Trademark Question

[Boney M]

Hi guys, I know it is not the sort of thing normally discussed but with the wealth of knowledge on here and as it is a IP type of question hoping someone can help.

We are a new charity registered with the Charity commission in Scotland for some 6 months now. We worked bloody long and hard to raise the required minimum funds to succeed in this application. We have registered our domain names and associated .co.uk & .com domains and variations, social media pages etc etc (I work in IT obviously so am au fait with all of this) We are now looking to trademark the charity name, not so much the logo but are likely to include this.

Part of our charity had some members who were not trustees nor officers but they have broken away from the core group and are starting to fundraise under a very similar name. Although we can prove beyond doubt that we existed before we are looking forward. Some questions if I may:

1. If I was to registered the charity name, for example lets say it is: "MedicalName UK" would this be allowed to be registered - It is the medical term we are using with the word UK on the end
2. If we are allowed to register the above (I have checked similar and seems so ) how close does someone need to be to infringe, so for example our named trademark would be "MedicalName UK" but the other group has theirs as "MedicalName Research" is this close enough for an infringement? We really dont want the other group being confused with ours

Thanks in advance for any info.

[tractor]

...

Two things come to mind (I am not an expert).

Their activities need to amount to 'passing off' I believe is the term.
It is difficult to successfully trademark an everyday term except when it is part of an overall identity as in Apple (with the logo)

About

[JustinTime]

You may want to research any past conflicts between Mumsnet and Netmums. I'm not saying that there have been, but this does look like the closest example to the case that you have described.

[TheFaQQer]

For most issues regarding intellectual property rights, you need professional advice. There are a number of examples where people didn't get professional advice and the problems that arose (eg. the guy who tried to patent a new way to calculate square roots, and ended up giving it all away for free).

[Maslins]

I have a trivial amount of trademark knowledge following a fairly blatant MVL Online copycat a while ago. A few things:
1) you can't trademark very generic terms. Eg extreme example "Tesco" can be trademarked, but "food shop" couldn't be. We were initially told a trademark application for MVL Online would likely fail, as MVL is simply the acronym for what we offer, and online is simply how we do it. But our adviser agreed it was worth a shot. We took that shot, and were granted it...possibly on the grounds they didn't really look into what MVL was, and thought wrongly maybe it was owner initials/similar.
If by "MedicalName UK" you mean for example "Diabetes UK" I personally would be surprised if you could trademark that.
2) If you did get (say) "Diabetes UK", I don't think that would provide any protection against (say) "Diabetes research". If it did, realistically it would be the word Diabetes that you'd protected...which I'm sure wouldn't be possible.

As others have mentioned above, you can potentially trademark a more common word/phrase WITH a logo/in a specific font/colour. However for our own personal issue, given everything was online and a large part of our annoyance was SEO/PPC related, it really was just the words we wanted to protect. Someone using our exact name but with a different logo could easily take lots of our customers mistakenly thinking they were us.

It's not much fun if someone's copying you. Seemed to me best bet is to write them a nicely worded letter advising of the infringement, and hoping they're scared and comply by changing. However, if they completely ignore you, or get advice and write back saying you have no protection, there's probably not that much you can do. Trying to protect it will be expensive, and there's no guarantee you'd win.

In our case, we got the trademark, then wrote them a nice but slightly threatening letter, explaining exactly the bits we were unhappy with, and they changed them fairly swiftly.

Someone else has mentioned "passing off". My understanding is you can try this tactic if you DON'T have a trademark. However, if you did get a trademark, you simply have to show someone's using the trademark to stop them using it. If you don't have a trademark and attempt to enforce them to stop due to passing off, you need to not only prove they're using your name, but also that it's confused customers and you've lost out financially due to it. I gather this last bit is extremely hard to prove, so some would say the law there isn't really worth the paper it's written on.

PS I am not an intellectual property lawyer...just someone who's had to use the services of one in the last couple of years. I can pass on their details if you like, PM me if so.

[TheFaQQer]

If you want to read up on IPR, particularly in the digital age, then see if you can get hold of anything by Professor David Bainbridge.

[Boney M]

Thanks for the advice guys.

@Maslin, the medical term is a rare gentic disease which is not trademarked anywhere as it only affects about 200 boys worldwide adn about 30 in the UK so it is a very small charity. If I gave the following example of another rare disease, it might explain things more. So if we are a charity called for instance:

Achard Thiers Syndrome UK and they are called:
UK Achard Thiers Syndrome Research

I would like to think it would infringe and cause issues.

[Maslins]

Thanks for the advice guys.

@Maslin, the medical term is a rare gentic disease which is not trademarked anywhere as it only affects about 200 boys worldwide adn about 30 in the UK so it is a very small charity. If I gave the following example of another rare disease, it might explain things more. So if we are a charity called for instance:

Achard Thiers Syndrome UK and they are called:
UK Achard Thiers Syndrome Research

I would like to think it would infringe and cause issues.

The rarity of it might help you be able to get a trademark, simply because then the words aren't ones most people use on a day to day basis when talking about things unrelated to your charity.

Also, I'd anticipate given in your examples there were multiple words copied, in the same order, just with a slight tweak to first/last word, I think if you did have a trademark you'd have a decent case.

Just my thoughts, I may be entirely wrong on the above.

From memory you can apply for a trademark for only a few hundred pounds if you want to DIY it. Getting a professional to help will inevitably add a further few hundred as a minimum...but you may find your chances of it being accepted are greater, and/or they may be able to recommend certain tactics to best help you protect your "brand".

[Boney M]

The rarity of it might help you be able to get a trademark, simply because then the words aren't ones most people use on a day to day basis when talking about things unrelated to your charity.

Also, I'd anticipate given in your examples there were multiple words copied, in the same order, just with a slight tweak to first/last word, I think if you did have a trademark you'd have a decent case.

Just my thoughts, I may be entirely wrong on the above.

From memory you can apply for a trademark for only a few hundred pounds if you want to DIY it. Getting a professional to help will inevitably add a further few hundred as a minimum...but you may find your chances of it being accepted are greater, and/or they may be able to recommend certain tactics to best help you protect your "brand".

Thanks Maslins, pretty much what i thought just wanted some sort of confirmation as such.