Which takes preference, Business Name or Trademark?

Question: If you have a business name, and I come along and register a trademark of that same name, can I then demand the rights to your business name (and associated domain name)?

Here's the background: My dad registered a business name in August 2006. We got the corresponding domain name and have been trading under that name fine ever since.

A company in the UK with the same name coincidentally, are now claiming rights to it. They had the name registered in the UK since 2003, but they registered it as a trademark of the same name in Ireland, in April 2008.

I would have thought that they would not have been able to register a trademark when someone else am operating under that business name - but apparently they did.

They are now asking us to give up the business name and domain name.

What are the rules around this does anyone know?
Thanks

It sounds to me as if they have an entitlement to the trademark since they registered it before you.

However, my experience of Intellectual Property (IP) and trademarks is limited to what I hear at conferences... so take me with a pinch of salt.

On the other hand, I would recommend [broken link removed] on the basis that they delivered an excellent talk about IP six months ago. Leo Moore is the name of the guy who delivered the talk. I am in no way affiliated by the way.

I'd call them and ask the question over the phone to see what their reaction about it is, and if you like the name that much you can envisage battling it out in court.

Thanks.

They may have registered it in the UK, but they did not register it in Ireland until well after we did. Doesn't seem fair that they can take it now...

Registering a business name really gives you little protection.

It might in circumstances where someone else came in in the same business and tried to pass themselves off as you or related to your firm.

Are they asking/demanding/offering to pay you for the name and domain?

I think they are chancing their arm as they want the domain address. I'd either ignore it our possibly go on the offensive by writing to them and claiming that registering your business name as a trademark without your permission could be construed as trying to pass themselves off as your business which is illegal.

IP is not solely about who has registered a trademark. Proof of prior use does carry a lot of weight.

Thanks that's really useful.

It's annoying that this is not black and white. I would have thought that it would have been obvious, but it seems not.

We don't want to risk a costly battle here, but would obviously like to keep the brand...

I have a hazy memory of a lawsuit about the trade name Kentucky Fried Chicken. Years ago there was an outlet trading in Cork using the name. When the franchise operator first started operating here (1980s, I think) they sued the Cork operation for infringement of trademark -- and lost.

As I say, it's a hazy memory, and Google didn't deliver confirmation. Somebody else here might remember something about it.

colly said:

Thanks that's really useful.

It's annoying that this is not black and white. I would have thought that it would have been obvious, but it seems not.

We don't want to risk a costly battle here, but would obviously like to keep the brand...

Click to expand...

The ball is really in their court.

I acted for a guy who had registered a business name and a UK company set up in the North using a very similar name and domain name. We wrote claiming they were passing themselves off as us (they would have some business in the republic).

The said they weren't but ultimately rebranded "for other reasons"

Padraigb said:

I have a hazy memory of a lawsuit about the trade name Kentucky Fried Chicken. Years ago there was an outlet trading in Cork using the name...

Click to expand...

Pat Grace used the trading name in Limerick after his return from the US before KFC started the franchise here.

Your case doesn` t seem straight forward. ie. cybersquatting - you were using name before it was trademarked not aquiring it after it was trademarked with intent to profit. Is your business similar?

There is a european trademark body and also the WIPO - (Max penalty $100K for domain name)

Just so happens somebody was registering a trademark of a domain I use also biz name recently I was sent a letter from a solicitor on the other side of world asking had I any objections.

Seems like your opponents didn` t do to much due diligence.