Trademark Quest

[VladimirYakimenko]

We build a collaboration tool which is designed for kanban method.
Naturally, on the home page of the website there is a phrase "kanbanchi is a kanban tool".
Resently I've got a legal notice saying ""Kanban Tool" is a registered trademark and your use of it constitutes a misappropriation."

For those not aquented with collaboration tools and kanban method it is like saying "yogurt is a diary product"... apparently we can not say this anymore because "diary product" has been trademarked.

I am curious if somebodyelse have come across such cases, and what course of action have you taken?

 

[F_B]

Having a rummage through the UK trademark register, "Kanban Tool" is indeed registered as EU011463692 and is registered for the following goods and services:
Class 35
Advertising; Business management services; Administration of business affairs; Office funcions; Tracking and monitoring of working time.
Class 38
Telecommunications, including Internet portals, providing Internet portals, providing online forums, providing Internet chatrooms, electronic mail, electronic advertising; Providing Internet portals, forums and blogs; Remote transmission of messages, information, data, voice and images, online transmission, providing access to databases via the Internet, allocation and rental of access to computer databases, providing Internet sites, providing online forums; Interactive communications via computer, communication via a global network computer or the Internet, electronic communication, electronic mail.
Class 42
Installation of computer software, updating of computer software, duplication of data, servicing of computer software; Application service provider (ASP) services; Rental of computer programs and computer software; Creation and maintenance of customer service systems accessible via the Internet.

Note: it is not registered for the service of "Kanban method"

Your comparison to dairy products needs tweaking.
Lets say you have an online business for trading in dairy products and call it "MILK". You wouldn't succeed in registering it for milk, as that would be descriptive.

However, you could have a case if you attempted to register it for "Telecommunications, including Internet portals, providing Internet portals, providing online forums, providing Internet chatrooms, electronic mail, electronic advertising". This is allowable, because the term "MILK" is not descriptive of those services.

This appears to be what the proprietor has done. I also note Kanban is a Japanese term. In the UK foreign terms, even if descriptive, can be eligible for registration as they are distinctive to the average consumer.

 

[F_B]

You do have options. First, and possibly easiest, is to just describe your product in a different way, that uses the word Kanban in relation to the service it is descriptive of. For example, Kanbanchi helps you implement the Kanban method. Not so snappy, and the owner of EU011463692 may have an argument that the distinctive element of their mark is the word Kanban so your use may still constitute an infringement of EU011463692.

Better still would be to use a description of what Kanban is.

If you have evidence that you used the term Kanban in relation to your goods and services prior to January 02, 2013 (the date of filing of EU011463692) then you have a prior use defence and can keep using (the caveat here is that you cannot expand outside the geographical area you originally used it in). Bear in mind this is the term Kanban on your collaboration tool, not on the method.

You could attempt to have EU011463692 invalidated. I think this would be tricky, as in my earlier post "Kanban Tool" is not descriptive of the goods it is registered for, unless you have evidence to the contrary.

You may have other options open to you, I am not in possession of all the facts of your situation and it is surprising what may impact your case. I would recommend visiting a registered trademark attorney who will be able to advise you properly.

 

[LowPrices.uk]

Which organisation sent you the legal notice?

 

[VladimirYakimenko]

Thanks for your coment Frazer,

Application service provider (ASP) services; Rental of computer programs and computer software; Creation and maintenance of customer service systems accessible via the Internet.

Note: it is not registered for the service of "Kanban method"

The trademark is registered for "Application service provider (ASP) services; Rental of computer programs and computer software; " but this is about everything out there on the Internet.
Should it be more specific to have the case?

On-line and offline software is quite often refereed as "tools", i.e. productivity tools, collaboration tools, project management tools.
Kanban is used for workflow and project management. "Kanban" term is well adopted in English/Western World, and I do not think the word sound "foreign" any-more to any project management practitioner.

So Kanban tools are subset of project management tools. That's how they are referred to. Quick search on Google for "kanban tools" will show links to those tools, and comparative reviews.
Many collaboration software vendors, have kanban board as part of a toolset, and that is how they sometimes refer to this feature
For examle Atlassian:
"Kanban Tool - Build Better Products. Free Trial‎
Adwww.atlassian.com/JIRA-Agile‎
Flexible, Scalable & Transparent."

People looking for relevant software would very likely to use "kanban tool" when searching, and only few of them would actually look for The "Kanban Tool".
What probably bothers my competitor, is that we start to appear quite high in Google organic results for that particular keyword, and having "kanban tool" removed from the site will affect our ranking.

So using kanbantool domain, and registering a trademark for it was a good move in terms of SEO. But it is definitely a descriptive name, and I think it should not have been allowed to be registered as a trademark.

I will refine my example:
Say, I developed a product called KauMilk - the most straightforward way to describe it would be to say "KauMilk is a diary product".
If somebody manages to register "Diary Product" under food & manufacturing, they will surely benefit. (that's how registering "kanban tool" under "rental of software looks like to me)

 

[VladimirYakimenko]

Which organisation sent you the legal notice?

Kanban Tool

 

[F_B]

The trademark is registered for "Application service provider (ASP) services; Rental of computer programs and computer software; " but this is about everything out there on the Internet.
Should it be more specific to have the case?

-No, with respect to a trademark application that is fine. The main criteria is that the registrant is using the mark for those services. If they are not, or for only a subset, after 5 years has passed you could apply to invalidate the trademark for non-use. This would knock out the registration if it has not been used, or only the goods and services listed where the mark has not been used.

I understand that you consider the term Kanban to be descriptive. However, once on the register a trademark is presumed to be valid. Furthermore, you are using an identical mark (Kanban tool) on identical goods. It isn't necessary for the owner of Kanban Tool to show confusion on the part of the public for that kind of infringement.

EU011463692 was registered in 2013. Clearly the UKIPO at the time considered the mark "Kanban tool" capable of possessing distinctive character at the time to allow the application to proceed.

Unless you can show use of "Kanban tool" prior to January 2013 then you will be committing infringement of EU011463692. You could attempt revocation proceedings. However, I rate the likelihood of success to be very low.

You could ask for a licence from the owner of EU011463692 to use the mark legitimately.

 

[F_B]

Clearly the UKIPO at the time considered the mark "Kanban tool" capable of possessing distinctive character

Sorry that should be OHIM, not the UKIPO.

 

[VladimirYakimenko]

Thanks for in depth advice Frazer. Something to think about..