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Revoking a trademark

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Revoking a trademark

Postby diy » Thu Jun 18, 2015 6:15 am

A company sets up business using the domain name try-xyz.com and trades for many years from this site, another company who trades as try-abc registers the trademark some 10 years later try-abc.com and also registers the trade mark try-xyz.com along with other variations. A couple of years later try-abc issue a notice to the trader operating the name try-xyz.com to cease infringing its trademark try-xyz.com

try-abc has never owned the domain name try-xyz.com and thus its very hard to see how this could ever have been a trademark of theirs. Arguably a business would be pretty dumb to advertise a domain name they didn't own. It looks like an attempt to damage the value of try-xyz.com and force the domain holder to sell it to try-abc or simply to take out existing variations from the market.

I've read through the process of revoking a trademark - the trademark is not generic, but it clearly didn't belong to the company registering it. Can anyone point me at case law or interesting reading on examples of where one company registers a trademark (unregistered) but in use by another company. Odly the two organisations are not competitors, but do exist in similar markets.
My suggestions are not legal advice
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Re: Revoking a trademark

Postby dls » Thu Jun 18, 2015 2:42 pm

You have to be more particular about the choice of examples. A .com name will always be trumped by a trade mark registration, but a .co.uk name not so (at least this was so - I have not checked for sme time).

Also trade marke registratins are for particular jurisdictions and for particular areas of trade. Not all uses of a mark-like object will be a 'trade mark use'.
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Re: Revoking a trademark

Postby diy » Fri Jun 19, 2015 8:41 am

So imagine you have swarblaw.com - for say 10 years. I come a long a register swarblaw.com as a trademark (legal services category etc), using a simple font. You don't spot my registration. 2 years later I send you a cease infringing my trademark letter.

Do you not have a defence under The Trade Marks Act 1994 Sec 11? http://www.legislation.gov.uk/ukpga/1994/26/section/11
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Re: Revoking a trademark

Postby dls » Sat Jun 20, 2015 6:28 am

But .com registrations are subject to US terms under which the trade mark trumps the registration.

In the UK with .co.uk names you would have a chance of being right. Under .com, no.
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Re: Revoking a trademark

Postby diy » Mon Jun 22, 2015 6:37 am

Thanks - it just got a 1000 times more complex :D
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Re: Revoking a trademark

Postby atticus » Mon Jun 22, 2015 7:57 am

that is very precise!
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Re: Revoking a trademark

Postby dls » Mon Jun 22, 2015 9:30 am

It is worth rechecking th eterms for the .com and .co.uk registrations - it is a while since I did.
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