Unregistered rights

[grandin]

Jac, can you ask the chair of the PAB or your friend who is a Trade Mark Attorney this:-

A domain holder has been trading online as a general shopping website (affiliate) under the name bogbrush.co.uk.....they sell many items for the home..including bog brushes

A firm called trick ltd comes along and wants to sell brushes for bogs....he applies to the Patent Office for a trade mark in the name of bog brush (in the class for bog brushes). Cause bogbrush is unique and the Patent office does not check unregistered rights the patent office issues Trick ltd with the trade mark bogbrush.

The firm trick starts trading under bogbrush and bogbrush.co.uk notices this...... what can bogbrush.co.uk do? is Trick ltd. infringing on the rights of bogbrush.co.uk?

Lee



firm called

 

[Jeewhizz]

Well, when they applied for the TM, there would have been a 3-6 month period where bogbrush.co.uk could have disputed it.

They should've got it TM'd...

 

[olebean]

Well, when they applied for the TM, there would have been a 3-6 month period where bogbrush.co.uk could have disputed it.

They should've got it TM'd...

Providing bodbrush.co.uk can prove they traded openly prior to trick ltd then they can challenge the TM... just hope they have deep pockets

 

[grandin]

clarification is this

What I want the trade mark attorney to clarify is this....in law if the owner of bogbrush.co.uk does not know that the pending trade mark is being advertised (most small business don't spend money watching patent journals) then what can bogbrush.co.uk do if the TM is issued to Trick ltd?

Lee

 

[olebean]

Go to court and challenge it if its been approved or alternatively if it hasn't been register, register an objection

 

[retired_member6]

If bogbrush.co.uk was worried about tm they should have got it trademarked. I can only foresee a problem if TM bogbrush wanted to steal bogbrush.co.uk which couldn't surely happen, could it?

 

[grandin]

my angle

lee wrote : If bogbrush.co.uk was worried about tm they should have got it trademarked. I can only foresee a problem if TM bogbrush wanted to steal bogbrush.co.uk which couldn't surely happen, could it?

I write: what i am trying to get at is this 'rights' issue is all one way. Many domain name holders now run legitimate businesses but don't have the spare time, money or understanding to protect their right by gaining a trade mark. The patent does not recognise this prior trading right when issuing a trade mark.....I am trying to determine if small businesses have a cost effective way to gain good advice on their rights in such circumstances

Lee

 

[domaingenius]

lee wrote : If bogbrush.co.uk was worried about tm they should have got it trademarked. I can only foresee a problem if TM bogbrush wanted to steal bogbrush.co.uk which couldn't surely happen, could it?

I write: what i am trying to get at is this 'rights' issue is all one way. Many domain name holders now run legitimate businesses but don't have the spare time, money or understanding to protect their right by gaining a trade mark. The patent does not recognise this prior trading right when issuing a trade mark.....I am trying to determine if small businesses have a cost effective way to gain good advice on their rights in such circumstances

Lee

Well ,as it happens I tried obtaining fee exemption from the £200 fee that the Patent Office charges to challenge a TM application and after a hearing they told me to get lost . Thereforee if you do not have enough to pay £200 you have no rights to even maintain the IP that you already own . If you have time and inclination perhaps you could do it and take it all the way to Court under Art 6.1 denial of access etc etc.

DG

 

[retired_member6]

I know what you're getting at and probably shouldn't have responded as it's patent law, to be, is to exist, therefore it is, so why TM bods have trouble understanding that when issuing these licences as an over-write I don't know. It depends for which class of unregd / regd tm as well I suppose.

I will always argue that domains aren't simply the word they're the address of where a site can be found and the .co.uk / com / single entity are as different as a house at number 96 and it's owner and people inside as it is from an house at number 97... 98... 99 and as long as that distinction is kept and neither trespasses the other, no rights should be found.

So therefore trademark could simply be bogbrush.co.uk as a whole, leaving bogbrush and bogbrush.co.uk to live side by side but in reality I don't know and I'm probably wasting your time.

And yes you're right, legitimate businesses at aURL (I have this, anyone want? haha) either as a sub entity or whole and certain claims of bad practice can see an end to that, perhaps there's a service or range of services that Nominet should/could supply in that respect.

 

[Jac]

Sorry Lee, I just noticed this thread!

Jac, can you ask the chair of the PAB or your friend who is a Trade Mark Attorney this:-

Seems I can't contact either at the moment; perhaps on holiday.

A domain holder has been trading online as a general shopping website (affiliate) under the name bogbrush.co.uk.....they sell many items for the home..including bog brushes

A firm called trick ltd comes along and wants to sell brushes for bogs....he applies to the Patent Office for a trade mark in the name of bog brush (in the class for bog brushes). Cause bogbrush is unique and the Patent office does not check unregistered rights the patent office issues Trick ltd with the trade mark bogbrush.

The firm trick starts trading under bogbrush and bogbrush.co.uk notices this...... what can bogbrush.co.uk do? is Trick ltd. infringing on the rights of bogbrush.co.uk?

The quick answer is what has already been said; it's probably a matter for the Courts. However, for what it's worth, here's my opinion. If a domain name user can show a history of legitimate use, this will always hold them in good stead no matter what dispute they come up against, whether TM or DRS or both. The problems begin (as has been highlighted by various DRS and Court cases) where the domain registrant tries to resell a domain to the complainant or (worse) a competitor of the complainant, or has sought to mislead or misdirect the public in his/her use of said domain (eg: passing off). I have to agree with some of the comments made in this thread, that if you forget or ignore the registration of a trademark that may be important to your online business, you are probably just asking for trouble in the future.

However, just because bogbrush wants to sell brushes for bogs and registers a TM, doesn't mean bogbrush.co.uk shouldn't continue selling online. If I understand things correctly, I can call myself any business name I jolly well want in Surrey, even if someone else is calling themselves exactly the same in Berkshire. It is when we overlap into each other's territory that there may be problems. The internet convoluted trademark rights (and rights in general) because it is global in nature, but I think it is reasonably easy to judge an intentional infringement as opposed to an unintentional one, and I personally believe the DRS and/or the Courts should look at each case on its merits as opposed to referring back to case law. But that, as they say, is my own humble opinion. Sometimes the courts seem to make it up as they go along too in the guise of setting precedent, which is why (as I have said before) they more than not allow for the right to appeal the original decision.

Regards
James Conaghan

 

[grandin]

When!!!

jac you wrote:- If I understand things correctly, I can call myself any business name I jolly well want in Surrey, even if someone else is calling themselves exactly the same in Berkshire. It is when we overlap into each other's territory that there may be problems.

I write:- If the name was boggetbrish......then do you in Surrey have a right to copy me in Berkshire? Clearly I invented the name....do you have a right to copy it in your town and sell the same products?

Lee

 

[Jac]

jac you wrote:- If I understand things correctly, I can call myself any business name I jolly well want in Surrey, even if someone else is calling themselves exactly the same in Berkshire. It is when we overlap into each other's territory that there may be problems.

I write:- If the name was boggetbrish......then do you in Surrey have a right to copy me in Berkshire? Clearly I invented the name....do you have a right to copy it in your town and sell the same products?

Lee

From what I understand about Business Names, and we were required to register them with a government department until about 1982 (I stand to be corrected but I think that's the year) the quick answer is ‘yes’ it would be okay to have a business called boggetbrish in Surrey even if there was a boggetbrish limited (for instance) someplace else. If I understand it correctly, there are various "controlled lists" you must not use and of course the name cannot be a recognised brand like Microsoft or BT or Granada. The obvious proviso being that you must not pass yourself off as someone or some company else.

As I said previously, the arrival of the Internet has brought a global economy so whilst a name may be unfamiliar in the UK, it is entirely possible it may be a top 500 USA company. So it's caveat emptor again; and you should always check to ensure you are not infringing on anyone else's rights.

Words that imply national or international pre-eminence like British, International, Scottish, England, Ireland, Wales, European, National, Welsh, apparently need prior approval from government (maybe thru Companies House) and words that imply business pre-eminence like Association, Council, Institution, Authority, Society, need prior approval too; as do words like Assurance, Co-operative, Register, Training and Enterprise, Provident Society, Stock Exchange and loads others.

The problem, as I see it is this. The internet has convoluted our problems with infringements because anyone at all can challenge a domain name's usage whether in the UDRP, the ADR or the DRS. I am quite prepared to believe and accept that some people start disputes in the .uk domain on a whim and are chancing their arm; and this is something the DRS review also addresses. Fair's fair, and I like to think we can be as fair as reasonably possible to every stakeholder with a grievance (but I am constantly aware that whatever one does, not everybody will be best pleased).

Regards
James Conaghan

 

[grandin]

rights are rights

surely you in surrey is passing off on my good name in berkshire? So if i own bogbbrishbbb.co.uk and sell soap on it and you apply for a trade mark in the same name in the same class as soap you will get a trade mark.....how wrong is that....you are infringing.....the Patent office is misleading both of us...negligent?

Lee

 

[Jac]

surely you in surrey is passing off on my good name in berkshire? So if i own bogbbrishbbb.co.uk and sell soap on it and you apply for a trade mark in the same name in the same class as soap you will get a trade mark.....how wrong is that....you are infringing.....the Patent office is misleading both of us...negligent?

Lee

You are now into the realms of legal stuff that I wouldn't be able to offer an opinion on... but then again... legal opinion differs significantly in these instances anyway; which is probably why every threat of legal action usually adopts an aggressive and adversarial stance (presumably in an attempt to stamp some oftimes misguided sense of authority on the other party).

Let's talk about "used to be".
I know from experience that it is possible for two companies of the same name to exist in different locations because certain businesses used to be conducted 'locally'... eg: plumbing, electrical, carpentry, pest control, printing, publishing, etc. The advent of (1) franchising and (2) the internet changed all this and I think this is where many of the disputes arise these days; because each company may want to compete on a national or even international level. So; it used to be quite possible to call yourself ABCD and for someone else to call themselves ABCD Surrey. If one or other sole traders (or limited entities) objects, it is only then that the legal threats start; but if they don't object (and many don't) they obviously don't perceive the other as a threat. If a trademark is eventually registered to ABCD, I would suggest that ABCD Surrey could still quite lawfully co-exist but only if the now trademark holder doesn't feel threatened. It is only when people and/or businesses feel threatened that they take legal action (or DRS disputes).

As an aside, I personally think it was completely wrong of Stelios Haji-Ioannou of EasyJet to embark on his legal crusade (a few years ago) against anyone using "Easy" in their domain name. The premiss was all wrong and in my opinion his actions amounted to nothing less than bullyboy tactics.

So it isn't that I don't understand or have sympathy with your viewpoint, I just think none of us can (or should) pre-judge what might happen in a DRS or Court Case.

Regards
James Conaghan

 

[olebean]

Jac

Can we add co-existance also occurs through differning TM categories, which is totally legitimate, this is where there is disparity in the sense of domains.

What category of content a website contents?

 

[Jac]

Jac

Can we add co-existance also occurs through differning TM categories, which is totally legitimate, this is where there is disparity in the sense of domains.

Personally, I think this is a fair point. Perhaps you can raise it as a question at the Nominet meeting you are attending on the 22nd June?

What category of content a website contents?

I'd say it would depend on the website contents per se. If someone has a domain name (say) www.pcworld2.co.uk pointing at computer stuff, then I think it might upset PC World and they would have a legitimate dispute if it is affecting their business and trading name. But if www.pcworld2.co.uk pointed at a Anti Political Correctness website, I would personaly see no real problem.

A lot of domain names disputes seem to hinge on intent, so someone is going to have to decide or judge if there intent was there in the first place, and indeed, if that intent was to mislead, misdirect, or 'pass off'. They can only do that by looking at all the available evidence (which is why it is difficult to prejudge a DRS or court case).

Regards
James Conaghan

 

[olebean]

Personally, I think this is a fair point. Perhaps you can raise it as a question at the Nominet meeting you are attending on the 22nd June?



I'd say it would be depend on the website contents per se. If someone has a domain name (say) www.pcworld2.co.uk pointing at computer stuff, then I think it might upset PC World and they would have a legitimate dispute if it is affecting their business and trading name. But if www.pcworld2.co.uk pointed at a Anti Political Correctness website, I would personaly see no real problem.

A lot of domain names disputes seem to hinge on intent, so someone is going to have to decide or judge if there intent was there in the first place, and indeed, if that intent was to mislead, misdirect, or 'pass off'. They can only do that by looking at all the available evidence (which is why it is difficult to prejudge a DRS or court case).

Regards
James Conaghan

Jac

I must agree with you, but, that assumes that a right exists, that a "passing off" measure could occur and is not knowledge of an item etc by a specialist or court, which bring an element of prejudice... intent to mislead and/or misdirect are fairly subjective....

As an example: I could be called Pam Anderson or be a Fan legitimate ways to own a domain called PamAnderson.co.uk however, if i regged it at eurodns they automatically add sedo parking pages to the site.... It is highly unlikely that on the balance of evidence an expert could conclude there wasn't some misleading or misdirection.. If the real intent was to create a site related to the former, prioritised rights towards the actress would likely occur... (do bare in mind this is an example of what is plausible and may not happen in reality)

 

[grandin]

interesting

jac you wrote : I'd say it would be depend on the website contents per se. If someone has a domain name (say) www.pcworld2.co.uk pointing at computer stuff, then I think it might upset PC World and they would have a legitimate dispute if it is affecting their business and trading name. But if www.pcworld2.co.uk pointed at a Anti Political Correctness website, I would personaly see no real problem.

A lot of domain names disputes seem to hinge on intent, so someone is going to have to decide or judge if there intent was there in the first place, and indeed, if that intent was to mislead, misdirect, or 'pass off'. They can only do that by looking at all the available evidence (which is why it is difficult to prejudge a DRS or court case).

I write : I think this is a bit misleading. Jac you said 'if that intent was to mislead, misdirect, or 'pass off'....I do not disgree with this. The example www.pcworld2.co.uk is clearly doing that if you sell computers or similar on the site....BUT the DRS says 'take unfair advantage'.....this is not decisive...to what degree is it unfair....The rights owners of Barbie claimed that it was unfair to sell in a different class because it was such a big brand.....the law decided that not to be true.....can we rely on the Patent Office.....For instance I do not know if its legally acceptable to take traffic that is clearly linked to another brand even if I am selling a product that the Patent office has said is not linked....if know one can answer the question then how can you expect the domain name owner to lose the domain name without a warning or pay court costs etc.....

Very unfair....knowledge is power and the knowledge is what I do not have

Lee

 

[aqls]

In the first instance it should be the useage of the domain name that is the determining factor.

If you are warned not to pass off then you must change content.

That is the end of it.

Persistent offences may perhaps eventually lead to change of ownership of a domain name.

There should be a remedial stage.

-aqls-

 

[olebean]

In the first instance it should be the useage of the domain name that is the determining factor.

If you are warned not to pass off then you must change content.

That is the end of it.

Persistent offences may perhaps eventually lead to change of ownership of a domain name.

There should be a remedial stage.

-aqls-

I don't think you are too far wrong.

I would prefer it, like TM if you infringe you are sued ie Apple

End off for me