Website Intellectual Property Question

[AnonymousUK]

My friend has a company X that specialises in security and communications, registered in 1998.

They have a website registered in 2002. The website name is an abbreviated version of the company name.

It is hosted with BT, all of the companies emails are based on this domain and it is their main point of contact and the website name is also printed on the side of their commercial van.

Another company, Y, whose name is the same as the abbreviated version of company X, has contacted them through their solicitors asking them to cease use of the domain name and hand it over to them.

What should be his the next step? Also what arguments/law does he have that would support his case?

[Amethyst]

Re: Website Intellectual Property Question

Has either company registered the company name as their trademark ?

Do you know when company Y incorporated or started using the name ?

[bluebottle]

Re: Website Intellectual Property Question

It will be down to whoever has established use of the name. Check with the Webcheck facility on the Companies House website. This should give you the date the other company registered the name with the Registrar of Companies.

As to the solicitors, are they Intellectual Property specialists? If not, it sounds to me as if the other company is trying to get hold of the domain name without payment and by bullying your friend's company into relinquishing ownership. If the domain name is registered to your friend's company, this other company and their solicitors are going to be able to show they were using the company name prior to your friend's company using it as a domain name.

Tell your friend to do their homework first and if they have legitimate ownership of the domain name and it pre-dates registration of the other company's name with Companies House, the other company's solicitors need to be put on notice of this.

[AnonymousUK]

Re: Website Intellectual Property Question

Just got some further info, company Y registered the name in 92 and entered onto the register in 95. I'm guessing my friend really doesn't have a leg to stand on?

And yes the other solicitors are IP specialists so all looks legit.


Thanks

[AnonymousUK]

Re: Website Intellectual Property Question

Additional question, my friend i think is completely in the wrong here but do you think he could salvage this and offer to sell the domain for a knocked down price to avoid going to court etc?

[bluebottle]

Re: Website Intellectual Property Question

Just got some further info, company Y registered the name in 92 and entered onto the register in 95. I'm guessing my friend really doesn't have a leg to stand on?

And yes the other solicitors are IP specialists so all looks legit.

Thanks

Has company Y registered the domain name at all? If they have and it pre-dates company X's use, company X is, to put it bluntly, stuffed.

[AnonymousUK]

Re: Website Intellectual Property Question

My friend registered the domain in 2001. He has the .co.uk domain. Company Y registered the .plc.uk domain in 98.

[Amethyst]

Re: Website Intellectual Property Question

I'd question why it has taken them 13 years to give a hoot about the .co.uk name.

[AnonymousUK]

Re: Website Intellectual Property Question

I will get him to ask them. Can update tomorrow.

Would the passing in time give my friend much support for his argument? or would the reason why they have left it so long be important?

[Amethyst]

Re: Website Intellectual Property Question

Okay have a look on the IPO website for company Y - http://www.ipo.gov.uk/types/tm/t-os/t-find/tmtext.htm

Just because they registered the domain name first doesn't mean they own all rights over it. Have they been using the name constantly, has it been considered as their trademark (whether registered or not) throughout that time, or has it been a dormant website, do the companies operate in the same field ?

[bluebottle]

Re: Website Intellectual Property Question

Unless the other company can prove they are losing business as a result, they are on shaky ground. Your friend would be in his rights to offer to sell the domain name to the other company. Unless the other company's solicitors can put forward a case in law and evidence to substantiate any claims they are making, my advice would be to not hand it over without the other company covering the cost to your friend's company of changing vehicle graphics, stationery, etc., at the very least.

[AnonymousUK]

Re: Website Intellectual Property Question

I think company Y has been using the name constantly and it has been considered their trademark since they incorporated in the UK (set-up by a Japanese firm) but I would need to investigate more to confirm.

My friend has been using the website since he acquired the domain. He has used it for various purposes but I will need to ask and find out what it was used for. Currently it's used for his security business which operates in the same field as Company Y.

I have noticed one thing though, company Y has a trademark filed for the name "ZZZ". My friend's website however is "ZZZ(s).co.uk". Company Y current website is "ZZZ.plc.uk". Does the difference of the (s) make much difference?

I think company Y would find it difficult to prove they are losing business as a result. I'm going to see if i can check the amount of web traffic each is receiving. I think company Y is a much larger company, i.e. national coverage, my friend's is just local.

Thank you for your answers so far, after having little luck on another website I have been pleasantly surprised by this one

[Amethyst]

Re: Website Intellectual Property Question

Plural's aren't usually important in intellectual property. Eg. we are LegalBeagles - we would have an IP case against anyone calling themselves LegalBeagle operating in the same area as us.


Here's some general IP advice for your friend.

Infringement

What is trade mark infringement?

If you use an identical or similar trade mark for identical or similar goods and services to a registered trade mark - you may be infringing the registered mark if your use creates a likelihood of confusion on the part of the public. This includes the case where because of the similarities between the marks the public are led to the mistaken belief that the trade marks, although different, identify the goods or services of one and the same trader.
Where the registered mark has a significant reputation, infringement may also arise from the use of the same or a similar mark which, although not causing confusion, damages or takes unfair advantage of the reputation of the registered mark. This can occasionally arise from the use of the same or similar mark for goods or services which are dissimilar to those covered by the registration of the registered mark.
What about unregistered trade marks?

There is no available remedy for trade mark infringement if the earlier trade mark is unregistered. Some unregistered trade marks may be protected under Common Law and this is known as Passing off. However, whether or not they are protected will depend on the particular circumstances, in particular:

• Whether, and to what extent, the owner of the unregistered trade mark was trading under the name at the date of commencement of the use of the later mark;
• Whether the two marks are sufficiently similar, having regard to their fields of trade, so as to be likely to confuse and deceive (whether or not intentionally) a substantial number of persons into thinking that the junior user’s goods and services are those of the senior user;
• The extent of the damage that such confusion would cause to the goodwill in the senior user’s business.

I think that I may be infringing, what should I do?

Get legal advice. There may be a number of potential courses of action or defences open to you, but this will very much depend on the particular circumstances of your case.
Some traders who think they may be infringing an earlier trade mark choose to cease trading under the offending sign, others choose to approach the earlier trade mark owner and attempt to negotiate a way forward that suits both parties, which may include a co-existence agreement.
If you decide that you are not infringing, or you have a good defence, you may decide to stand your ground or even to sue the trade mark holder for making unjustified threats. In the worst case scenario, you may have to change your trade mark and re-brand your products or services.
I think that someone else may be infringing, what should I do?

Get legal advice as the most suitable course of action will depend on the particular circumstances of your case.
One potential option open to you is to write to the infringer. However you must be satisfied that the earlier trade mark that you own and the activities of the infringer justify this. This is because the law also protects traders from unjustifiable threats of trade mark infringement.
You may be able to negotiate a settlement which suits both parties, which may involve a co-existence agreement. Another option is that you may be able to get a court order to force the infringer to cease trading and pay compensation for damages. However, infringement actions must be taken to the High Court or in Scotland, the Court of Session. We do not handle such actions.
You can get legal advice, from The Institute of Trade mark Attorneys (ITMA) , The Chartered Institute of Patent Attorneys (CIPA) or The Law Society .

I think company Y has been using the name constantly and it has been considered their trademark since they incorporated in the UK (set-up by a Japanese firm) but I would need to investigate more to confirm.

My friend has been using the website since he acquired the domain. He has used it for various purposes but I will need to ask and find out what it was used for. Currently it's used for his security business which operates in the same field as Company Y.

I have noticed one thing though, company Y has a trademark filed for the name "ZZZ". My friend's website however is "ZZZ(s).co.uk". Company Y current website is "ZZZ.plc.uk". Does the difference of the (s) make much difference?

I think company Y would find it difficult to prove they are losing business as a result. I'm going to see if i can check the amount of web traffic each is receiving. I think company Y is a much larger company, i.e. national coverage, my friend's is just local.

Thank you for your answers so far, after having little luck on another website I have been pleasantly surprised by this one

[AnonymousUK]

Re: Website Intellectual Property Question

The last post was really useful, I will pass this onto him. Looking at the two websites I think it may be likely to cause confusion. How would company Y be able to prove they are losing business as a result? I have only done a quick comparison of the web traffic, company Y receives a much larger amount of traffic than my friends.

I will try and look more into the history of this tomorrow and have several extensive letters to read.

Many thanks for your help so far