.UK Announced

[GreyWing]

If you get a trademark for blowerz.co.uk to cover your funky leaf blower brand, I doubt you will be able to stop an 'adult' site trading as blowerz.uk.

It's going to get messy.

I hope that is a pun lol

Yes but you are taking the incentive away from someone buying the name and using it against you. So if you go to auction and it is industry specific "quickloans.co.uk" would be one, who is going to run me up at auction when they can never use it for anything financial?

That's if it goes to auction of course that is a long way off, and chances are this will never happen anyway.

But if worse comes to worst that £200 for a trademark could save you tens of thousands at auction, depending on quality of name of course.

 

[GreyWing]

Under the DRS having a .co.uk predate a registered mark was to your advantage e.g. no prior knowledge as the mark did not exist.

With a direct.uk domain being registered in 2013? or 2014? what implication(s) is that going to cause?

That is very very true mate.... Can we all agree a lawyers field day out of this

 

[websaway]

By the time the co.uk holder gets to argue about it, it will be firmly in someone elses hands, so wrestling each ill gotten name back will be expensive and time consuming. All co.uk holders are not big companies with their own legal department.

Obviously this is only an arguement for grandfather rights, which nominet might climb down on to steer this through.

 

[GreyWing]

By the time the co.uk holder gets to argue about it, it will be firmly in someone elses hands, so wrestling each ill gotten name back will be expensive and time consuming. All co.uk holders are not big companies with their own legal department.

You can call the hosting company with a take down request if they infringe your TM.

 

[websaway]

You can call the hosting company with a take down request if they infringe your TM.

Then they will be able to do the same if they have dubious trade mark rights.

 

[GreyWing]

Then they will be able to do the same if they have dubious trade mark rights.

They can't get a trademark for something you have already trademarked or anything confusingly similar to it. If they tried, you can object via the trademark site.

They can never change the fact that yours pre-dates theirs, hence what my friend was recommending people looking into it now.

I'll be getting my most expensive ones trademarked to protect from someone appearing on .uk with a similar service.

It is up to each individual to think if they would benefit from doing the same. I have had free legal advice today and passing it on. It's up to those who want to, to follow it, ignore it or get their own.

 

[websaway]

They can't get a trademark for something you have already trademarked or anything confusingly similar to it. If they tried, you can object via the trademark site.

They can never change the fact that yours pre-dates theirs, hence what my friend was recommending people looking into it now.

I'll be getting my most expensive ones trademarked to protect from someone appearing on .uk with a similar service.

It is up to each individual to think if they would benefit from doing the same. I have had free legal advice today and passing it on. It's up to those who want to, to follow it, ignore it or get their own.

Please don't think your help is not appreciated because it surely is.

 

[rhaigh]

It is up to each individual to think if they would benefit from doing the same. I have had free legal advice today and passing it on. It's up to those who want to, to follow it, ignore it or get their own.

I'm not saying this is true, but if it is, and .co.uk owners
are mindful of not wanting to spend the £200 TM appl'n
fee for each name, they could also consider going the
"unregistered" route which would involve setting up a
simple trading site (on a domain) and fully documenting
your use.

Ultimately, however, I believe it will be Nominet who will
decide whether a TM right is valid or not...

------

Addition:

I understand the pre-dating rule for TM's, but I also think
that they may examine whether TM's are 'contrived' in
nature, i.e. conveniently applied for after Nominet's .uk
notifier, and if they are they may be disallowed.

 

[GreyWing]

Ultimately, however, I believe it will be Nominet who will
decide whether a TM right is valid or not...

This is the thing mate, Nominet is like Asda making up its own policy on selling trademarked DVD's. It is simply irrelevant in the eyes of the law.

Remember this is not about getting something off Nominet i.e .uk It is about stopping someone operating a confusingly similar business on the .uk

That is a legal issue and not a Nominet one. For example if you start selling Levi's from levi.uk and turn up in court and tell them Nominet said it was ok.. what do you think the judge is going to do?

That is no different to anyone else enforcing their own rights... in theory (please guys don't pick apart in theory bit, I do know the difference)

 

[rhaigh]

It is simply irrelevant in the eyes of the law.

I hope you're right!

 

[julian]

did your friend say what class it would have to go under?

Of course everyone needs their own advice, however "yourbusiness"+ co.uk can be argued to be confusingly similar to "yourbusiness"+.uk

So you don't register "HGV" you register "HGV.co.uk" as a trademark.

 

[viceroy]

Addition:

I understand the pre-dating rule for TM's, but I also think
that they may examine whether TM's are 'contrived' in
nature, i.e. conveniently applied for after Nominet's .uk
notifier, and if they are they may be disallowed.

That's the thing though, Nominet hasn't actually notified any registrants directly, one might be going after a trademark in the normal course of business. How would they prove that you applied for the TM as a matter of convenience?

 

[websaway]

this is being reduced to a focus on trademark law.
It sounds like if you overcome trademark issues the whole thing is acceptable, at enormous cost to the co.uk holders who bought domains in good faith.

 

[anthony]

...How would they prove that you applied for the TM as a matter of convenience?

By judging you and your motives perhaps? Domainers guilty by default!

 

[Bailey]

this is being reduced to a focus on trademark law.
It sounds like if you overcome trademark issues the whole thing is acceptable, at enormous cost to the co.uk holders who bought domains in good faith.

Indeed, I've reframed from commenting further on this thread, purely because it seems to have become a very 'speculative thread' in a

"Will she or Won't she ??" type of Scenario (if you will forgive that analogy I've given to Nominet and its possible acceptance of prior rights)

Some of the TradeMark comments are well adrift of the function and reality of Trademarks, classes and their application that it would take too much to explain in anything less than about a couple of thousand words.

 

[rhaigh]

Some of the TradeMark comments are well adrift of of the function and reality of Trademarks, classes and their application that it would take too much to explain in anything less than about a couple of thousand words.

Oh, go on Bailey, elaborate further for us.. please

I for one know very little about TM law, so if you are
able to spare the time, i'm sure this forum can spare
the character space!...

 

[Bailey]

Oh, go on Bailey, elaborate further for us.. please

I for one know very little about TM law, so if you are
able to spare the time, i'm sure this forum can spare
the character space!...

Hi rhaigh and welcome

The sad fact is that Individuals with a vested interest in 'outcomes' (and indeed many Companies that should know better) will always put their own spin (interpretation) on what ever is said in a "shortened version" of any attempt to explain the fundamentals.

And it really dosen't work to try and explain something reasonably complex but also remarkably intuiative - (once you take the time to learn the basics) to a multi-level audience.

I've also found in trying to be helpful in Trademark situations creates it's own problems (as my Private mail inbox will testify)

What I find most disappointing is individuals willingness to put hours and hours into domain discussions, domain searches and registrations (not forgetting the money) and yet Not have an understanding of the legal aspects of the area of "What after all is a business" they are into.

This new Nominet proposal for .UK and it's proposed application criteria has just added another Window on the lack of TM Law understanding thats out there.

Anybody reading this thread from Nominets Management will be rubbing their hands thinking "Well we ain't going to get any arguments of Substance from this crowd"

I don't intend my comments to belittle anyone but, It dosen't help when members (new or old) give an unintentional impression that their beliefs are fact. Or can be read/taken that way

 

[scooter]

GreyWing is right. Trademark law takes precedent over Nominet rules.

What i said about candle boy before is incorrect. By law they will have a right to a name if they own a trademark for that name.

Lets take their trademarked name "mortgage" as an example.
Say there are 3 trademark holders with different classes after the same nane. mortgage.uk
What happens here? does it go to auction? (can only be auctioned between the 3 mark holders) Or how will this be decided?

What happens when the scented candles mark holder wins? Are nominet going to police the domain to ensure it is always used for the mark is was intended for? What happens if they change the site 2yrs down the road to a financial one? What redress do the 2 mark holders that lost out have? (or anyone else)
Is it a lawsuit aginst Nominet for letting this happen? Is it a DRS?

What a mess and should never be allowed to happen. Greed, nothing else.




.

 

[grantw]

GreyWing is right. Trademark law takes precedent over Nominet rules.

What i said about candle boy before is incorrect. By law they will have a right to a name if they own a trademark for that name.

Lets take their trademarked name "mortgage" as an example.
Say there are 3 trademark holders with different classes after the same nane. mortgage.uk
What happens here? does it go to auction? (can only be auctioned between the 3 mark holders) Or how will this be decided?

What happens when the scented candles mark holder wins? Are nominet going to police the domain to ensure it is always used for the mark is was intended for? What happens if they change the site 2yrs down the road to a financial one? What redress do the 2 mark holders that lost out have? (or anyone else)
Is it a lawsuit aginst Nominet for letting this happen? Is it a DRS?

What a mess.
.

Yep, it goes to auction between the TM holders.

Nominet don't police the use of domains when it comes to TMs, if there's a trademark infringement later down the line then it would be DRS or court, can't see it being any different for these domains than the existing extensions. If there's a trademark infringement over a domain/TM at the moment you don't sue Nominet for allowing someone to register a domain, you sue the person that's infringing on the TM by their use of the domain.

Grant

 

[scooter]

But the other 2 trademark holders cannot sue for trademark infringement as although candle boy has now changed his site to a financial one, the other 2 trademark holders never held the mark for a financial class in the first place. (no one would be able to register this name under financial class as it is too generic)

So, in theory they walk into the sunset very happy with a prime generic. gotten by devious means





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