Own-it | Intellectual Property Know-How for Creative Businesses

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Somebody has copied my name: what should I do?

Published 04.04.11 at 10:35

If your name is used in connection with a business, you may have a remedy under the law of trade marks or "passing off".

To bring a claim for breach of trade mark, you would need to have registered the name as a registered trade mark. You should then be able to prevent anyone else using your name in respect of other goods or services without your consent, if you may suffer loss as a result of such use.

Potential remedies for unauthorised use of a registered trade mark include:

  •   Damages-This is compensation for breach using your registered trade mark
  •   Injunction-This orders the other party to stop using your registered trade mark
  •  Account of profits-under which you may recover any profits made by other party as a result of using your registered trade mark
  •  Ordering up delivery of the offending articles- which may enable any infringing products to be delivered to you.

Note, however, that the other party may have a defence, for example if the name is also his or her own name, or if they can show that your trade mark should not have been granted, or has not been used in relation to a business. Making threats in relation to a trademark can also lead to compensation being payable to the other party if the threats turn out not to be justified, so it is important to seek specific expert advice before embarking on this.

The other main possibility is under the law of "passing off". For this, you do not have to have a registered trademark, but you do have to show that:

  • you have established "goodwill" in your name in connection with a business,
  • the other party is guilty of misrepresentation by using your name, and
  • the goodwill in your business will or may be damaged by the other party's use of your name.

It is harder to prove passing off than to make a claim for breach of a registered trademark - that is the advantage of registration - and again you should seek specific advice, but if you are successful similar remedies are available as for breach of trademark.

As an additional point, if the other party has registered an internet domain name using your name, you may be able to use the dispute resolution procedures now operated by the organisations that maintain the domain registrations. These procedures may offer a more cost-effective remedy than bringing a trademark or passing-off claim.

In any case, you will incur costs by invoking any of these remedies, and you would need to weigh these costs against the commercial value of the name that you are seeking to protect.

Please also read our fact sheet, What is a trade mark? or refer to What kind of sign can be a trade mark?

Content supplied on behalf of Own-it by College of Law students at the Moorgate Centre supervised by a lecturer at the College of Law's Moorgate Centre.

 

Please note that this article discusses the legal position in the UK at the time of publication. It provides general information only but is not to be regarded as legal advice. You must take advice from a specialist lawyer in relation to your specific circumstances. Further, you should seek additional legal advice when dealing with parties based in other parts of the world or works originating from other parts of the world as the legal position may vary.

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