Trademark question

[UK Business Directory]

Hi

Could a company take legal action against a website owner in the following scenario:

Company A purchases a domain name, for example ABC.com and sets up a eCommerce website.
Company B trademarks the name ABC 1 year after Company A purchased the domain

Company B asks company A to shutdown the site else they'll take legal action

Can Company B take legal action?

 

[The Byre]

Yes.

 

[UK Business Directory]

Yes.

Is there any chance of company B winning the case?

For example, if I decided to trademark UK Business Forums (just an example), I could take legal action against the forum and ask they shutdown the site because I own the Trademark, but i'm guessing the case would be thrown out by the courts

 

[JamieM]

Are they operating in the same trade and in the same country? If so company B will very likely not have a case as company A will have prior rights if they are actively using the trademark term.

 

[jonny123]

I got a trademark for my most important domain. Was handy when copycats set up similar named domains.

People can be forced to change their business name. Might be able to operate on the same domain though ... tricky!

 

[The Byre]

Everything depends on the circumstances - the most important of which is to be actively trading under that name.

https://en.wikipedia.org/wiki/United_Kingdom_trade_mark_law

https://www.gov.uk/topic/intellectual-property/trade-marks

http://www.seqlegal.com/blog/10-things-you-should-know-about-trade-marks

 

[UK Business Directory]

Are they operating in the same trade and in the same country? If so company B will very likely not have a case as company A will have prior rights if they are actively using the trademark term.

Hi

Same country and similar trade
Yes, company A has been actively using the domain

Thanks

 

[LowPrices.uk]

It depends. If company B had built up trading goodwill using the term ABC before company A ever used it, then it was trading first and using the term, and therefore had built up a claim to Trademark whether they had registered it or not. A critical aspect of Trademark Law is whether you have actually been using the term for business first, regardless of Trademark or domain registrations.

The term ABC also needs to be a non-generic term in order to qualify for Trademark, which I assume it is.