trademark legalities.

[boho]

This is one for the legal eagles!

I have a number of domains registered for various regions with the same domain name, however the .co.uk of this is already taken.
The person who registered it doesn't seem to have done anything with it in the year and a half that they have had it.

What I am wanting to do is register a trademark in the UK for the exact words of this domain (three dictionary words) for a particular industry. Now.. I know that this does not give me any legal force to take the domain from the person who registered it. But, does this give me any power in restricting their use of this domain name? ie; can I stop them from using this domain for selling the exact same product in the industry that I have registered the trademark?

thanks

 

[domaingenius]

. But, does this give me any power in restricting their use of this domain name? ie; can I stop them from using this domain for selling the exact same product in the industry that I have registered the trademark?
thanks

Yes ,UNLESS they can show/prove that they were using the domain for that CLASS (trademark class) that you have registered it for. then they could claim prior rights. I.e. lets say they have a domain name called fredbloggs.co.uk and were using it to sell mobile phones in anyway. If you then obtained a trademark for selling mobile phones you would have a problem. If you obtained a trademark for selling flowers or anythign not confusing with mobiles you will be ok

DG

 

[boho]

cool.

So if say the domain was wizza.co.uk, and I trademarked the name "wizza" as a travel company. In theory, from what you are saying. I could stop them from using wizza.co.uk for anything travel related?

What if the domain was wizzatravel.co.uk and i trademarked the name
"wizza travel" as a travel company? Do you think i would still have a chance of stopping them from using this domain for a travel related site? If they had not already done so?

 

[Michael Penman]

Yes ,UNLESS they can show/prove that they were using the domain for that CLASS (trademark class) that you have registered it for. then they could claim prior rights.

To an extent. If they want to rely on those rights in that same class (TMs are awarded in 42 (43?) classes or areas of activity) then there's an onus on them to oppose the trademark.

It gets much trickier once your TMs been awarded.

 

[boho]

ahh!

So what you are saying is.. They are in their rights to oppose my application for the trademark.. if they don't (which they probably won't unless they are scanning the list of pending trademarks... unlikely) then they can lose their rights to use the domain name to trade goods or services in the industry class that my trademark is registered? Regardless of whether they are currently using it for any such purpose. ?

 

[domaingenius]

If they are already using the domain name for the Class that you want a TM in then they could rightly oppose your TM application. If they do not oppose it they still could cause you problems if they can prove prior rights in that same Class later on. For example, if you used your domain for a Travel Agents
after getting the TM for that Classification ,then they might also have been using that same name for a travel Agent business .You would then have problems stopping them and they might even be able to sue you. IF however you were using yours for Travel Agents and they were using theirs to sell sweets at the time that you got your TM, then if they suddenly changed from Sweets to travel agents you could take action in Court for breach of TM etc etc etc

DG