Domain Name - Trademark -

[rubberdubber]

Hi
I am bringing out a new product in about a month, and have already started to promote it via google.

when I looked to see how well its going in the search engine, I noticed that on the same page there was an identical domain name but australian

eg
mine is called www.domain.co.uk (http://www.domain.co.uk)
theirs is called www.domain.com.au (http://www.domain.com.au)

we are both promoting the same type of product.

The australian domain points to an australian ltd company under a totally different name.

and i don't think the name is registered trademarked (ie domain)

does anyone have advice , would it be beneficial to write to the company and explain - same name - different company - as they were there first

thanks for your help

[SolsburyHill]

Trade mark rights in the UK can be established in two main ways:-

(a) via registering the brand name as a registered trade mark (statutory protection), (http://www.pinsentmasons.com/PDF/Thebasicstrademarks.pdf)

(b) via establishing common law rights under the tort of passing off which are built up by use of the brand in the UK (common law rights). (http://en.wikipedia.org/wiki/Passing_off)

You imply the brand is not registered in the UK, but you should check at www.ipo.gov.uk (http://www.ipo.gov.uk) and also generally you should conduct searches to determine whether you are infringing any registered rights this party may have in the UK or indeed other third party registrations. You can only conduct very limited searches on the UKIPO website and to be sure you should consult a trade mark attorney who can conduct more comprehensive searches and give you detailed advise. This link may help:-

http://www.itma.org.uk/links

Now assuming no one has registered trade mark rights to the brand you intend to use, the next question is has anyone established common law rights to the brand via use.

You suggest that the Australian company are selling the same product via a website with a domain address very similar to yours. Firstly I think it could be argued that if trade takes place via a website that the use of domain name of that website would constitute trade mark use. Thus its possible that the Australian company has established common law trade mark rights in the domain via such use.

However, merely having a webiste accessible from the whole globe does not under UK law mean that they are deemed to trade under that name across the whole world. The famous 0800 Flowers case established that you must be actively trading or accepting orders or targeting orders in a specific country to be deemed to trade there. Therefore if the Australian company has never taken orders in the UK and does not they will probably be deemed not to trade here and thus not established prior common law rights. I think you need to look at the website and decide whether they can take orders from the UK, are taking orders or are targeting the UK in some way. If they are not I don't see your problem. Also if they do trade here and as you say got here first, you need to decide whether you wish to take the risk of an approach as they may well have the prior rights to the use of the brand. Two companies can trade under identical marks in two different countries.

The above is limited advice based on your description above and as a result to be sure of the situation you need to consult a trade mark attorney and the link above will help you locate one near to you. Getting involved in a trade mark dispute is not pleasant and you should obtain expert advice if this is an important brand to you and your business.

[rubberdubber]

thankyou for that

its not a brand name that i am using -

trying to think up an example..................

ice bucket - is a pretty generic term

so i have

icebucket.co.uk & icebucket.com

they have

icebucket.com.au

both selling ice buckets, (my products are the same as theirs at the moment - though a different one will soon be out)

so - as the word can't me trademarked - it should be ok to use

guess ive answered my own question :)

[mahutchinson]

Is it not the case that people are going to be searching for the product, not the domain name ? Your search tags will describe the products you are selling. No-one will search for the domain name unless they already know it. I would not be too bothered about this as presumably people in one jurisdiction will use that site and people in the other will use the other site.