>
>>> I presume you've seen them, then, given that nobody could possibly be stupid
>>> enough to make that claim without having done so. In which case, maybe you
>>> could supply a link to them, so that we can see whether we agree with you.
>>
>> We've been told they are 'similar'. We've been told that the friend has
>> adopted the brand name of the earlier user. It's pretty naive to think
>> the logos are not also so similar that they are not deliberately
>> designed to deceive.
>
> OK, so you are making a statement based solely on the internal workings of
> your own imagination. I'm glad you're at least willing to admit that.

It's solid deduction from what we've been told actually.

On 18/12/2023 23:02, Fredxx wrote:
> On 18/12/2023 21:40, Norman Wells wrote:

>>> I'm sure YMMV but I'm looking for cases, not unsubstantiated opinion,
>>> that will sway me into believing one way or another.
>>
>> I don't care what you believe.  I just give you the facts.
>
> Facts as you see them do not a legal argument make.

The facts speak for themselves.

>> I can assure you, the cases, if and when you find them, will support
>> and be in full agreement with what I've said.
>
> No, they're not, hence the holy trinity of passing off. Now if you can
> find a case that gives weight to your belief I'm all ears.

I am not going to go through the entire history of passing-off, which,
if it amuses you, you can do for yourself.

Case law, however, distils down to what legal practitioners now say it
is. For example:

"A claim in passing off is based on the premise that no one has the
right to represent their goods or services as being those of somebody
else. A common scenario is where the defendant has copied the claimant’s
packaging, get up or brand in order to misrepresent the source of its
goods or services."

https://www.lexisnexis.co.uk/legal/guidance/introduction-to-passing-off

As that reads directly onto your friend's situation and you cannot
contradict it, that settles it.

On 18/12/2023 14:08, Mark Goodge wrote:
> On Mon, 18 Dec 2023 11:19:57 +0000, Martin Brown <'''newspam'''@nonad.co.uk>
> wrote:
>
>> On 17/12/2023 20:58, Mark Goodge wrote:

>>> To illustrate that, if, say, the business name is "Oak Tree IT Services",
>>> and both the old and new logos are of an oak tree, then it's likely to be
>>> persuasive to argue that using an image of an oak tree for a businesss named
>>> Oak Tree is simply a statement of the obvious, and that therefore the new
>>> logo is not a copy or derivative of the old one, but merely an independent
>>> expression of the same thought. But if, say, the business name is "David
>>> Jones IT Services", and the old and new logos are both oak trees, then it
>>> would be much harder to argue that the similarity is mere coincidence as
>>> there's no obvious reason to use an oak tree as a logo for that name. In
>>> which case, an action for design right infringement would have a much
>>> stronger chance of success.
>>
>> I am more inclined than you to view someone setting up a company with a
>> similar logo and name to be indulging in passing off that you are.
>> Whether it is worth the original business owner enforcing his rights is
>> another matter. It may not be realistic to pursue such a claim.
>
> Passing off requires more than just similarity, or even deliberate copying
> of the name. There has to be a real probability that people, on seeing the
> name, will actually believe it to be a service or product offered by the
> original user of the name, and that that confusion is potentially harmful to
> the original user. But if it can be shown that the original user is no
> longer trading, then the reuse of the name cannot be causing them any harm.
> Passing off, by definition, can only be carried out by a trader's
> competitor. But an entity which is no longer trading has no competitors, and
> therefore cannot be the victim of passing off.

Copyright law always seems much more complex in actual practice.

Witness the live example of the Tolkien estate vs US author & PolyChron
over "The Lord of the Kings" fan fiction book.

https://www.theguardian.com/books/2023/dec/18/copyright-claim-against-tolkien-estate-backfires-on-lord-of-the-rings-fanfiction-author

Or the handful of "The Hobbit" pubs that started getting persecuted when
the big budget films were launched...

https://channelx.world/2012/03/the-hobbit-pub-ordered-to-change-name-for-ip-infringement/

ISTR various frivolous ones like Microsoft issuing a cease and desist
notice to M&S over their Microsoft tights branding at one point.

--
Martin Brown

On 17/12/2023 19:28, Fredxx wrote:
> What are the risks associated with a friend of mine who has taken on a
> trading name without the previous user's/owner's consent.

Protracted and costly legal battles until one or both parties lose
either the will to continue fighting or the funds to do so.

How much money is your friend prepared to sink into the fight?

How much money does he believe "the old owner" is willing to lose?

Even the big guns with very deep pockets sometimes strike a deal rather
than continuing with lengthy legal actions as evidenced by the Colin /
Cuthbert the Caterpillar saga.

> The old owner has abandoned his product for some months with all media
> and websites taken offline.
>
> There was a email dialogue between new and old parties where the money
> asked by the 'old' owner was considered too much for his logo and other
> IP including the brand name.
>
> In the mean time, new owner registered a trademark with the brand name
> and has now been through the publishing and process by the IPO, received
> no opposition, so has been awarded to the new owner. This process took
> some months.
>
> As a result new company have began marketing, with a similar logo to the
> old branding on a new and different website and the 'old' owner is
> naturally upset and threatening legal action, plus threatening
> bad-mouthing the new owner's and his product.
>
> I've suggested he re-contacts the old owner with a view of salvaging
> good will, but without any admission he's done anything wrong.
>
> I had thought that once a trademark was registered, it is an uphill
> struggle to go against this registration?
>
> My friend is of the belief that the old owner had abandoned the brand
> name and therefore with the brand name registration would put him in a
> strong position. Is this truly the case?

I would suggest that "some months" is not sufficiently long enough to
prove abandonment, however...

This is a complex and specialist area of law. I would therefore suggest
it requires specialist advice on the specifics of this precise case and
comments here, regardless of how accurate or well-meaning they are,
could give the wrong impression to you / your friend which could be
incredibly costly in the long run.

Regards

S.P.

On Mon, 18 Dec 2023 22:35:18 +0000, Norman Wells <hex@unseen.ac.am> wrote:

>On 18/12/2023 21:10, Mark Goodge wrote:
>> It does, if they're not *currently* being used by anyone else.
>
>Got any support for that contention?

The simple fact that there are lots of current companies which have reused
the names of previous ones. I gave the example of GWR, but it's relatively
easy to find other business names at Companies House where a previous holder
of the name was dissolved and a new company with the same name has been
registered.

>>>> If you were to actually read the OP's post, rather than merely my response
>>>> to it,
>>>
>>> And if you were to actually read the thread, you'd see I did.
>>
>> Then why did you respond to me with a statement that you knew at the time to
>> be false?
>
>I have no idea what you're referring to, nor why you think it was false.

The OP said that

In the mean time, new owner registered a trademark with the brand name
and has now been through the publishing and process by the IPO, received
no opposition, so has been awarded to the new owner.

to which I commented, inter alia, that

So the most plausible course of action by the original trader would be to
attempt to get the trade mark revoked.

but, in response to me, you said

It's actually the other way round. If the old owner had a trade mark
registration it is the friend who needs to get that revoked, if he can.

Now, as you can clearly see from the OP's first post, the OP's friend
doesn't need to take any action at all to get the trade mark revoked, for
the simple reason that his application for it was granted and he now owns
it. So why did you say that he needs to get it revoked?

Mark

On Mon, 18 Dec 2023 23:02:07 +0000, Fredxx <fredxx@spam.invalid> wrote:

>On 18/12/2023 21:40, Norman Wells wrote:

>> I don't care what you believe.  I just give you the facts.
>
>Facts as you see them do not a legal argument make.
>
>> I can assure you, the cases, if and when you find them, will support and
>> be in full agreement with what I've said.
>
>No, they're not, hence the holy trinity of passing off. Now if you can
>find a case that gives weight to your belief I'm all ears.

If I was your friend, I'd be more worried about my legal position if Norman
said he was OK.

Mark