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Expert answers: Do I have to rebrand because a company trademarked part of my business name?

Readers question: I incorporated my company name in 2007 with the initials “CLA” included as part of the full name. Recently I received a letter from lawyers representing another company who also use “CLA” in their company name and want me to rebrand and stop using CLA as part of the full name. I noticed they registered a trademark for CLA in 2009. I also notice there are hundreds of companies using CLA as part of their full company name. Can you please advise if I will be forced to change my company name?

a company trademarked part of my business name

Experts answer: The expert to tackle this question is Charlotte Gerrish from Gerrish Legal.

The short answer is, it depends!

According to English law

Under English law, a registered trademark may be infringed by the use of an identical or confusingly similar trademark for identical or similar goods or services to those covered by registered trademark. You state that you are using “CLA” as part of your full company name, and so presumably this means that the name you are using is not identical to the other party’s trademark.

Trademarking your company name

However, if you are operating in the same field, dealing with similar goods or services, then the other party would need to demonstrate that consumers are confused or likely to be confused about the where those goods and services are coming from (i.e., from your company or theirs) to be successful in a trademark infringement claim. If your company did not register its name as a trademark before their 2009 registration, then it might be harder to protect your interests, even if you were using the name for 2 years beforehand. However, you may not have to follow through on a full rebrand as you may be able to counter their claims depending on your situation – for example, if your company name was indeed registered as a trademark or if you can show your company name has been used in the course of trade in a particular geographical area before their trademark was registered.

Professional legal help

It probably is not in either of your interests to end up in costly trademark infringement court proceedings, and quite often these things can be resolved amicably without you needing to do a full re-brand, for example, by entering into a licence or coexistence agreement. All trademark cases are very fact-specific, and your lawyer would need to have more information about whether your company name is registered as a trademark, details of the full company names/trademarks/logos of both parties, where the parties are operating and what their respective businesses are (which goods and services) to be able to advise you properly. It is therefore important that you seek proper legal advice on your specific case to avoid any unnecessary exposure.

More on the importance of trademarks and small business branding.

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