Business Trading Name problem
Hi there. Newbie here here who needs some advice please. I have recently set up as a virtual assistant on a sole-trader basis. I may consider converting to a limited company as my business grows, but currently income is sporadic at best so I don’t feel it’s worth it at present. Before deciding on my business name I checked with Companies House and the IPO to make sure that it isn’t registered. However, I’ve now discovered that my business name is being used by somebody in the US who has been trading for a number of years. My website address is similar to theirs but the words are in a different order and my domain name is .co.uk. Having looked at their website there’s no indication that this business is trading outside the US, and since I have no intention of trading outside the UK or taking on any US-based clients I don’t feel I’ll be treading on their toes. So my question is where do I stand legally if I continue using the same name? Can this other person sue me for passing off, despite the fact that I make it perfectly clear on my website that I’m based in England. Any advice gratefully received. Thanks.
The key question here is whether the person in the US is in the same business as you. If they are not you will probably be OK.
One of the normal tests for passing off is geographical area (e.g. two fish & chip shops with the same name – one in Aberdeen the other in Portsmouth are unlikely to have a problem) however as you are an online based business this is less applicable.
I would suggest 2 things.
1) Make sure your site is visually very different from theirs so it is clear straight away you are not connected – different colours and layout for a start.
2) Have you considered sending the American company a friendly email to explain the situation and asking if they mind?
If you are going to have to change your company name it is better to do it now while you are reasonably small rather than when you are established.
Thanks for your reply Peter.
The other person is also a virtual assistant but there are clear differences between my website and theirs (colour and layout), plus as mentioned mine makes it clear that I’m based in the UK and primarily operating in London and the South East. I did consider contacting them but want to hold off on that unless I absolutely have to.
I’d rather not change my business name if I can help it, though I take the point that if I have to do it now is better than way down the line, and I have looked in to using an alternative trading name. In doing so I found that there are other virtual assistants trading with identical names and web addresses (though not to mine) but with different domain extensions – 2 operating in the UK and 1 in Australia with one name, and 2 others in the US with a different name – so it appears that it does happen between different continents as well as in the same country.
My feeling is that it won’t be a problem and that I can continue unless advised that legally I’m treading on somebody else’s toes.
I wonder if I can add some reassurance to your trading name dilemma?
Issues surrounding different parties owning or having similar trading names on the Internet are quite common. One case which is quite famous is that of a British menswear company who discovered that somebody living in tiny Welsh village also had a trading name/website just like the one they wanted. The solution was very simple a hyperlink on the Welshman’s site to the big menswear company and all was well.
I don’t think you have any really to be overly concerned about. So long as you don’t copy or potentially sell similar products. You could think about a polite directional statement if you detect much traffic from the USA or if you per chance receive a message from anybody over there.
The primary test in Law is whether anybody of reasonable intelligence can tell the difference between your site and the USA one.
So long as you’re not calling your site something like Bloomingdale’s or Donna Karen then I don’t think you realistically have much if anything to lose any sleep over.
I wish you every possible success.
Mark, thanks for your answer, which has given me some more reassurance. Thanks also for your good wishes.
Interesting about the menswear company case – while doing my research I read about a similar case involving two photography businesses, one in the US and one in the UK, and the US business has now purchased the domain name it wanted from the UK business.
While my business and the services I’m offering are broadly in line with what a lot of other VAs provide, the US business is offering much wider business support such as payroll and accounting, sales and marketing support, database management and social media support – all elements that are not within my area of expertise.
I have wondered about putting a link to the US website from mine, but on balance I’ll see what happens if I do for any reason get any enquiries.
I am pleased I have been of some help.
In general you only will need to place a link to any very similar website if somebody or the other website makes representations to you. However I would recommend that if you do receive any kind of communication: just run it past someone with legal knowledge before you do anything. A few pounds spent wisely could well save you lots of lost clients in the future.
Please get back to me if I can be of any further help.
Thanks again Mark.
I am planning to seek some legal advice via a friend of mine, and hopefully will be further reassured.
I think it is better if you change your name. They can sue you for patents and since they are the first to sue that name they are more likely to win the case. Just change your name and everything will be fine.