Is this a trademark infringement please?

[GrannyT]

My daughter and I run a dating website and she has two blogs on the same domain. Two years ago on her rural blog (which covers everything from what to do with excess tomatoes to how to build a hedgehog den) she wrote a blog post entitled Outandaboutinthecountry Love - The Pub Full of Ex's which was a humorous piece about people who live in a one pub village being unable to avoid their ex partners. Obviously Outandaboutinthecountry isn't the real word!

A few days ago I received an email from the owner of the site called Outandaboutinthecountry Love saying that we had extensively infringed his trademark, which he registered earlier this year. We have searched our site and the blogs and can only find this term used once, therefore his "extensively" must refer to where the title is repeated underneath the post when someone makes a comment. He has registered two versions, the first is two generic words but with initial capitals and the second is both generic words joined together.

I know the sensible thing would be to ask him whether changing the initial capital letters in the title to lower case would satisfy him. Had he asked politely we would have been quite willing to oblige but because he chose to approach us with all guns blazing and I don't like being bullied I'm reluctant to lie down and play dead.

Please could I have advice on whether our use of these two words, written two years before his trademark was registered, could possibly be legally seen as an infringement? Thank you.

 

[Deleted member 59730]

If the date of his TM registration was after you 1st published the words I wouldn't think he had a case.

I seem to remember that unique coupling of words has to be original for a TM and not descriptive.

 

[CSBob]

I've had reason to look into this myself recently and this paragraph from the Intellectual Property Office itself may be useful to you:

***
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.


***



In essence, I fail to see how the title of a blog tucked away on a website somewhere can in any way be construed to be infringing his trade mark rights, especially when written so far back in comparson. In my (admittedly inexpert) view, that's a simply ridiculous notion.


I'd be sorely tempted to tell him to blow it out of his <insert here an orifice of your choosing>.

 

[GrannyT]

Thank you for your replies.

Atmosbob I would hope he doesn't have a case on the dates alone, otherwise people could set up a business by trawling through already published text, finding non-generic terms that are in regular use, registering those terms and then taking everyone to court who has used those terms in the past!
I would have thought both words in his trademark were generic/descriptive but I've seen a copy of his registration so it was obviously classed as acceptable.

CSBob you have no idea how tempting your suggestion is. Going to behave like the good old-fashioned granny that I am though - at least until I'm 100% sure of my facts!

 

[GrannyT]

Although I think most people would say that this guy is just trying it on and doesn't have a leg to stand on, does anyone know for sure that this isn't an infringement please?

 

[deniser]

I would just write back pointing out that your blog post was written before his trademark was registered so there can be no trademark infringement. Presumably your blog is dated or you can otherwise prove when it was written?

 

[GrannyT]

Thank you for your reply Deniser. Yes, the blog post is dated - is the fact that it was written 2 years previously sufficient to put us in the clear?

 

[GrannyT]

Please can someone who deals with trademark issues tell me whether we are in the clear with this or not?

 

[David Warrilow]

Hi

I'm a patent & trademark attorney at London IP.

From what you have said it appears that they have no case, and the threats they have made could be actionable under the groundless threats provisions.

David