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

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

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

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

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

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

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