Trademarked name - can I still register the domain?

[Victor Avram]

Hiya,

According to the https://trademarks.ipo.gov.uk website, there's an active trademark filed for this name since 2013. I'm looking to register the .uk version of it, there's no active website on the .co.uk extension.

I've searched on google but there are many contradictory answers, therefore, here I am. Can I register the domain name or I should, by all means, avoid the hassle?

I plan to build a large website on it so I really don't want to invest a lot of time and money into something risky.

Thanks!

 

[Stewart]

Just a quick one here. If someone already has the .co.uk, How can you register the .uk? I was under the impression you have to own the .co.uk to get the .uk.

 

[Victor Avram]

You can register the .uk version if the .co.uk extension has been registered after October 2013.

 

[dee]

Just a quick one here. If someone already has the .co.uk, How can you register the .uk? I was under the impression you have to own the .co.uk to get the .uk.

If the co.uk has dropped / changed hands recently then the the uk has become available to anyone. Current owners of co.uk have rights of reg on the uk until next year unless the domain changes hands.

 

[Lovekraft]

It all depends on the class under which the trademark is filed. If you operate in a completely different field it isn't likely to infringe, however if it is in the same or similar class it could prove to be a headache and likely too risky to invest in.

 

[keys]

Could you meet the criteria to obtain a TM of this name for your intended use?

If the answer is yes, then it should be safe to proceed. Study the TM rules, or seek expert advice.

It may be worthwhile to actually proceed with a TM application for the security it will provide. This would also raise potential objections or conflicts.

It is common for a popular name to have multiple TM's without issue, because they operate in different classes. Conversely, a name with only one existing TM is unlikely to be contentious or problematic.

 

[BG]

What class or classes do you want to operated in? and what class or classes are they operating in?

If you're operating in different classes then apply for your trademark and start actively using the domain in your class, however, if you are looking to operated in the same class / classes or wish not to be faced with a possible headache down the line with to infringement / passing off... Apply for your trademark but also apply to get their trademark(s) revoked if you can display the company has not actively used the trademark within a 5yr period.

I have successfully revoked a large number of trademarks and also battled against companies in high court (and won) surrounding such issues, so i would suggest doing your TM homework first if you plan to spend a great deal of money on your business project.

All the best,
BG

 

[Victor Avram]

There is a specific product I might want to approach that is included in a class he TMed so I think it's best to just let it go and come up with a different, safer domain name.

Thanks for your help guys, much appreciated!