Trade Marks and domain names

[jeremybrown]

I developed a website some time ago for a friend's retail business and put it live on his .CO.UK domain name. Within the last few months one of their competitors has setup a shop trading under the same name. I made enquiries into purchasing the .COM domain name only to find out that the competitor has trademarked the name. What rights does the competitor have over the name and/or the domain name since he has trademarked it? My friend has been trading under the name for several years now.

Regards

Jeremy

 

[noidea]

I developed a website some time ago for a friend's retail business and put it live on his .CO.UK domain name. Within the last few months one of their competitors has setup a shop trading under the same name. I made enquiries into purchasing the .COM domain name only to find out that the competitor has trademarked the name. What rights does the competitor have over the name and/or the domain name since he has trademarked it? My friend has been trading under the name for several years now.

Regards

Jeremy

Carry on trading as per usual.

 

[stugster]

If the guy has been trading under that name before the competitor, he has the rights to the trademark.

When you say "the competitor has trademarked the name", I take it you mean he has either:

1) Put a "TM" sign against the name/logo
2) Registered the trademark? (with the patent office)

What is the mark?

 

[Deleted member 13430]

If your friend used the brand before the other person and established prior passing off rights, if the application is still pending then they can oppose the grant of the application, if the application is granted they could file an application for invalidity. A link to a previous post may help:-

http://www.ukbusinessforums.co.uk/forums/showthread.php?t=75447&highlight=opposition

This post deals to a degree with opposition someone might file against an application. However, the same principles apply if you were opposing someones application or filing an application for invalidity. If your friend can claim prior common law rights, these actions may be open to them.

I suggest they consult a local trade mark attorney.