Trademarks - quick question?

crazihos · Sep 30, 2016

Hi all,

I wondered if anyone knows about TM's as I have an example I'm not sure of?

If someone had a TM on lets say the shortened word Insur for example and they held the TM in the class for online insurance and I went and bought insure /co/uk and set up an insurance site on it - would I be infringing on their TM?

I don't think so - I think the TM would need to actually say Insure for there to be a problem but I'd really appreciate any thoughts form someone who may know?

Cheers

Russ

Ps...Those are just domain examples to help me explain the issue.

ian · Sep 30, 2016

I'd say no, because the term they've trademarks isn't an actual word, compared to using insure. However, that is an extreme example, the actual one may be different.

crazihos · Sep 30, 2016

Thanks Ian, appreciate that.

The word they have trademarked isn't an actual word either - I've checked the dictionary. It is just a normal word with one letter missing like my example. Another example would be Hous and house where Hous would be the TM - they can be pronounced the same and could easily be confused on the radio for example but one is an actual word and one is a misspelling.

The only other thing i can think of is Hous/Insur is trading already and house/insure would be a new business - if that matters?

Thanks again

ian · Sep 30, 2016

I can't offer any legal position on this, but can you drop me a private message with the term/word (I assume you don't want to post it in public), because I cannot imagine your examples are close enough to the actual. Remember that whilst not an exact match, it could be perceived to cause confusion, but going from a trademark non-dictionary word to dictionary word does work a little in your favour.

accelerator · Sep 30, 2016

crazihos said:
If someone had a TM on lets say the shortened word Insur for example and they held the TM in the class for online insurance and I went and bought insure /co/uk and set up an insurance site on it - would I be infringing on their TM?

No. If you are using the actual word, and using it for what it means, i.e. in the case of the word insure, using it to sell insurance, you are going to be ok. That's because the generic correctly spelled word cannot be trademarked for the generic use, i.e. insurance. No one can claim trademark to the generic or trademark infringement by the generic (when use represents meaning).

ian · Sep 30, 2016

accelerator said:
No. If you are using the actual word, and using it for what it means, i.e. in the case of the word insure, using it to sell insurance, you are going to be ok. That's because the generic correctly spelled word cannot be trademarked for the generic use, i.e. insurance. No one can claim trademark to the generic or trademark infringement by the generic (when use represents meaning).

This is true but won't be the case for all similar examples, and I suspect the OP's will be more obscure than this.

Bailey · Sep 30, 2016

Like Ian has already kindly offered. I'm also happy to give you a pretty good (Private) one-off synopsis on the "why's and wherefores" . I consider myself pretty clued-up on TM law/class protection/infringement. (UK/USA) UK Business law was my subject but love the TM stuff since I entered the domain investment market in 1999. And I'm pretty sure our replies will be on par.

No charge