Domain Manage

Trademark or Not? How to Tell?

Discussion in 'New Domainers' started by armengrecotech, Oct 28, 2009.

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  1. armengrecotech

    armengrecotech Member

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    Hi guys!

    I'm looking at these .co.uk extensions:

    - runtime
    - mclaren f1
    - zappo

    Say if I registered these domains. Would a company actually track me down and sue me for having such names? I mean, especially for runtime and zappo, are those trademarked?

    How can I be sure?

    And another question: how can domains, for example, "microsoftcourses" be used in a .co.uk without being caught?

    I don't get the deal. If someone could explain, that would be fabulous!

    Thank you! Cheers mates!
     
  2. Domain Forum

    Acorn Domains Elite Member

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  3. getmein United Kingdom

    getmein Active Member Exclusive Member

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    The uk IPO offers an online search tool

    Intellectual Property Office - Trade marks - find by mark text or image

    So you can look at the terms and also the use of the trademark. It's such a massive area of law that you'll need to do a lot of research to start understanding the considerations(i.e classes of use, abusive registration etc). As TM relates to domain names there are lots of published WIPO and nominet DRS decisions which you should familiarise yourself with.

    I would avoid anything with 'microsoft' in it, they are particularly aggressive at protecting their IP rights, unless you can illustrate bonafide use and even then I'd take legal advice. If it's a speculative registration I'd forget it if I were you.
     
  4. retired_member21

    retired_member21 Retired Member

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  5. namealot United Kingdom

    namealot Well-Known Member

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    Trademark provides the owner an individualized right to use a distinctive mark, sound, word etc, to indicate a particular source and quality of branded goods or services.

    E.g. Levis jeans would say all there jeans are made of 100% denim, triple stitched, blue colour etc and all clients buying them would know that they meet a certain standard.

    Some can also have copyright e.g. Levis might design jeans in a certain way so they would have copyright for the design and trademark for the name if you were to copy there design and put there name on the jeans they would hit you with a double infringement of both copyright and trademark….

    Just because someone owns a trademark/copyright does not mean that they have to pursue every breach… They will way up if the breach benefits them; if it does may either not act or acknowledge the breach at that particular time. Then when it suits them they will.

    They may also have granted a dispensation that does not mean they endorse the company but just that they have allowed them an exemption or release from an obligation or rule,

    Basically if its someone elses trademark or copyright you can find yourself in deep S**T
     
  6. retired_member13

    retired_member13 Banned

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    Domain names containing service marks (marks that are identifiable as being connected to a trademark or service) or trade marks on UK extensions are open to DRS actions if the registration appears to be abusive.

    This basically means that you can register domains containing other people's marks, provided you use them in a way that does not infringe on the rights of the mark holders. This is further complicated by the uniqueness or individuality of the mark you are infringing - the more unique the trademark the less likely you are to be able to prove that the use is not abusive.

    Something like runtime would be fine for running, and runtime is a generic term in any case. However, if you were selling Runtime Products then you'd be infringing rights.

    Sometimes trademark holders will grant permission to 3rd parties to use their marks in service offerings - eg a vauxhaul dealer using vauxhall marks in their operations - but you need to apply for this permission in advance.

    Basically, if you're going to spend time and money setting up an online service, if you use someone else's mark then the chances are they will leave you be (unless they are highy aggressive about it like McDonalds or Lambretta), until such a time as the business you are building gets a profile or is profitable - then they'll more than likely hit you with a C&D first, then a DRS - and also possibly a UK Court case if it goes that far.

    Not really then best idea IMO, as if you lose, then you lose the business you've built.

    If you're buying the names to park, then the chances are that the ads that are shown will be infringing.

    The only time I would say it's worth it is if the domain has generic value. Ie if you were able to buy Orange.co.uk and then not try to sell phones on it.

    Regards

    Ty

     
  7. accelerator United Kingdom

    accelerator Well-Known Member

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    If they have taken out intellectual property protection such as UK trademarks, it is quite possible.

    My advice to you, and anyone starting out, would be to avoid registering a domain that contains anyone else's brand or intellectual property. There are plenty of opportunities to build a successful online business using generic terms (or if you wanted, your own made up brand names), it is not necessary to infringe other companies IP rights. Ultimately this gets domainers and affiliates a bad name, and it can also end up with legal action against you.

    My advice is stick to the generic terms and build up your business from there. Brand names can be used in the page file names on your site for SEO purposes.

    Rgds
     
  8. springer United Kingdom

    springer Active Member

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    Also, beware of unregistered marks where a tort action in passing off could be successful. Therefore, just because a mark is not in the IPO database (or the European Community TM database) then it does not mean a mark is not protected in law.

    Ty summed it up very well.
     
  9. retired_member12

    retired_member12 Retired Member

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    The element of unregistered rights also tends to drift into the registered/unregistered design rights field. More often applied to the physical appearance of a product, it can be a true mine field for the uninformed jo. A good lawyer can twist what is essentially a patent based rights system on the basis of appearance, and chase one's arse right up to, and through, the civil court doors.
    Whilst the registered design rights are typically protected by a patent, the unregistered design rights have no need to be registered. They are just 'there' based on some unique feature. This principle was established in the UK in the early 1990s, and it has real teeth in a civil action (or the threat of one!). It runs for 10 years, the first 5 years no one can copy your 'uniqueness', the second 5 years they can based on established royalty payments. In 2003, The EU adopted the same principles.
    As is typical in such instances though, if it can be demonstrated that the original design rights owner was aware of a potential breach, but failed to act to protect it, they can damage any future claim of rights against the offender in question. This principle also rolls over into the registered design rights arena, aka the Psion/Netbook cease and desist actions taken out last Christmas.
     
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