PLS.HLP:Possible Accidental Trademark Infringement

  SimpleSimon1 10:13 19 Feb 08
Locked

Guys

I hope someone can offer some thoughts or advice on the situation we currently find ourselves in.

My wife is a hypnotherapist and about 9 months ago, we registered a domain (of the form 'abcdefg.co.uk') and put up a small two-page web site to publicise her practice.

As part of the registering process, I checked that there were no other similar domains to our one (the .com has since been taken by someone in the same business, in America but we have no problem with that).

Today we got a 'take down' notice from another UK-based hypnotherpist! It would appear that they have registered the trademark 'abcd-efg' and claim that our use of the form 'abcdefg.co.uk' (without the hyphen) in our domain name infringes this trademark.

The hypnotherapist in question is reasonably well-known within the profession (not the general public) and they certainly use this trademark extensively within their [quite high profile] web site and literature (although not in their registered domain names). Moreover, they certainly have had this trademark registered long before our domain came along.

However, we hit on the same phrase purely by accident (given the profession, it could be seen as quite an 'easy' construct to come up with) and never looked at their web site until this notice came along. More importantly, we don't use that trademark anywhere on the site or in any of my wife's literature.

That being the case, can anyone (especially FE who seems to have quite a bit of knowledge in this area) offer any thoughts on how to proceed?

If we have genuinely [accidentally] infringed this guy's trademark, I guess we could stop using the domain) although it would be a bit of pain and put us to a bit of expense (reprinting leaflets etc). However, if we do shift domains, how do we stop this occuring again? I thought that it was only necessary to check for similar domains, in a profession. If we also have to check for Trademarks, how/where do we carry this out?

All thoughts etc would be very welcome. I'm not a lawyer and really don't want to escalate/go to the expense of lawyering-up. However, at the same time, I really would like to get a feel for where we stand

Simon

  Proclaimer 14:26 19 Feb 08

When deciding whether a name is 'the same as' another name, the Registrar ignores punctuation, the company's status, 'the' at the start of the name, and words like 'company (or co)', 'and (or &) company (or co)'.

A name that sounds the same as one already on the Company Names Index may be accepted if the two names are spelt differently.

For example, if the name 'Hands Limited' is already registered, then the following would be rejected:

Hands Public Limited Company (or PLC)

H and S Limited (or Ltd)

H and S Public Limited Company (or PLC)

H & S Limited (or Ltd)

any of the above, with the addition of 'Company (or Co)' or 'and (or &) Company (or Co)'

So not easy to get the name you want, I suspect that domain names would follow the same guidelines (rules) but when looking for domain names the search you do is for the one you want, not similar ones that may prohibit your desired choice.

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