I want to set up an online business selling sweets called Tracy’s Treat. An online search shows that there are two businesses of that name – one in Orlando and one in Mauritius but they sell cakes and baked items. Is that different enough?
The first thing to do in this instance is to check the trademark registry in the UK to see whether either business has registered the name as a trademark in the UK. If you are wanting to sell the sweets globally, then you may also want to do searches of other English-speaking jurisdictions trademark registrations.
If there are no registered trademarks in the relevant class (class 30 for confectionery), we then have to ask ourselves whether either business has an unregistered trademark in the UK, in which case there may be a risk of a passing off claim being brought against you.
To succeed in a passing off claim, the claimant would have to show:
- that they own the goodwill or reputation attached to the goods or services in question. Goodwill is effectively the attractive force which brings in custom.
- that there has been confusion in the public believing that the goods or services offered by the defendant are the goods or services of the claimant.
- that they have suffered, or are likely to suffer, damage as a result of the confusion.
Passing off is generally a lot more difficult to prove than infringement of a registered trademark and it can also be more expensive and time-consuming, so unless the other two businesses have businesses in the UK that they want to protect and believe that there would be a real risk of confusion and loss to them, they may be unlikely to bring a claim for passing off. As to whether there is sufficient similarity between sweets and cakes, it would depend on the risk of confusion. If the other two businesses were well known brands and you started selling sweets under the same name with similar looking packaging, there could very well be a risk of confusion.
If neither business has an active presence in the UK and the UK is your main target audience, then I would suggest that regardless of the difference between sweets and cakes, you will be absolutely fine using that name in the UK. If you want to build the brand, then I would consider trademarking the name in the UK and any other jurisdiction in which you want to build your client base.
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