Potential TM issue?

[Jeewhizz]

I have a domain that has a TM registered within the UK on classes 9, 35, 36, 42. This restricts my use of the domain in an IT related way pretty much:

Class 09:
Computer software, firmware and hardware; computer software, firmware and hardware for testing the security and reliability of web sites, encryption methods, Internet connections and electronic data connections; computer software, firmware and hardware for providing financial and market information and statistics; computer software and non-printed publications, all provided by telecommunications networks, by online delivery and by way of the world wide web and interactive television; data storage devices; magnetic data carriers; non-printed publications; CDs; CDROMs; software or information encoded or stored on tapes, discs, CDs or CDROMs; parts and fittings for all the aforesaid goods.
Class 35:
Business investigations; investigations into financial and market information and statistics; business management; business administration; office functions; preparation and provision of business information and statistics; business appraisals, information, advice, inquiries, investigations and research; commercial information agencies; economic forecasting; market research and studies; modelling for advertising or sales promotion; statistical information; database management; data processing.
Class 36:
Business appraisals for financial information; provision of financial information; financial analysis, information, consultancy and evaluation; evaluation of finance statistics; measuring a company's financial health; financial risk evaluation; providing financial and market information and statistics; financial affairs; analysis, consultancy and information services relating to finance, provided on-line from a computer database, by online delivery and by way of the world wide web and interactive television.
Class 42:
Consultancy, advice, assistance, analysis, design, evaluation and programming services relating to computer software, firmware, hardware and information technology; consultancy, advice, assistance, analysis, design, evaluation and programming services relating to the security and reliability of web sites, encryption methods, Internet connections and electronic data connections; consultancy and advice relating to the implementation of computer software, firmware, hardware, information technology and of data processing systems; rental and licensing of computer software, firmware and hardware; leasing access time to a database; computer programming services; provision of information relating to information technology and integrated services digital network systems, including that provided by telecommunications networks, by online delivery and by way of the world wide web and interactive television; updating and maintenance of software; integration of software, firmware and hardware systems.

My query is this, could I use the domain for an sms-related site. I.e. one of those shortcode sites that delivery info/ringtones etc back to the user? I can't see anything specific in the TM classes relating to that apart from

provision of information relating to information technology and integrated services digital network systems, including that provided by telecommunications networks

Is this meant via WAP/GPRS, or via SMS?

Cheers,

Jee

 

[aqls]

It looks like they've got the IT trademarks pretty well sewn up.

Does the trademark holder do that? In which case it's passing off aswell!

(but don't take my word for it !)

Ask an expert - Beasty?

-aqls-

 

[grandin]

Tm

Did the TM include a graphical representation? Will your graphical representation be confusingly similar to theres?

Lee

 

[Jeewhizz]

No graphical representation.

It appears the holder of hte TM is a small time Ltd Company that does contract IT related work for government. Looks like a one-man job (he has his cheesy photo on the website!)

Jee

 

[grandin]

Tm rights

We all should be aware of the diminishing power of the TM ACT 'Earlier this year the Patent Office consulted on how, in the future, the relative grounds for refusal contained in the Trade Marks Act 1994 (“the Act”) should be dealt with. After taking into account the views expressed in response to the consultation we then published our Minister’s decision on how we should proceed.

In summary, the Registrar of Trade Marks will no longer refuse to register a new trade mark application in the face of an earlier conflicting trade mark unless the owner of the earlier mark successfully opposes the new application. The Registrar’s examiners would, nevertheless, still conduct a search as part of the examination process and would inform both the applicant for registration of the results of the search and also the owners of earlier conflicting trade marks identified in it if, and when, the application proceeds to publication.

Having decided what the policy should be, consideration has now been given to the legislative changes that are required to bring this policy into practice'

 

[Jeewhizz]

Interesting

On a further note, after more investigating, it looks like the company holding the TM are now in liquidation! So I could either make an offer on the TM to the liquidators, or just wait for them to liquidate, and then I assume, I am safe to use the domain for any purpose, or indeed, register the TM in the same classes?

Jee

 

[grandin]

date of reg'd

What date was the tm regd? You can apply for trade mark revocation if the name hasn't been used and is over 5 years old.....also interesting to note that TM registration does not protect you in law....the experts should not rely on mere registration as evidence of use is required to oppose later TM's. that appear to be confusingly similar to earlier marks.....complicated but it doesn't all seem as clear cut as the experts seem to think it is....this is probably why the experts made a statement that they do not consider trade mark infringement/passing off....they merely follow the drs....that then leads me onto the contract of registration that requires you to break the trade mark clause in order for nominet to cancel your registration. Nominet seem to think that you do not have to be in breach of your contractual duties for them to cancel your contract under the drs decision 'transfer'

loop hole

Lee