German trademark on Spanish domain?

[Rikkers]

I was contacted today by counsel for a German company regarding a Spanish domain, the name of which they hold a trademark for in Germany.

Before registering the domain I did check for Spanish, [EU] community & [WIPO] international trademarks. There were none.
The domain is currently parked & not listed for sale.

This guy is saying I should hand the name over because:-

"XXXX is a trademark of XXXXX GmbH, .....[registered in]Germany, affecting all european countries" & "protection of our trademark is covered by Art.8 Paris Act of the Paris Convention for Protection of Industrial Property".

I'm no attorney, but I don't think that a German trademark is valid in all Union states or that the Paris convention should mean that I am not at liberty to register this domain in another country of the Union.

Any past experience or qualified opinions on this subject would be most welcome.

..

 

[Kate]

It's difficult to say without any precise information. First one thing needs to be clarified: is it a German TM only or EU-wide TM ? It's possible to apply for EU-wide TM registration: http://oami.eu.int/
In that case TM protection would extend to Spain as well.
Anyway you should ask for proof and documentation from them, in order to assess whether they have a case or not. Demand all the proof, it's up to them to establish their rights.

 

[Rikkers]

It's difficult to say without any precise information. First one thing needs to be clarified: is it a German TM only or EU-wide TM ?

Thanks for the reply Kate. There is no doubt they have a German mark. Before registration I did check for Spanish, EU community & international marks, but was unable to find any.

 

[Kate]

Did they give you the reference # so you can check it out ?
BTW what is the TLD ? .com, .es or other ?

 

[ttu_soko]

I dont believe a trademark registered in one country is valid in every other country pursuant to the Paris Convention UNLESS that trademark holder has applied for a trademark in each separate country. For example, Pepsi has trademarks registered in almost every country, if they just had it registered in the US, anyone over seas can use the same trademark, regardless of the paris convention.

 

[nRnF]

Rikkers,
I dont know about the trademark issue, but if YOU live in Germany (as the company) it can really quick get expensive to you, as German law allows them then to write you a "Abmahnung" which is subject to XXXX fees right away without any discussions.
(Unfortunately german law allows this if both sides reside in Germany).
I hope you reside somewhere else.

Unfortunately this leagal trick is applied by lots of germans (legally or scams) to recover domains, if both resides in Germany.

 

[Rikkers]

Did they give you the reference # so you can check it out ?
BTW what is the TLD ? .com, .es or other ?

Yes they did & it is a valid word mark in Germany.

My domain is .es

if YOU live in Germany (as the company) it can really quick get expensive to you

Fortunately I do not

.

 

[Dave_Z]

I was contacted today by counsel for a German company regarding a Spanish domain

Check the Spanish domain's Registry for more info, specifically their legal fine
prints.