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mcelec
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Location: Liverpool

PostPosted: Tue Mar 15, 2011 5:38 pm    Post subject: similar company Reply with quote

Hi

I Have setup a running event company our website is
legendevents . org . uk
today i was contacted by a similar company who tell me they feel I have stole there intelectual property there website is

legacyevent . org

I would really appreciate if anyone on here could take a look and advise me, what would be my best cause of action, should I change or stand my ground.

The only similarity is we both use the term legacy surey they dont own this? or do they? any advice would be greatly appreciated.

Thanks
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AndyJ
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PostPosted: Tue Mar 15, 2011 11:53 pm    Post subject: Reply with quote

Hi mcelec
Having briefly looked at both sites, I see no visual similarity, even though you both seem to be working in a similar area of charity related activities.
There is no record of their having registered the words Legacyevents or Legacy Events as trade marks on the IPO website, and although they make some robust statements in their terms and conditions about their intellectual property rights, this seems to relate solely to copyright in their website and the forms etc which can be downloded from there.
Although there is some similarity between the two URLs I think this is inevitable given the area that you are both working in. The words 'legacy' and 'legend' are entirely separate in meaning and in my opinion unlikely to be easily confused. Therefore I am at a loss to see what grounds the other site might have for a claim of stealing their intellectual property, and indeed what IP they feel has been infringed. Unless you have copied swathes of text from their site or their entry forms (which does not appear to be what they are complaining about) then it is doubtful if there are any copyright issues here. URLs are functional things just like postal addresses and therefore would not normally attract copyright. In any case I would say there are no grounds for saying that 'legendevents' is a copy of 'legacyevents' by any measure normally adopted in such cases.
There are two areas in which a claim might be made. The first concerns Domain Name disputes, for which there is a recognised resolution system, details of which can found here: http://www.icann.org/en/udrp/udrp.htm with an explanatory article here on Wikipedia http://en.wikipedia.org/wiki/Uniform_Domain-Name_Dispute-Resolution_Policy
The second area is called passing-off and is dealt with under common law. It is not technically an IP issue, although very closely related to it. Since there is no actual statute defining an offence of passing off, it is not an easy matter to bring a claim. Essentially the claimant needs to prove 3 elements:
1. That goodwill attaches to his goods or services,
2. That the defendant misleads the users of those services as to the origin of the services he (the defendant) provides, and
3. So causes damage to the claimant's business.
It is not necessary for any misrepresentation to be deliberate or the result of bad faith, ie that the defendant deliberately sets out to deceive the public. However, bad faith may be an aggravating factor.
Interestingly there has been a case involving URLs: Phones 4u Ltd v phone4u.co.uk Internet Ltd [2006] EWCA Civ 244. In that instance the claimant (Phones 4u) won on appeal. If you have time, I recommend reading the judgement in full as it serves as a good summary of the factors involved in passing off.
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mcelec
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PostPosted: Wed Mar 16, 2011 7:41 pm    Post subject: Reply with quote

Hi Andy

Thanks for your reply, they basically just phoned me yesterday and made demands that I drop the whole legend events branding saying that it is protected for there sole use as it is there IP

Having had a look they have trade marked the term Legacy Event in november

but is my company name Legend Events or my events, Legend Series a infringement on there trade mark?

the terms legend and legacy are commonly used especially in sport and even more so with the olympic games upon us.

interesting enough i have looked on the net and found another similar company

legacyevents . co . uk

surely there name is closer to the trademark than any content I use in my branding?

Having put a lot of hard work into developing and promoting a brand I dont really want to change, but dont also want the expense of a legal battle.

The guy who phoned me was saying all sorts about how he can have the company name struck off at companies house etc Iam no expert but I think he was just trying to intimidate me.

They have said they will put a letter in the post so I will post here what it says when it arrives.

What do you think my chances are of defending my case?

Regards

Mark
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AndyJ
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PostPosted: Wed Mar 16, 2011 9:04 pm    Post subject: Reply with quote

Hi Mark,
I'm no expert on Trade Mark law so my comments here necessarily need to be treated with caution. And this site is primarily concerned with copyright matters, so I wouldn't want to abuse it by trying to answer your question in too much detail.
It would appear that since 'Legacy Event' is a registered trade mark, its owners have two avenues open to them: a claim of infringement of their trade mark under s 10(2)(b) - a similar mark applied to identical services - and a claim of passing-off as described in my earlier reply.
For a mark to infringe under s 10(2)(b) there needs to be likelihood of confusion on the part of the public. There does not need to be any damage to the reputation of the claimant's company (cf passing-off). It would be for the claimant to establish that such confusion was likely to exist.
Even if they managed to do this, there is a defence known as 'earlier use' under s 11(3) which says:
Quote:
(3) A registered trade mark is not infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality.

For this purpose an “earlier right” means an unregistered trade mark or other sign continuously used in relation to goods or services by a person or a predecessor in title of his from a date prior to whichever is the earlier of—

(a) the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his, or

(b) the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor in title of his;

and an earlier right shall be regarded as applying in a locality if, or to the extent that, its use in that locality is protected by virtue of any rule of law (in particular, the law of passing off).

As you can see, reliance on this defence would depend on two things: that your unregistered mark had already gained some good-will (ie recognition in the eyes of the public) before Active Synergy Development Services Ltd had first started to use the words Legacy Event for their services, and that your reputation was specific to a locality. Clearly the law was not written with ecommerce in mind, and so I don't think this defence would be of much utility in your case, if your customer base was spread throughout the UK.
Additionally you could challenge the validity of the registration on the grounds that the words 'Legacy Event' lack distinctiveness. That is to say such words are often used in a generic way about all sorts of events not connected with the services provided by Active Synergy Development Services Ltd.

So the bottom line is that Active Synergy Development Services Ltd may have a reasonable chance of success if they bring a claim of trade mark infringement, but less so in a claim of passing-off. If you are detemined to fight to keep your current business name, you will need to seek advice from a specialist IP lawyer.
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CopyrightAid
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PostPosted: Thu Mar 17, 2011 9:44 am    Post subject: Reply with quote

Please note, I am not an expert on trademarks either (so as Andy says - treat what I say with caution).


LEGACY EVENT is indeed registered as a trademark-
see
http://www.ipo.gov.uk/types/tm/t-os/t-find/t-find-number?detailsrequested=C&trademark=2563160

Like Andy, I too find the two words 'LEGACY' & 'EVENT' in themselves very commonplace, but it appears that the IPO treat 'legacy' as (to use there own terminology) distinctive.
There are in fact 3 active trademark registrations (in different classes) for different companies for the word 'LEGACY' alone:
http://www.ipo.gov.uk/domestic?domesticnum=1564791
http://www.ipo.gov.uk/domestic?domesticnum=2305432
http://www.ipo.gov.uk/domestic?domesticnum=2070255

[Side note: So it seems that the IPO do not feel that 3 companies using exactly the same word (albeit in different sectors) is an infringement.]


Personally I would contact the IPO directly about this and ask their opinion - (and get it in writing) that way if they say you are OK you have something 'official' to show Active Synergy Development Services Ltd.
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AndyJ
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PostPosted: Thu Mar 17, 2011 10:45 am    Post subject: Reply with quote

I second Copyright Aid's advice. However I suggest you approach the IPO on the issue of whether your company name could be registerable. You don't have to go ahead with the actual registration process.
If you require further information on the 'distinctiveness' necessary to make a trade mark eligble for registration, this Wikipedia article is fairly comprehensive.
Also, in my attempts to keep my previous reply short (!) I failed to cover your point about the threat to get you company name de-registered. The relevant law on this is s 69 of the Companies Act 2006 (which can be found here) .
It is not as simple as the person from Active Synergy Development Services Ltd seems to have implied, as the matter would have to be adjudicated on. Clearly the outcome of any decision over allegations of trade mark infringement or passing off will be relevant to the adjudicator's decision, and vice versa.
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