Not Doing My Homework :-(

[mojoco]

Good luck competing against a LTD company called Insure which has been trading 10 years plus. Some of you people are stupid

A LTD company carries close to zero weight in trademark issues.

 

[mojoco]

That's the most ridiculous thing I've ever heard @mojoco but ok

Really?

https://www.companybug.com/limited-company-names-and-trade-marks/
"
There is a common misconception that you can protect your business name from being used by others simply by registering the name at Companies House.

Unfortunately, this is not the case. By forming a new company at Companies House, you are only preventing any other business from registering the same, or a very similar, company name to yours. Unless your company (or brand) name are registered trade marks, they may be used by other businesses for marketing or other purposes."

https://www.albright-ip.co.uk/2013/05/company-names-v-trademark/

https://smallbusiness.co.uk/does-registering-my-company-name-give-me-trade-mark-protection-1652553/
"In fact the registration of a company name only precludes a third party from registering the identical company name, it does not stop a third party from registering all or part of your company name as their trade mark, and it certainly does not prevent them using all or part of your company name in their branding."

 

[mojoco]

A little more in case you are still in doubt...

https://www.contractoruk.com/limite...nies_house_protect_my_company_name_cuk04.html

"
Expert’s Answer: Firstly, registering your company name with Companies House does not give you any trade mark protection, nor does it give any rights to use that name.

Secondly, don’t be lulled into a false sense of security by the fact that Companies House won’t let two companies register identical names. It is possible for more than one person to own the same trademark, as long as it’s for very different goods and services, which is why trade mark registries operate a system of classes. Owning a website address, which may be your next step, also offers no legal brand protection.

So what happens at Companies House has no relevance to intellectual property protection. Moreover, trademarks can be registered to a company or in the name of an individual, and the incorporation status has no bearing on whether a name can or cannot be used, or should be registered or not."

 

[wb]

There is some terrible advice on this thread. This may be a useful read...

https://companieshouse.blog.gov.uk/2019/02/12/choosing-a-company-name-trading-name-or-trade-mark/

There’s a common misconception that you can stop others from using your business name by registering the name at Companies House. Sadly, this is wrong.

Incorporating a new company will prevent other businesses from registering the same, or a very similar, company name to yours. A trade mark is a sign which can distinguish your goods and services from those of your competitors.

Registering a company name does not automatically protect it by trade mark law. Similarly, if you register a trade mark, you may not necessarily be able to register it as a limited company name. They are 2 different forms of protection, administered by 2 different organisations.

Companies House registers companies and the Intellectual Property Office registers trade marks. Both organisations have rules and regulations about what you can register.

 

[PhilGreg]

Flight comparison

When it comes to TheCloud, I had no intention of it being my company name, but I guess if I had an active website on it then it could reasonably be argued that I was using it as a 'Trading Name' and as MrBig owns the Trademark in the UK then on the surface of it I could be falling foul of Trademark Law.

However, there appears to be many if's and but's, and possible defenses, like :
1. I never had any bad intention
2. The intended look and feel would be completely different
3. The area of services is the sticky-wicket because I wanted to offer Managed WP Hosting Services and it could potentially be argued that somebody may think that I was the famous WiFi Provider who owns the trademark. But I don't think that is a realistic prospect.
4. The term 'The Cloud" has become generic over time and is now used widespread to refer to hosting services, it's so common that I think it may be hard to enforce such a trademark. ( But I certainly not got the bucks or balls no more to fight it out with the big boys ).

However, whilst this has been a costly exercise for me personally, I think we have all gained/learned something useful from this thread, if only a reminder to make sure you do your homework b4 bidding on domains in auction ;-)

 

[RobM]

Get some legal advice rather than listening to members swear here and insult other peoples' intelligence. It shouldn't be costly for a quick couple of questions.

 

[mojoco]

I was under the impression that if you were registered at companies house, it gave you *some* rights. Seems I stand corrected, my apologies @mojoco and thanks for the information.

Thanks Ben.

 

[DesD]

I hate writing this as I really enjoy the general openness of this forum. BUT....if you are worried about being challenged by a third party on a domain name that you've purchased, then putting your full and frank thoughts/concerns on the subject on a relatively easy to find and join forum is not necessarily a good idea in my opinion. It weakens your position, whatever that might be.

 

[PhilGreg]

I hate writing this as I really enjoy the general openness of this forum. BUT....if you are worried about being challenged by a third party on a domain name that you've purchased, then putting your full and frank thoughts/concerns on the subject on a relatively easy to find and join forum is not necessarily a good idea in my opinion. It weakens your position, whatever that might be.

I understand and appreciate your perspective. But It actually helps me a lot, especially if it came to mounting a defense (should the need arise), as it highlights and records my intentions which would be important in a DRS or Trademark case.

The example of TheCloud is more hypothetical and educational as I have no intention of developing it any time soon and also have plenty of alternative options for the project in mind, when the time comes.

The answers people have given have expanded my knowledge on the subject and I have no problem being open. If anything negative comes of it, then such as life, I've not robbed a bank or anything.

But if this is the sort of post that is not really welcome here or unhelpful to others, due maybe to others not wanting to highlight the issue for fear of affecting their own sales or ongoing auctions or something then I'm happy to have this post/thread removed if that's what people want.

 

[DesD]

On the contrary, I think it's a really interesting post and again showcases the knowledge and support that's available through the community. My point was more made for your protection, as opposed to my not being open to this type of discussion. If you're comfortable, then it's all good.

 

[M40]

My uneducated opinion:

The vast majority of people recognise it as a generic term. They don’t associate it with any particular brand. Consumers are used to seeing this term in everyday language by different sources.

Terms like iCloud might have a case as it is widely known to be an Apple service. The domain icloud.co.uk is currently being used by another business.

Perhaps the first person who coined the term might have some rights to it. But even this is unlikely to succeed, eventually even some widely used names become generic.

Example being ‘Sellotape’, a British brand which at one point had the Sellotape trademark.

It is ridiculous to think any person or company has rights to something as generic as The Cloud. I would not waste my time asking a solicitor.

 

[namealot]

I've had a few trademark issues before but nothing similar to this and I was wondering if anybody had any positive advice Or am I screwed ??? The domain is TheCloud(dot)uk

As Shelley Title of same 1818s as a Metaphor for the unending cycle of nature... nowt they could do.....Don't mean it makes it easy to sell but as far as DRS went unless you did something as dumb like trying to pass it off as another company you,d not loose it at all

 

[nvaonline]

you will find many (generic) terms to be trademarked (or in use) somewhere.

 

[PhilGreg]

you will find many (generic) terms to be trademarked (or in use) somewhere, if you are worried about these kind of things you are not for the domaining business i guess, we have had over 10 wipo's and we already have 2 DRS on .uk's from the ror. disputes and claims come hand in hand with domaining (for a living).

I don't think you read all my comments or certainly not understand them. I was after a bit of free input from others on their experiences, plus also laying a paper-trail for any future legal defense as it highlights my intentions etc. But hey, i guess you didn't read those bits!

I've been in IT&Marketing 30yrs and in domaining for 20 and I've had my own trademark ( as mentioned ) and copyright issues over the years, but this was slightly different. Also, I'm not in the business to primarily flip, so maybe I'm not a 'domainer' ;-) Please, save me your arrogance, your answer was not helpful to anyone.

 

[PhilGreg]

As Shelley Title of same 1818s as a Metaphor for the unending cycle of nature... nowt they could do.....Don't mean it makes it easy to sell but as far as DRS went unless you did something as dumb like trying to pass it off as another company you,d not loose it at all

Not necessarily

As Shelley Title of same 1818s as a Metaphor for the unending cycle of nature... nowt they could do.....Don't mean it makes it easy to sell but as far as DRS went unless you did something as dumb like trying to pass it off as another company you,d not loose it at all

My understanding is that it is not necessarily dependent on me attempting to 'Pass Off' but also on "if there is a likelihood of confusion over who owns and operates the domain name". The domain does not need to be developed or active to fall foul of a DRS, it would appear. I'm currently reading through past DRS decisions and it seems that all is not so black and white.

For the moment, this domain will go on the back-burner whilst I focus on other projects, but if I do develop it as intended ( as a SEO / WP Managed Hosting Service for those who's niche is specifically the UK ) then I will seek proper legal advice b4 doing so, as the huge investment in time and money would not be worth taking the risk if it was deemed that I would likely fall foul of any rules/laws/trademarks etc.

 

[lazarus]

The .CO.UK registrant had 5 flippin years to claim their .UK

I'd expect Nominet to take a dim view on any RoR DRS applications..

 

[PhilGreg]

I've got everything I need out of this post now and have to admit I'm sick of seeing it pop back to the top of 'Recent Posts' all the time, as I'm sure everybody else is as well! Anyway, (admin) can it be closed or bumped down or something ? I don't think there is much value in this going round and round.

 

[PhilGreg]

you will find many (generic) terms to be trademarked (or in use) somewhere, if you are worried about these kind of things you are not for the domaining business i guess, we have had over 10 wipo's and we already have 2 DRS on .uk's from the ror. disputes and claims come hand in hand with domaining (for a living).

I completely disagree with you. Disputes and claims do not come hand-in-hand with domaining in my experience, they are either unfortunate and accidental or the result of being sloppy or not caring.

Most experienced 'domainers' that I know of are a pretty savvy bunch who do their best to avoid inevitable headaches by avoiding obvious conflicts. Receiving loads of legal letters, paying solicitors and earning a bad reputation is not a smart way of operating and I think most experienced 'domainers' do their best to avoid this. But there are those with few ethics who intentionally register in bad faith, but it normally does not turn out well. Good luck with all your legal issues though, but personally I'd rather be spending my time developing than sitting in my lawyer's office.

 

[Murray]

Disputes and claims do not come hand-in-hand with domaining in my experience.

Probably depends on scale

If you only have 100 domains you're less likely to get a DRS vs someone with 10,000, even if they're the same type of mix of names

 

[PhilGreg]

Probably depends on scale

If you only have 100 domains you're less likely to get a DRS vs someone with 10,000, even if they're the same type of mix of names

Sure Murray, Scale is definitely a factor, the more you have the more likely you are to step on somebodies toes. But, I think the main factor is using common sense and doing a bit of homework first and that usually is sufficient to avoid conflicts. But yes if you got thousands then your more likely. However, at one point I had over 9,000 .co.uk domains and only attracted 3 complaints ( about 15yr ago), that were the result of my lack of knowledge early in the game. Since then, things have been pretty stress free. However, I have now refined my portfolio down to a more manageable 500, but I get the point your making.