DRS Opinion

[khalid]

To avoid any legal backlash I'm going to replace the actual company name with "All Star Property".

I could use some opinions please...


All Star Property Ltd has been running for 10 years.

The company has allstarproperty.co.uk

The company has a trademark on a logo with "ASP" in it with the words "All Star Property beside it.

The company is commonly known as "ASP" for short and "ASP Homes"

In 2011, after the company, domain and trademark, a "non-entity" in England registers a domain as "asphomes.co.uk"

The "other entity" does exactly the same as All Star Property".

Would this be classified as an abusive registration?

 

[tifosi]

Putting asside the trademark passing off arguments, the drs 'experts' DO tak into account the common knowledge factor when determining the weight of abusive registration.

What does the asp in asphomes stand for? Is is a company acronyn? Is it a persons initials? Is it a snake? How the company brands itself and the sectors in the property/housing market it is involved in, as well as the way it goes about the marketing/advertising are important.

No easy answer. IMO without additional details, no. Again, thats for the drs, not trademark aspect!

For the trademark if the asphomes branding is suitably different from the allstarproperty then I don't think that's a conflict either. I'm no IP expert though!

 

[foz]

Would "ASP Homes" have prior knowledge of "All Star Property"?

Are they at different localities in the Country?

 

[Bailey]

I see you mention a TM on the logo with words (and not the words alone)

That makes it quite a different ball-game.

One can normally assume, in that case that the "wording TM" would not have been granted. If it is just the Logo thats protected then one can also assume that the wording alone is fair game providing it's not presented in the style of the 'Logo Mark'

But, as mentioned cases need to be examined indivually to get a feel for any infringement

 

[khalid]

What does the asp in asphomes stand for? Is is a company acronyn? Is it a persons initials? Is it a snake? How the company brands itself and the sectors in the property/housing market it is involved in, as well as the way it goes about the marketing/advertising are important.

ASP stands for All Star Property in this instance. Three common words.

Would "ASP Homes" have prior knowledge of "All Star Property"?

Are they at different localities in the Country?

One is in Scotland, one is in England so that's difficult to answer but I would like to think ASP Property is very easy to find.

The company has been trading for 10 years.

I see you mention a TM on the logo with words (and not the words alone)

That makes it quite a different ball-game.

One can normally assume, in that case that the "wording TM" would not have been granted. If it is just the Logo thats protected then one can also assume that the wording alone is fair game providing it's not presented in the style of the 'Logo Mark'

But, as mentioned cases need to be examined indivually to get a feel for any infringement

Correct, the wording alone "All Star Property" would not have been granted alone as it is 3 common words hence why it was trademarked with the logo.

 

[Bailey]

Correct, the wording alone "All Star Property" would not have been granted alone as it is 3 common words hence why it was trademarked with the logo.

Then this is NOT going to be seen as an "abusive registration" in either TM law or a DRS

 

[khalid]

Then this is NOT going to be seen as an "abusive registration" in either TM law or a DRS

Bearing in mind this individual has then made directory submissions etc with his details and now ranks for the trademarked term.

I'm sorry I can't be more clearer I don't want to say much more.

I've raised a DRS and will see what happens.

 

[Bailey]

I'm sorry but you don't have or hold a "trademarked term" - if I understand you correctly.

You have a "Trademark Design"

"TM designs" are their to protect your 'identifying mark' - The words are only protected within the realms of the design registered and offers NO protection to the words in isolation -Whatever the class of usage

I hope you take some legal advice before commiting too much Khalid - I know your a sensible guy, so i'm not trying to teach you to suck eggs

 

[khalid]

I'm sorry but you don't have or hold a "trademarked term" - if I understand you correctly.

You have a "Trademark Design"

"TM designs" are their to protect your 'identifying mark' - The words are only protected within the realms of the design registered and offers NO protection to the words in isolation -Whatever the class of usage

I hope you take some legal advice before commiting too much Khalid - I know your a sensible guy, so i'm not trying to teach you to suck eggs

Appreciate that bud. If I presented all the evidence I have in front of you I'm sure you'd agree it is too much of a coincidence.

Although coincidence is not something that makes or breaks a DRS I think it was worthwhile putting one in anyway.

We'll see how it goes

 

[Bailey]

No problem mate - It is of those areas where I have been through the Loop as a respondant, I'm pretty clued-up on TM law anyway, But, I made sure of my ground before responding - Result = Complaint withdrawn

 

[namealot]

You can argue there identity is what there registered at company’s house by etc.? The words properties and home I’d say are too common to argue over no one could have exclusive right to them. The combination of words before and why the other has used the abbreviation? If the other company trades then asphomes is not the same as allstarproperty and the trademark logo text is not the same as just text? You could easily argue that by not registering trademark “asphomes” and registereing the other they have choosen to be not known as that?
The commonly known as is very subjective by whom? is that what they answer there phones as, what is written on payments to them, name used to pay bills, registered with there bank, on there tax bills on there rates, water, phone bills etc or just within the company and a few companies they deal with you can argue locals business they deal with etc would also know what there website was called and there contact details etc? There also known as the lll should they get exclusive right to that also?

If they wanted to be known as asp homes they should have registered the company under that? You could say down to the argument they put up and if the other side responds at all but I don’t see a strong case?

 

[Bailey]

Apologise, If I appear overly inputting here -

keep in mind namealot - A Company registration signifies nothing as far as "text or word" protection goes. it is purely a legal operating status for an entity.

You can have dozens of companies all operating under the same name in the same area of business, Possibly two even in the same geographical area (Not that i'd understand why somebody would want to)

A quick look through Companies House register will show you just how duplicated names are and indeed in the same area of business. Equally NOT registering as a Company has no legal significance in the rights of domain registration

 

[foz]

One is in Scotland, one is in England so that's difficult to answer but I would like to think ASP Property is very easy to find.

If they are operating in such different localities what exactly is your clients concern? Does your client intend to supply or cater to the Scottish area?

 

[foz]

I've raised a DRS and will see what happens.

You've done this before seeking a legal opinion? DRS is serious and costly business especially if Solicitors are involved (the respondent may see fit to be represented by one). I would be sure of the situation first.

 

[khalid]

If they are operating in such different localities what exactly is your clients concern? Does your client intend to supply or cater to the Scottish area?

The concern here is

a) Potential clients are possibly hitting this website and we are losing revenue

b) By allowing this company to continue operating they could well come into Scotland

You've done this before seeking a legal opinion? DRS is serious and costly business especially if Solicitors are involved (the respondent may see fit to be represented by one). I would be sure of the situation first.

From my understanding of a DRS it is free to lodge and costs are only incurred if you want to fight it or get an expert opinion.

I feel that it is a reasonable step to take under these circumstances.

 

[namealot]

Apologise, If I appear overly inputting here -

keep in mind namealot - A Company registration signifies nothing as far as "text or word" protection goes. it is purely a legal operating status for an entity.

I agree but add that is also dependant on the exclusivity uniqueness of the word classes registered etc but the status of which they wish to be known is very subjective I don’t believe they have trademark or a company registration of the word. It’s certainly not what there actually legally identifiable as?

You can have dozens of companies all operating under the same name in the same area of business, Possibly two even in the same geographical area (Not that i'd understand why somebody would want to).

If a company wished to be known as the same as another already existing then that can and does occur but the existing company can object/appeal a company registration or mark etc using the bases of the being the first company registered (among other things) That’s not to say they would have exclusive rights or would win just that’s its grounds to do so?

Marks have become a bit tricky of late and its not uncommon for want of a better word for them to be squatted etc for the purpose of acquiring domains etc or for marks to be allowed that really shouldn’t or that would not withstand any appeal.


If the name was mine and DRS'd I would deffo respond I don't think the others would win but like I said depends on if they do or not?

To add would they have been bothered if the other was not listing as high…

 

[Bailey]

I hear what you are saying namealot - but, it has been established that a registered Trademark for the' term' Does NOT exist, The one in existence is only for the associated logo or 'Stylised Words'.

One should never see the registration of a TM logo ( A drawing with or without words) as a substitute for an unobtainable "Trademarked term" the rights of the respective owners are Worlds apart

The rights and wrongs of TM's and the subsequent confusion never cease to amaze me. but it really is 99% common sense when you take the overall structure of Trademark Law - and not pick and choose which elements you want to apply, depending on your particular side of the fence.

Which unfortunately TM holders seem to love doing (or at the least attempting) I accept the same can be said of the 'Infringers'

 

[namealot]

I hear what you are saying namealot - but, it has been established that a registered Trademark for the' term' Does NOT exist, The one in existence is only for the associated logo or 'Stylised Words'.

One should never see the registration of a TM logo ( A drawing with or without words) as a substitute for an unobtainable "Trademarked term" the rights of the respective owners are Worlds apart

The rights and wrongs of TM's and the subsequent confusion never cease to amaze me. but it really is 99% common sense when you take the overall structure of Trademark Law - and not pick and choose which elements you want to apply, depending on your particular side of the fence.

Which unfortunately TM holders seem to love doing (or at the least attempting) I accept the same can be said of the 'Infringers'

We both agree company “A” has no trademark or company registered in that name (although not what company “B” has could have none, one or both ) I see any argument “A” has would be subjective as to "that’s what we are locally known" as can’t see that being a winner.

If you've gone to the bother of registering a "trademark" text, logo or whatever be sure its right (if they searched and found no such one? give them more ammunition ) If you wish to be known as something register it as both a trademark and company name the same (this strengthens any legal challenge)

 

[Bailey]

At the end of the day - There is "wishful Thinking" about how TradeMark Law works and is applied. And then there is "Actually" how it Works and is applied.

It is understandable that domainers sometimes get it wrong but to be a "holder" of a restricted type of TM (stylised Logo or words) and not understand its Parameters is always concerning. in fairness it's not infrequent for small/medium businesses to get it wrong.

Guess the best hoped for outcome here (given its a fellow Acorner) is the 'Complaint' is not responded to and the adjudicator doesn't strickly apply the guidlines And a default win. (though imho, this particular complaint has a very good chance of being rejected by the DRS panel before it's issued)

Wouldn't want to see the Respondent challenge it though, that would be time to step-back and get qualified legal advice before the costs mount up

 

[foz]

From my understanding of a DRS it is free to lodge and costs are only incurred if you want to fight it or get an expert opinion.

I feel that it is a reasonable step to take under these circumstances.

It's interesting you value time (spent) as free. If you are not going all the way to expert decision what do you intend to achieve in mediation? The respondent is not going to be very malleable receiving a complaint without prior warning, that is a direct discussion with them over your clients concerns.

I fail to see what abusive grounds you have come up with. Rights in a name or term is not enough, abuse has to be present. If the respondent has organically started up and was unaware of your client then I don't think you have a case. Again I would seek legal advice from a solicitor such as Adam at Adlex.