How a Cheeky Ad Led to a Trade Mark

An ad that isn't what it appearsWe have owned the trade mark ‘The Payroll Site’ for ten years now. Companies choose to protect their brand names for different reasons, but, in our case, it was prompted when a competitor did something very cheeky.

We started running our service in 2004 and began to build up a good customer base and reputation. Then, one day, in 2008, I searched Google for our full website address and was surprised by what I saw. The top result appeared to be a link to our website; but, on closer inspection, it turned out to be an advert for a large, managed payroll company who chose to put our website address in their ad. When you clicked on the link, it took you to our competitor’s website. In the above screenshot, I have replaced their domain name with question marks. Their service is not the same as ours, but they compete with us for the same customers – small employers in the UK.

Still shocked by the gall of this company, I looked into ways of making it stop. We contacted both Google, and the company that placed the advert and, fortunately, the advert was taken down, without any need for legal action.

Next, I considered how we could defend our name against any other companies which, in the future, might try the same trick. Placing an advert that appears to be for someone else seems to fit within the definition of ‘passing off’, which is a common law action which is quite complicated to prove in court. Had we registered the trade mark, we would have had an easier option.

To register a trade mark, you have to choose which classes of goods and services you want to protect. That way, if a company has registered a similar name to yours, but is selling a product or service which has no scope for confusion with your own, then they can’t force you to change your name.

We registered the trade mark ‘The Payroll Site’ in two classes, for an initial period of ten years. This is coming to an end soon, so I will be renewing it, at a cost of £250. It seems a small price to pay for a decade of protection.

Steven Tucker

By Steven Tucker - Co-founder

Steven is one of the founders of The Payroll Site. He writes about things affecting small businesses, especially those things connected with payroll. He's also a Maths graduate and a Chartered IT Professional and has a few views about technology, maths and the misuse of both.