Made, produced or created in Sheffield, trademark stuff

[skinz]

My question is, though, can I include the word 'Sheffield' on my product?

From what I've read, I can't use 'Made in Sheffield' on my product or the word 'Sheffield' in my company name, which is fine.

 

I'm wanting to engrave 'Engineered in Sheffield' on my product, haven't read of anything specific which prevents this but that's not much of an assurance.

 

Would it not depend on whether the "Sheffiled" part is the trademark rather than "Made in Sheffield" as a trademark.

 

Sheffield chamber of commerce maybe?

[RootsBooster]

Would it not depend on whether the "Sheffiled" part is the trademark rather than "Made in Sheffield" as a trademark.

 

Sheffield chamber of commerce maybe?

 

Well, 'Made in Sheffield' is the registered, protected trademark. The use of 'Sheffield' in your company name is forbidden (without permission).

 

I haven't read anything about not being able to include the word 'Sheffield' on your actual products.

[L00b]

I haven't read anything about not being able to include the word 'Sheffield' on your actual products.

Have your seen and read this resource?

 

Note moreover that, as a point of trademark practice 'engineered in Sheffield' could be deemed to be confusingly similar to 'made in Sheffield' on grounds of at least conceptual similarity (there is already phonetic and aural identity about the 'in Sheffield' component, noting here that 'Sheffield' will be considered a distinctive component of the mark, at least to the same extent as 'engineered').

 

Note further that third parties have registered 'Sheffield', as a word on its own, as a Community trademark with effect inter alia in the UK. That's not saying such CTMs are valid in the UK/not opened to challenge in the UK, if and when their owners tried to enforce them in the UK...but you'd have to undertake fairly lengthy and expensive Court proceedings to find out for sure (well...as sure as these things can ever get).

 

Just friendly pointers/musings. Personally, I'd suggest that you at least enquire with Cutler's Hall.

Edited March 24, 2015 by L00b

[ronthenekred]

Roots, what about - "Made/Engineered in 53.3836° N, 1.4669° W". - Or a precise coordinate that's applicable. Nice ring to it if you ask me.

[RootsBooster]

Have your seen and read this resource?

Thanks, I've just had a read through. It's interesting but isn't worded in such a way that it clarifies the situation. It's headed as a set of guidelines for people who are already 'certificate holders' and the use of the 'Certification mark Sheffield'

Note moreover that, as a point of trademark practice 'engineered in Sheffield' could be deemed to be confusingly similar to 'made in Sheffield' on grounds of at least conceptual similarity (there is already phonetic and aural identity about the 'in Sheffield' component, noting here that 'Sheffield' will be considered a distinctive component of the mark, at least to the same extent as 'engineered').

 

Note further that third parties have registered 'Sheffield', as a word on its own, as a Community trademark with effect inter alia in the UK. That's not saying such CTMs are valid in the UK/not opened to challenge in the UK, if and when their owners tried to enforce them in the UK...but you'd have to undertake fairly lengthy and expensive Court proceedings to find out for sure (well...as sure as these things can ever get).

 

Just friendly pointers/musings. Personally, I'd suggest that you at least enquire with Cutler's Hall.

The thing is, I'm not wanting to actually use it as a trademark, I already have my own trademark (inc. logo) which has nothing to do with the word Sheffield, I'm simply wanting to state the information on my product that it was engineered in Sheffield, England.

 

I hear what you're saying about similarities but I can't help think that Nike wouldn't be bothered if someone started printing the slogan 'Just achieve it' on their tee-shirts, even though it's similar to Nike's 'Just do it'. The difference seems quite definite to me, but the problem is that I only have my opinion for that.

 

It appears that using the word 'Sheffield' in your trademark isn't such an issue, quite a few have used it...https://www.ipo.gov.uk/tmtext/Results

Roots, what about - "Made/Engineered in 53.3836° N, 1.4669° W". - Or a precise coordinate that's applicable. Nice ring to it if you ask me.

I like that actually, or possibly a postcode.

If all else fails I guess I could go with 'Engineered in England' or 'Engineered in South Yorkshire, England'

[L00b]

Thanks, I've just had a read through. It's interesting but isn't worded in such a way that it clarifies the situation. It's headed as a set of guidelines for people who are already 'certificate holders' and the use of the 'Certification mark Sheffield'

I'm quite sure there is some info about applying...but as I suggested, why don't you simply call and ask the Company of Cutlers?

The thing is, I'm not wanting to actually use it as a trademark, I already have my own trademark (inc. logo) which has nothing to do with the word Sheffield, I'm simply wanting to state the information on my product that it was engineered in Sheffield, England.

Why are you wanting this additional information, if not for marketing purposes? Is the Sheffield provenance important to your customers? If so, why?

I hear what you're saying about similarities but I can't help think that Nike wouldn't be bothered if someone started printing the slogan 'Just achieve it' on their tee-shirts, even though it's similar to Nike's 'Just do it'. The difference seems quite definite to me, but the problem is that I only have my opinion for that.

Well, you've just had a bit of professional opinion, free of charge. You can heed it (because I've been at this IP gig a long time) or not (because it's free and I'm anon). Or you can choose to up-value it by coming to my workplace for a paid-for version of the above (which will expand on the above, but not differ substantially as regards the gist). Or choose to rely on your opinion instead. None is any skin off my nose

It appears that using the word 'Sheffield' in your trademark isn't such an issue, quite a few have used it...https://www.ipo.gov.uk/tmtext/Results'

It's only ever "not such an issue" until you receive a Cease & Desist. Which you may or may not receive, and the likelihood of which is directly related to whether someone already owns an RTM for (or including) Sheffield in the relevant class of goods or not (or, this being the UK and all, someone doesn't have an RTM but has a reputation and goodwill apt to sustain a passing-off action).

 

That's some more from the daily coal face, not intended to scare you, just to inform your business decision(s)

Edited March 24, 2015 by L00b
Typos (using iPad for big posts is a PITA :-P)

[ubermaus]

Yes its true, I have the word sheffield in my company name.. Before companies house would let us regester our company we had to get permission from the home office.

 

Cant you have something random as a company name and made in sheffield as a trading name? Just a thought

 

---------- Post added 24-03-2015 at 23:34 ----------

 

I'm quite sure there is some info about applying...but as I suggested, why don't you simply call and ask the Company of Cutlers?

Why are you wanting this additional information, if not for marketing purposes? Is the Sheffield provenance important to your customers? If so, why?

Well, you've just had a bit of professional opinion, free of charge. You can heed it (because I've been at this IP gig a long time) or not (because it's free and I'm anon). Or you can choose to up-value it by coming to my workplace for a paid-for version of the above (which will expand on the above, but not differ substantially as regards the gist). Or choose to rely on your opinion instead. None is any skin off my nose

It's only ever "not such an issue" until you receive a Cease & Desist. Which you may or may not receive, and the likelihood of which is directly related to whether someone already owns an RTM for (or including) Sheffield in the relevant class of goods or not (or, this being the UK and all, someone doesn't have an RTM but has a reputation and goodwill apt to sustain a passing-off action).

 

That's some more from the daily coal face, not intended to scare you, just to inform your business decision(s)

 

Exactly. Whos going to object realistically

[ronthenekred]

 

Exactly. Whos going to object realistically

 

Try putting the Royal coat of arms on your product, they'll have you sitting on a pike. I guess the Cutlers response could be equally as eye-watering.

[RootsBooster]

I'm quite sure there is some info about applying...but as I suggested, why don't you simply call and ask the Company of Cutlers?

Why are you wanting this additional information, if not for marketing purposes? Is the Sheffield provenance important to your customers? If so, why?

Well, you've just had a bit of professional opinion, free of charge. You can heed it (because I've been at this IP gig a long time) or not (because it's free and I'm anon). Or you can choose to up-value it by coming to my workplace for a paid-for version of the above (which will expand on the above, but not differ substantially as regards the gist). Or choose to rely on your opinion instead. None is any skin off my nose

It's only ever "not such an issue" until you receive a Cease & Desist. Which you may or may not receive, and the likelihood of which is directly related to whether someone already owns an RTM for (or including) Sheffield in the relevant class of goods or not (or, this being the UK and all, someone doesn't have an RTM but has a reputation and goodwill apt to sustain a passing-off action).

 

That's some more from the daily coal face, not intended to scare you, just to inform your business decision(s)

 

After I'd read your post #13 yesterday I did indeed contact them (emailed the Made in Sheffield committee).

 

As for how important this is to me, it's really not that important. Like I said, I can make do with 'engineered in England' or 'engineered in South Yorkshire, England'.

If it's permitted though, it would be nice to declare the city of origin.

[ubermaus]

Try putting the Royal coat of arms on your product, they'll have you sitting on a pike. I guess the Cutlers response could be equally as eye-watering.

 

The royal coat of arms is image trademarked. Different kettle of fish. Although you could get round it by modifying the coat of arms , then it's your coat of arms!

 

---------- Post added 25-03-2015 at 16:08 ----------

 

After I'd read your post #13 yesterday I did indeed contact them (emailed the Made in Sheffield committee).

 

As for how important this is to me, it's really not that important. Like I said, I can make do with 'engineered in England' or 'engineered in South Yorkshire, England'.

If it's permitted though, it would be nice to declare the city of origin.

 

Get 30 min consultation with an IP solicitor. Tell you everything you need to know before proceeding.

Edited March 25, 2015 by ubermaus
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