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Alex J.
Alex J., Litigator
Category: UK Law
Satisfied Customers: 3497
Experience:  LLB, LPC, DELF
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Is an establishment selling burger as its primary allowed to

Customer Question

Hi, is an establishment selling burger as its primary allowed to have a trademarked with the work burger in?
Submitted: 1 year ago.
Category: UK Law
Expert:  Alex J. replied 1 year ago.

Hi, Thank you for your question and welcome. This is possible but the word "Burger" is generic, therefore any trade mark will have to focus on incorporating it with a distinctive and unique logo in order for such an application to be successful. The word burger by itself is unlikely to be capable of protection as a Trade Mark. I look forward to hearing from you. Kind regards AJ

Customer: replied 1 year ago.
Urban Burger' is trademarked with a specific logo.
I wanted to trademark 'Urban Burger Bar' with a completely different logo and 200miles between each business.
Would the 'Urban Burger Bar' with its own unique logo be an infringement on 'Urban Burger' trademark
Expert:  Alex J. replied 1 year ago.

Hi, Thank you. ***** trade marked the logo and the words or just the logo? Kind regards AJ

Customer: replied 1 year ago.
They have trademarked the logo, which incorporates the words 'urban burger'
Customer: replied 1 year ago.
uk trademark number :
UK00003016946
Expert:  Alex J. replied 1 year ago.

Hi, Thank you. The problem is the Trade Mark incorporates the words Urban Burger together with a logo. If you try and use the words Urban Burger for restaurant services you are likely to counter an objection. You can try and register the mark but if it does not work you will have wasted the fee. This does not prevent you using the word burger, but I think you would better off avoiding trying to register Urban Burger. You could just register a logo, and the use the words urban burger, the TM owner complains it would be more straightforward to change it. Kind regards AJ

Customer: replied 1 year ago.
Thankyou, I have registered the logo already and its currently under examination. if it passes am i ok from then on or is it possible for the TM owner to for object
Customer: replied 1 year ago.
further object*
Customer: replied 1 year ago.
I have been open for 1 year. only just recently had objection from the TM owner to cease the use or 'Urban Burger Bar'
Expert:  Alex J. replied 1 year ago.

Thank you. I am afraid the owner of the prior mark can still apply for it to be revoked based on prior use. Is the logo distinctive without the words? Kind regards AJ

Customer: replied 1 year ago.
the logo is simply a few circles without the words
Expert:  Alex J. replied 1 year ago.

Hi, Thank you. The problem is you know they have made an objection to it, further more if they expand their brand or you expand your across the country you are gonna come into conflict eventually. Have you been trading longer then the other brand? Kind regards AJ

Customer: replied 1 year ago.
they have been trading 2 years and i have been trading 1 year
Customer: replied 1 year ago.
it would be quiet expensive and tricky to alter the business name at this stage, Would look at any avenue to keep it. it was in no way intentional to have a similar name.
Customer: replied 1 year ago.
Would applying a germa/italian/french accent to a letter work ûrban
Expert:  Alex J. replied 1 year ago.

Hi, Thank you. Unfortunately that would not make a difference because the test for infringement can be based on similarity and similarity of goods and services (See s.10 of the Trade Mark Act 1994). Have you spoken to them directly and found out their plans? It may be possible that they wont enter your market place, in which there must be some arrangement you can reach? Did their solicitors write to you or was it just the owners? Kind regards AJ

Customer: replied 1 year ago.
No solicitors letter yet, just an angry man on the phone demanding I stop using the name.
Customer: replied 1 year ago.
am i allowed to continue this line of conversation later - i need to pick up my child from nursery
Expert:  Alex J. replied 1 year ago.

Hi, Thank you. Would it be worth meeting him to discuss it?

You could just carry on using the name and deny any infringement on the basis that the logos are not identical and there is no likelihood of confusion between the businesses, but bare in mind it is his prerogative to commence infringement proceedings (rightly or wrongly) - is this something you want to spend the time and effort defending? This will obviously detract from focus on your business - but it is difficult to say what is best because you could call his bluff and he may do nothing - in which case you would carry on trading and if you expand into his town you may encounter the issue again. Unfortunately there is no easy answer here because he has grounds to claim infringement, but such claims are purely a matter of fact. If it were me and I were looking to try and launch a nationwide business I would personally just mitigate the risk and change names, simply because he has been trading longer and has the trade mark - that said if you do not want to do that it is possible that he may take no further action. Kind regards AJ

Expert:  Alex J. replied 1 year ago.

No problem. I look forward to hearing from you. Please note if I am offline I may not respond right away. Kind regards AJ

Customer: replied 1 year ago.
great thankyou.
Expert:  Alex J. replied 1 year ago.

Thank you Kind regards AJ