Trademarked Email address

[dufjax]

For all our suppliers we use SUPPLIERNAME at ourcompany.co.uk this is so we can apply filters, block if they become a nuisance and to fight spam.

We started getting spam from the email address used from one supplier, not marketing spam general spam and lots of it. Obviously the address had found itself on a spam list.

Sent a polite email to the supplier giving them the heads up. There reply was...

Please can you advise if you have received prior permission from ******* Plc to use an email address which consists of our trademark name?

They now seem to think we are in the wrong for "infindging" their trademark?

Any advice, do we have something to worry about and should we stop using the suppliers name and use a random address?

 

[g]

It's a potential infringement, and hence as part of protecting their IP they're right to notify you accordingly.

Whether it's something they can pursue and win depends on various factors, including the specifics of their trademark (including whether it's registered).

And although common sense suggests you're not trying to gain a commercial advantage, relevant considerations include the potential for confusion ... their-name@your-name is an identical format to business-name@isp-name, and hence a third-party could assume the email address to be one belonging to the trademark owner.

 

[LiveNetworks Ltd]

I'd argue that the email address is given to the supplier for the purpose of communicating directly with the customer. As it's not in the public domain and used only for a verified method of communication then I'd say it should qualify as fair usage.

Being pedantic about it, you can say you're not using their trademark, they are! If they're sending email to you at [email protected] then you're not 'using' it. They're using their trademark as a way of communicating with you.

I wouldn't argue that a anyone requiring me to login with my username of [email protected] was using my 'me@mydomain' address.

I think you need to point out that it's how they send email to you, it's not how you send email out.

 

[obscure]

It's not trademark infringement. Registering a trademark does not prevent everyone else from using those names/words in normal usage - it just prevents them using them as a trademark (a mark used to trade).

You aren't using the name as a brand name for your product or services just as a means of identifying the customer. It is no different to if you were to write their name on an invoice or use it in a CRM system.

 

[dufjax]

Thanks for the replies.
I get the impression they were trying to shift blame / focus on to us for their data breach, making the email address an dodging the issue of how spammers got hold of it.
We have already told them to use an alternate address and I might respond with some of the above points.

As always thanks for the advice

 

[g]

I get the impression they were trying to shift blame / focus on to us.

Probably unlikely. To prevent weakening and potential lapse, holders of registered marks have to actively protect them - of which the notification you received is an initial requirement.

Understanding might be helped by considering the hypothetical instance of someone other than the holder of a registered mark using an email address of 'anything@their-name-plus-something-else' - in which case the potential for a third-party to assume the email address to be one belonging to the trademark owner is greater than the previously mentioned 'their-name@your-name' and 'business-name@isp-name'.

Although in your instance potential for misunderstanding is less, the same principle of 'business use' applies (and for which the scope of the trademark will be a relevant factor). 'Not public domain' (though it could easily become so) isn't relevant.

 

[surreyaces]

Although not exactly on point, this reminds me of this recent case involving BMW:

http://ipkitten.blogspot.co.uk/2017/06/bmw-wins-appeal-over-use-of-trade-mark.html

You need to tread carefully when using third party registered trade marks and make sure that your use of the mark is purely informative rather than misleading.

 

[obscure]

Although not exactly on point, this reminds me of this recent case involving BMW:

http://ipkitten.blogspot.co.uk/2017/06/bmw-wins-appeal-over-use-of-trade-mark.html

You need to tread carefully when using third party registered trade marks and make sure that your use of the mark is purely informative rather than misleading.

But that case is the exact opposite of what the OP is doing. In the linked case the company was using the Trademark as a Trademark (as in a mark used for trade). They had the words and logos on their external wall, business cards, T-shirts, - they were clearly being used to promote the business.

The OPs isn't using the word to promote their business (it isn't even public - just used by the customer) and is merely a way to identify who the communication is from.

 

[surreyaces]

Leaving aside everything else, it was held that the use of the Twitter handle @TechnosportBMW was infringing since it gave the impression of authorisation by BMW.

Let’s say I owned a shop called Youngs selling various products - clothes, accessories etc. If I set up an email address: [email protected], is it not theoretically possible that the email address might cause consumers to think that my shop was an authorised reseller of Rolex watches when it wasn’t?

 

[g]

Let’s say I owned a shop called Youngs selling various products - clothes, accessories etc. If I set up an email address: [email protected], is it not theoretically possible that the email address might cause consumers to think that my shop was an authorised reseller of Rolex watches when it wasn’t?

Yay... Woohoo!
Somebody gets the point I made days ago.

 

[Chris Ashdown]

That could be seen as passing off if used in that manner,

The OP method is rather stupid way of doing it when you can use the subject line for reference and search just as easy to identify emails to a person or company

Tradmarks are only valid for the named industries they licence: and in most cases its not the name but the image as many names like my old company "Internet Workwear" could not be trademarked for whatever code was for workwear

 

[Paul Kelly ICHYB]

What makes you think it is coming from your supplier? I could send emails from any address in seconds......

 

[obscure]

Leaving aside everything else, it was held that the use of the Twitter handle @TechnosportBMW was infringing since it gave the impression of authorisation by BMW.

Of course... because it is public facing.... unlike the OPs case.

If I set up an email address: [email protected], is it not theoretically possible that the email address might cause consumers to think that my shop was an authorised reseller of Rolex watches when it wasn’t?

Not if (as in the OPs case) the public never know that email address exists.

Sure, if you SEND emails from [email protected] out to customers/the public/all suppliers then yes, that would be using their trademark to imply a connection. But the OP isn't doing that. The email account was set up for his supplier (and just them) to send emails to the OP. It is, in effect a secret email address known only to them and as such the use can't be considered either an infringement or passing off as no one else knows about it.

 

[surreyaces]

I like the fact that you say of course, like it's obvious, when in fact the judge at first instance decided that such use did not infringe. It's far from black and white!

Having said that if what you said is true, and that is the only way that the email address is being used, then I agree with you that it should be OK.

 

[obscure]

I like the fact that you say of course, like it's obvious, when in fact the judge at first instance decided that such use did not infringe. It's far from black and white!

Of course I did, as it was obvious. The judge would have thought so too if they had been better at their job. Of course they realised their error eventually (or a higher court did) so it was all good.