Jeewhizz

I have a domain that has a TM registered within the UK on classes 9, 35, 36, 42. This restricts my use of the domain in an IT related way pretty much:

My query is this, could I use the domain for an sms-related site. I.e. one of those shortcode sites that delivery info/ringtones etc back to the user? I can't see anything specific in the TM classes relating to that apart from

Is this meant via WAP/GPRS, or via SMS?

Cheers,

Jee

aqls

It looks like they've got the IT trademarks pretty well sewn up.

Does the trademark holder do that? In which case it's passing off aswell!

(but don't take my word for it !)

Ask an expert - Beasty?

-aqls-

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grandin

Did the TM include a graphical representation? Will your graphical representation be confusingly similar to theres?

Lee

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Jeewhizz

No graphical representation.

It appears the holder of hte TM is a small time Ltd Company that does contract IT related work for government. Looks like a one-man job (he has his cheesy photo on the website!)

Jee

grandin

We all should be aware of the diminishing power of the TM ACT 'Earlier this year the Patent Office consulted on how, in the future, the relative grounds for refusal contained in the Trade Marks Act 1994 (“the Act”) should be dealt with. After taking into account the views expressed in response to the consultation we then published our Minister’s decision on how we should proceed.

In summary, the Registrar of Trade Marks will no longer refuse to register a new trade mark application in the face of an earlier conflicting trade mark unless the owner of the earlier mark successfully opposes the new application. The Registrar’s examiners would, nevertheless, still conduct a search as part of the examination process and would inform both the applicant for registration of the results of the search and also the owners of earlier conflicting trade marks identified in it if, and when, the application proceeds to publication.

Having decided what the policy should be, consideration has now been given to the legislative changes that are required to bring this policy into practice'

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Jeewhizz

Interesting

On a further note, after more investigating, it looks like the company holding the TM are now in liquidation! So I could either make an offer on the TM to the liquidators, or just wait for them to liquidate, and then I assume, I am safe to use the domain for any purpose, or indeed, register the TM in the same classes?

Jee

grandin

What date was the tm regd? You can apply for trade mark revocation if the name hasn't been used and is over 5 years old.....also interesting to note that TM registration does not protect you in law....the experts should not rely on mere registration as evidence of use is required to oppose later TM's. that appear to be confusingly similar to earlier marks.....complicated but it doesn't all seem as clear cut as the experts seem to think it is....this is probably why the experts made a statement that they do not consider trade mark infringement/passing off....they merely follow the drs....that then leads me onto the contract of registration that requires you to break the trade mark clause in order for nominet to cancel your registration. Nominet seem to think that you do not have to be in breach of your contractual duties for them to cancel your contract under the drs decision 'transfer'

loop hole

Lee

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