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Ben Jones
Ben Jones, UK Lawyer
Category: UK Law
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I recently applied registtrationfor the name CrowdFest in

Customer Question

Hello, I recently applied for a registtrationfor the name CrowdFest in the UK for a crowd funding event to take place in September 2016. There appeared to be no conflicting marks. I have also registered a company in that name in the UK. But this morning, whilst researching domain names, I found that crowdfest.co.uk was being used by a netherlands company who launched a crowdfuning event called CROWDFEST in Amsterdam 2 months ago. I checked the Benelux IPO register and they don't appear to have registered the name as a trademark. And so I am wondering what my legal position is here: can I launch an event in the UK called CrowdFest? The nature of crowd funding mans that it could conceivably attract Dutch participants too. I want to avoid a situation where I invest in the marketing and branding and then have to suddenly change the name because of a cease and desist letter...
Submitted: 11 months ago.
Category: UK Law
Expert:  Alex J. replied 11 months ago.

Hi, Thank you for your question and welcome - my name is ***** ***** I will assist you. Have you registered the trade mark in the UK? Will you actively market the concept in the Benelux region? Is the dutch company actively trading in the UK?

Customer: replied 11 months ago.
Hi. yes I've applied for registration in the UK (the application is being advertised today) and the event will be marketed by UK crowd funding platforms to their subscribers, which I am sure will inevitably include some people in the Netherlands. The Dutch company's event was in Amsterdam, yet they are using the .co.uk suffix to host their website. They don't seem to be actively trading in the UK, though. Another complication: I have found that a Polish company is using the same CrowdFest name for a small crowd funding event in Poland and yet another is doing the same in the US too...My 3 main questions are: 1) I can't guarantee the event won't be marketed to some people in the Netherlands but if we call it "CrowdFest UK" or "CrowdFest London" or "Crowd-Fest.com" would that be sufficient differentiation? 2) Is it advisable to talk to the Dutch company and ask them directly if they would be happy with our event, or should I avoid alerting them before the trademark is granted? 3) If others are using the name around the world and have done so before them, can they really claim protection, or might it make it too complicated for them to practically do so? I don't really mind if the Dutch company continues as an event in Amsterdam even if it markets to the UK since it is a very different format (it showcases Dutch companies looking for investment) whereas our event is primarily a fee-paying conference with industry sponsors and backed by the UK Crowd Funding Association. Th logo and branding would also be quite different. The only real cross-over is that some sponsors (like law firms) are international and might sponsor or have a presence at both. If our event works, the plan is to roll it out to places like Dubai/ Singapore, (for example "Crowd-Fest.com Middle East").
Expert:  Alex J. replied 11 months ago.

Thank you. Just to clarify one point - you say you cannot guarantee that it won't be marketed in the Netherlands - but I what I mean is will you actively spend money and resourcing pursuing the dutch market and creating a good will for your brand there? If you can confirm this last point I will respond to the rest of your response.

Customer: replied 11 months ago.
Hi, no the Dutch market is not a priority. The event is being hosted by the UK Association of Crowd Funders and so the UK is the main focus, though it's quite an international type of industry. The only way people in the Netherlands might be targetted is if the crowd funding platforms (Association members), like Seeders, promote the event to the people on their data bases and some of these happen to be based there. The UK leads the way in regulation so people from other countries might want to come, but we would not actively spend money trying to get participants from the Netherlands.
Expert:  Alex J. replied 11 months ago.

Hi, Thank you. The issue here is the Dutch company have their goodwill in separate territory from you. You have a UK registered TM, therefore you are entitled to exploit the UK market. If you actively pursued another market that was subject to existing good will or TM rights then you come into dispute with this company. Has your registration been advertised by the IPO?

Customer: replied 11 months ago.
advertised last week...
Customer: replied 11 months ago.
Just following up, hoping to receive advise on the 3 points I raised earlier...(name differentiation; advisability of contacting Dutch company; whether the existence of other events using the crowdfest name dilutes the Dutch company's ability to claim protection)
Customer: replied 11 months ago.
Hello, I would appreciate a further response...
Regards
Richard
Expert:  Alex J. replied 11 months ago.

Hi, Thank you. If you have advertised your TM then I would not do anything to draw attention to the fact that someone might challange it. The dilution of the goodwill really depends on whether the two events can be distinguished as independent - are the events obviously provided by different organisers? The ability to claim protection in the UK will be dictated by the TM, if you have the TM the that is your protection of the name and logo you have registered. Kind regards AJ