Is this in your opinion a trademark issue ?

[snuzzy]

Hello everyone

Thanks for all your replies so far in other thread and many helpful and encouraging posts and messages

I would like to ask you a question if you don't mind

Let's say there is a company called Banana.com or Steel.com or Iron.com , whatever it will be the word is not so important but it is for sure any english word that you can find in a dictionary.

Let's say there is a company in USA called Banana.com and is trademarked with "r" sign , for sure.
Now let's say someone owns a domain name Banana.de or Banana.co.uk , that company opens their regional offices in accordingly Germany or United Kingdom and they will be likely to get that domain name sooner or later I mean Banana.de for Germany or Banana.co.uk for UK

Will they have rights to overtake this domain for free from you or they will have to pay for it ?

I heard here in Poland we had a case which was about Microsoft.pl and probably ( I am not sure ) they company might have lost a trial , since they were just local herb provider they had to pay in the court and give the domain for free , and I am not really sure also if they havent had this domain long time before Microsoft was established, anyway I am really interested in an answer regarding the above question.

Thank you and best wishes !

Lucas

 

[aZooZa]

http://rychlicki.net/inne/X_GC_1245-03.pdf

 

[TallBloke]

Your microsoft.pl case is not the same as generic words such as banana, steel or iron. Microsoft is a brand name, not a generic.

Unless the Polish word for 'herbs' is 'microsoft' it's hard to see how the Polish herb company registered their domain ahead of Microsoft Corp without any knowledge of the software company.

Ultimately you can understand why the herb supplier lost the legal case.

If the company had manufactured "micro soft" cleaning clothes since 1950 then maybe they'd get to keep the domain.

I'm no expert - anyone else have a view?

 

[Edwin]

There are several layers here.

1. The company called "banana"
If it's "well known" (which may be a test for lawyers) then its existence might prevent other companies from calling themselves "banana". And certainly, company names are supposed to be unique at Companies House (though there do seem to be exceptions) But that's only for "banana" itself - if a company wanted to call itself "hot banana" or "banana split" or whatever, then that shouln't cause a problem. Although if "hot banana" wanted to do EXACTLY the same thing as "banana" there's a possibility that "banana" might get the lawyers in at a later date claiming deliberate confusion.

2. The trademark on "banana"
Trademarks are granted for a class or classes. Especially in the case of a generic word, the existence of the trademark cannot stop other companies using the word for products/services in classes not covered by the trademark. A trademark also cannot stop the word being used generically, because it shouldn't be granted in the class that the generic use would fall under. Tesco calls an apple "apple" even though there's a super-famous and famously lawyer-happy company Apple.

3. The domain name "banana"
In a dispute, rights have to be proven AND bad faith demonstrated. But the dispute resolution process also depends to some extent on the whim of that particular expert or panel of experts - they get it right most of the time, but there have been some eye-watering misses over the years. So there's no 100% answer here. However, if the word is genuinely as generic as "banana" and the owner of banana.co.uk (or whatever) never ever ever does anything to even hint at a relationship between "banana.co.uk" and whatever product Banana (company) is selling, then they should be ok. But ok isn't the same as saying they won't be challenged in a dispute - simply that if they put in a reasoned defence, they should win. However, if the domain owner provides ANY ammunition whatsoever to Banana through the use of their domain or how they talk about it, and all bets are off.

(4. Market perception
I've put this in brackets because it doesn't really fit with the above, but it's still worth talking about briefly. If you owned apple.co.uk then its value would be hugely impaired by the existence of Apple the company. Why? Because you would have to sell it to a company growing apples or making stuff from apples - or wait for a company to come along who want to call their XYZ "apple" - but because of Apple, it's unlikely that "apple" will end up as the shortlist of possible brand names on a sensible company's list of ideas on a whiteboard. So it's not worthless as a domain, but it's almost certainly worth much less than if Apple wasn't the largest company on the planet)

Important: if the word isn't generic, then NONE of the above applies!