Intellectial Property Help

[herbert123]

I have set up a website using a word out of the dictionary, for example "globaltrade.co.uk" (the word in question being 'global'). Another firm has contacted me with a name for example "Global.com", and have threatened legal action for the use of the word "Global" claiming a breach of IP. Surely they cannot enforce this on a dictionary word? Can you clarify? Thanks.

P.S. They have been trading for around 10 years and are massive.

 

[FreelanceSoftwareDeveloper]

I'll watch replies with interest. It doesn't sound enforceable.

Not Global Sources is it, a China business directory which although they sell global only promotes sources in one country?

 

[herbert123]

I didnt think it was. No, it's nothing to do with "Global", that was just an example, didn't want to mention names and figures. They have already threatened legal action if the website wasnt removed.

 

[FreelanceSoftwareDeveloper]

What I said last night after a few glasses of wine was possibly incorrect. I was thinking about another thread I started regarding rights to a trading name but that wasn't currently in use.

If your name could suggest a link to the other company, or be mistaken for the other company then they would have a case.

If you want to take on a big company you have to know exactly what your rights are and exactly how to respond. I would recommend speaking to a specialist who you can discuss all the fine details with.

 

[ald1]

You have encountered the infamous tactic of "brand protection" which is an ugly side to large corporations. The type of arguments used particularly against websites/domain names are either that there is a breach of a registered trademark and/or that the competing company is "passing off". It is possible to register commonly known words (for example Mr Branson is very protective of the word "virgin").
No two cases are alike and you can either be very brave and take on the big corporation yourself, or you can be very careful and get some decent legal advice.
A word of caution - many of these warning letters have a strict time for compliance / reply and I have seen some companies exploit this by commencing proceedings as soon as a the deadline is up. This is not because they have a very strong case, but as a means of flexing their legal muscle. If you need more time to consider your position - attempt to agree it, don't just think they will let matters lie.
Many of these issues can be "negotiated" especially if you are offering a completely different product/service, it will often depend on how much of a threat you present to either the business or reputation of the larger company.

 

[profitxchange]

Agree with ald1 you need to get onto this quickly as it is probably being handled by the legal beagles who make their money by moving these things forward.
Try having a word with these people
For interlectual property issues try BRIFFA www.briffa.com
They will give 30 mins free and quote a fixed fee.
They were very staright when I made contact. but did not need need to go beyond the 30 mins.

 

[bwglaw]

By using an example for the alleged infringement is unhelpful - would not encourage you to disclose the actual word in question. You need to obtain direct legal advice on the matter. Generally it is difficult to bring a claim for passing-off purely based on the domain name alone, especially if the word is rather generic. Many generic words fail to get registered by the IPO.

 

[Big Pete]

the main crux of the matter is if the 2 similar business names are in the same market ? if it is then you are on a loser ..

if its totally a differnt market ie ;

say your selling shoes and call your website www,clarkes-shoes.co.uk or similar

then obviously thats passing off as you are poaching and damaging the famous brand.

if say your still www,clarkes.com but you sell Guitars then its not an issue .

if you see the drift ?

so need more info to judge ..

 

[VeryMark]

We advise SME's on situations like this routinely if you require help and, yes, the first 30 minutes of our time is free.

You should always ask yourself, however, whether it is worth it financially in simply mounting a defence, regardless of the rights and wrongs, and I would always look to see whether a compromise was possible and appropriate.