One for the domainers .

domaingenius · Mar 7, 2006

Cannot say for now the name in question (its a .com) but can say that on basis of my submission, i.e. that I have a domain name in the exact name a party was seeking a TM in the TM office have refused, absolutely, to grant a TM to that third party on the same name.

DG

aqls · Mar 7, 2006

Are you saying that because of your ownership of the domain, they cannot get the TM where they probably could have done had you not owned the domain?

wow!

-aqls-

olebean · Mar 7, 2006

DG

Are they appealing?

domaingenius · Mar 7, 2006

aqls said:
Are you saying that because of your ownership of the domain, they cannot get the TM where they probably could have done had you not owned the domain?

wow!

-aqls-

Cannot say for certain because they didnt reply to my letter (a letter the TM people take in to account) but for sure they refused the application and can only presume it is because I was using the domain properly for business. What you have to bear in mind is that if you are using a domain for any purpose that is sufficient to ground some rights in the name even if you might intend selling it in due course. i.e. even though you may have lots of domains,if you are using them even just for minor things there is nothing in law to say that you do not have some rights in that name.

DG

domaingenius · Mar 7, 2006

olebean said:
DG

Are they appealing?

Not sure as yet but I doubt it as refusal was "absolute".

DG

bb99 · Mar 7, 2006

Very interesting and, I think, very positive.

Thanks for the info.

Nigel · Mar 7, 2006

Good to hear about this domaingenius

And it's about time the patent office routinely checked domain names to see whether a UK based company/individual (such as yourself) is earning legitimate money from a domain name before they hand out trademarks for exactly the same words. I'm sure they must check the Companies House register so they really ought to check for domains as well. Unless you happen to check the trademarks register from time to time there is absolutely no warning given that someone is about to be given superior rights to a name that you thought about and registered long before they even thought of the term. That can't be right.

olebean · Mar 7, 2006

DG

If you don't mind, can you keep us posted on whether they appeal and outcome etc

domaingenius · Mar 7, 2006

Nigel said:
Good to hear about this domaingenius

And it's about time the patent office routinely checked domain names to see whether a UK based company/individual (such as yourself) is earning legitimate money from a domain name before they hand out trademarks for exactly the same words. I'm sure they must check the Companies House register so they really ought to check for domains as well. Unless you happen to check the trademarks register from time to time there is absolutely no warning given that someone is about to be given superior rights to a name that you thought about and registered long before they even thought of the term. That can't be right.

Yes exactly. Just because they are usually large companies they seem to think that they have some god given right to any name they want.Well as far as I am concerned they arent as will fight any attempts tooth and nail. The only mistake one can make in litigation or fighting a TM application is to appoint a solicitor as 99.99% are total ankers.

DG