united-kingdom, namingHaving recently set up a company, a friend then was contacted by another company that is trading as the name of the company. (E.g. the company name is X, the other company’s name is Y but trading as X).
The managing director of the company who contacted him, explained how they have trademarks and high level domain names of that name, and asked him about whether he was not aware of the brand or planning on co existing. My friends company is not in the same market space.
What are the legal implications of this for both parties? My friend is in the UK. He does not want to use the company name as a product name.
Company is in the UK. Company was registered in the UK. Does not trade overseas.
You/your friend are in the UK but you have not said where this other company is based.
‘Your Company’ is a legal entity within the UK - a search is done prior to setting up a company name, and efforts are done to prevent similar names from being registered. If ‘your’ UK Company was registered, you are standing on strong legs within the UK.
Trading outside the UK is a different story.
Case in point is Budweiser and Budvar, and WWF (Wrestling and World Wildlife Fund). American Budweiser and Czech Budvar have argued over the name Budweiser for a number of years and in some countries, American Budweiser has won the right to the name, whereas in others, Budvar have won. Interestingly, both beers were founded in the same year in the 1800s, the American Budweiser weeks/months before the Czech beer, but the Czech beer lays claim to the name because of it comes from a city with a similar name that has existed since before time.
Similarly, WWF Wrestling/Wildlife went thru arguements - my understanding is wildlife won.
The other Company needs to have trademarks in the UK or prove to a UK court that they have a worldwide recognized brand. If they don’t then all they can do is ask that you trade under a different name.
They could threaten to bring you to a foreign court, but if you don’t trade or advertise there, their threats are likely baseless. I say baseless, there have been cases (which I fail to recall at the moment) where a UK business failed to turn up in a US court believing it to be pointless (the UK business had no trading or office in the US). It got messy - basically they found they had a legal obligation to attend the court, at their own expense, and failing to do so meant they lost by default and had to appeal. UK Law had agreements in place to recognise US court orders that focused their attention.
My suggestion: Be polite if you get any follow on phone calls but ask them to put their claims in writing and that you will present them for legal review. When/if you get something in writing, seek legal advice. You might want to check the source of the letter - they might pretend to write you a lawyers letter when it is either a made up legal firm name, or they have used some legal firms name without permission. If the legal firm that writes to you does actually exist, trace them and check things like phone number and postal address are correct. I would even go so far as phoneing an office (using the phone number from a website not the letter). If they write a letter falsely claiming to be lawyers, they’ll have broken local laws which puts them in serious do-doo.
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