Trade Mark Query - Too Descriptive?

[logicfusion]

I have a query in relation to a potential domain name I am considering purchasing.

As I don't want to publish the exact name I have in mind in public for obvious reasons, I shall provide an example from a different niche.

Example:-

Lets say "car classifieds" is an existing website that has been in operation since 2000. Lets say the website is purely a classified ads listing relating to motor vehicles.

There is no registered trade mark against this name on the UK IPO site from what I can see.

Indeed, when I search the IPO using text search string "classifieds", I don't see many results that are what I would call, descriptive.

Would I be risking an action under the common law of passing off, if I registered a domain name carclassified.org.uk and set up my own classified ad website?

In my head, I would say the term, 'car classified(s)' is entirely descriptive of the service, and thus could not be registered as a trade mark.

I suspect I am wrong though, hence my post!

Again, the example "car classifieds" above is purely an example.

Cheers
Al

 

[jfalegal]

A trademark has to be distinctive to be registered so descriptive words alone would not be registerable - the words 'car classified' alone would not be registerable.

There is, however, a huge distinction between trademark infringement and passing off - if you set up a website at a domain name minus the 's' doing exactly the same thing as the existing site then you would undoubtfully cause confusion for consumers as to which site was which.

It would be extremely hard to see any possible explanation for you to do this other than a wish to pass yourself off as this existing company and gain some commercial
advantage from this confusion. The risk of a passing off claim would, therefore, be inevitable and quite rightly so - imagine how you would feel if the situation was reversed.

 

[logicfusion]

I didn't realise that if a phrase stood no chance of being registered as a trade mark, one could still face action for passing off. Thanks.


With regards to why someone would want to choose such a name, I can make one very valid point.

Lets assume that people frequently type the phrase "car classifieds" into Google. It is an established fact that Google places significant weight
on domain names that are exact matches for a given search phrase. When I say significant weight, I mean one would need to invest in substantially less
backlinks in order to get that webpage showing on the first page of google.

I suppose one could argue that the intent of the people searching for the phrase "car classifieds' in Google, is to find the original website.