TM issue - please helpHi mates,

[wizja]

TM issue - please help

Hi,

I've received such an email concerning my Nikonian.eu website:

Mr. [my surname],

We are the owners of Nikonians, a registered trademark in several countries.
We own a lot of property around that brand, included but not limited to nikonians.eu. Furthermore, we also own the trademark "nikonian" and it has been in use since the year 2000.

You are hereby requested to cancel the domain you have registered and take down the site without no further reminder from our side. Please inform us when that has been made.

Sincerely,
Bo Stahlbrandt
Nikonians EMEA Ltd.

And I did respond them with:

Dear Sir,

I did not mean to infringe any of your trademarks law concerning Nikonians.org property. Before I have registerd my domain name I did search several trademark databases and did not find what you say. I see that the "Nikonians" is indeed the registered mark of yours but I could not find the same for "Nikonian". As a proof I provide you with the following database search enigines:

United States Patent and Trademark Office:
http://tess2.uspto.gov

UK Patent Office:
http://webdb4.patent.gov.uk

Polish Trademark and Patent Office:
http://www.uprp.pl

If you can prove the "Nikonian" is a trademark of you here in Poland I would be appreciated.


Kindest Regards

There is also a website Nikonian.de and it is not the property of them. They don't have any information about "nikonian" trademark on Nikonians.org (only about "nikonians" tm).

What do you think about it? Please help me with this one.


Regards,
wizja

 

[wizja]

Got reply to my mail:

Mr. [surname],

Nikonians is a registered trademark and it is also a EU wide application. Furthermore Nikonian is a
trademark and has been in use since 2000.

Please stop the use of the stated trademark immediately and inform us when that has been done.

Sincerely
Bo Stahlbrandt

For sure they cannot prove, otherwise they will do it till now. Well.

 

[DNQuest.com]

The TM application was denied in the US. If they have a TM, it is in Germany. You need to be registered to search their TM site. I didn't feel like doing it. But it appears they themselves are using a Registered mark for their TM. (Nikon, which may be why it was denied in the US). But they are using the registered mark after their claimed TM.

It does seem like they at least some sort of rights to the name. But you made several mistakes in your correspondance...

1- In TM law, "simialr or CONFUSINGLY similar" is the rule of thumb. A name does not have to be exact to be protected by TM law.

2 - You acknowledge their registered TM, but if you would have looked further, the registration was denied. But by your statements, you are acknowledging their TM status (TM does not have to be registered to be a TM). Never admit to another's TM in correspondance.

3 - You do not state the reason you registered the domain, thus showing you did not have "bad faith" intentions. When I answer letters like this, I never acknowledge thier TM, and I state my reason for registereing the domain and my plans I have for it. (This does come under the "inventing a reason" at times which I thoroughly hate).

4 - Countries will recognize other countries TMs, so they do not have to be registered in a country to have TM status.

The good thing you did was ask for supporting thier TM. If they have one, it would be in Germany. If they don't, then they are miss-using the registered symbol and I would let them knnow that. I have a feeling they don't have a registered mark and like I said, thier TM is based off of Nikon's registered TM. So if anything, Nikon should be coming after you. Another thing that makes me think they do not have a registered mark is on their site, they state they are not affiliated with Nikon and acknowledge Nikon's TMs. If they had permission to use Nikonian, that would be statedd on the site also (or at least I would have it on there).

This could be a tactic of bullying and if they do not have a registered mark, they may not be able to fight it on the basis of TM since thier Alleged TM is based from another TM.

 

[IAmAllanShore]

I'll keep the advice short here, but responding to emails like this without seeking wise counsel first is almost always a mistake.
Your email in response to their first almost certainly hurt your overall position if push does come to shove.
Here's to hoping for an amicable conclusion.
-Allan

 

[fonzie_007]

As DNQuest and IAAS already noted, your biggest mistake was acknowledging their TM and your infringment. Never, never, ever, admit to anything until you have spoken with a lawyer. Your rights to the domain may be irreparably harmed due to your response. I'd fight this guy tooth and nail just because he sounds like a jackass (a bad case of the pot calling the kettle black). Best of luck with your fight.

 

[mis_chiff]

(server too busy message...yikes)


Very interesting read. Good information to know
(especially for us "noobs")
Thanks for sharing

The TM application was denied in the US. If they have a TM, it is in Germany. You need to be registered to search their TM site. I didn't feel like doing it. But it appears they themselves are using a Registered mark for their TM. (Nikon, which may be why it was denied in the US). But they are using the registered mark after their claimed TM.

It does seem like they at least some sort of rights to the name. But you made several mistakes in your correspondance...

1- In TM law, "simialr or CONFUSINGLY similar" is the rule of thumb. A name does not have to be exact to be protected by TM law.

2 - You acknowledge their registered TM, but if you would have looked further, the registration was denied. But by your statements, you are acknowledging their TM status (TM does not have to be registered to be a TM). Never admit to another's TM in correspondance.

3 - You do not state the reason you registered the domain, thus showing you did not have "bad faith" intentions. When I answer letters like this, I never acknowledge thier TM, and I state my reason for registereing the domain and my plans I have for it. (This does come under the "inventing a reason" at times which I thoroughly hate).

4 - Countries will recognize other countries TMs, so they do not have to be registered in a country to have TM status.

The good thing you did was ask for supporting thier TM. If they have one, it would be in Germany. If they don't, then they are miss-using the registered symbol and I would let them knnow that. I have a feeling they don't have a registered mark and like I said, thier TM is based off of Nikon's registered TM. So if anything, Nikon should be coming after you. Another thing that makes me think they do not have a registered mark is on their site, they state they are not affiliated with Nikon and acknowledge Nikon's TMs. If they had permission to use Nikonian, that would be statedd on the site also (or at least I would have it on there).

This could be a tactic of bullying and if they do not have a registered mark, they may not be able to fight it on the basis of TM since thier Alleged TM is based from another TM.

 

[Dave_Z]

Hmmm, it appears they're not requesting the domain name to be transferred
to them. Just cancel it.

 

[IAmAllanShore]

What use would you have for the word "Nikonian" that didn't infringe on their use anyway?
It's not like the domain was "chips.eu", nikonian seems to be quite specific (And which you seemed to have missed the meaning of in the above...?)
http://en.wikipedia.org/wiki/Nikonian
-Allan

 

[AGS]

I'll keep the advice short here, but responding to emails like this without seeking wise counsel first is almost always a mistake.

I could not have put that any better myself.
Good sound advice there mate.

 

[binaryman]

I searched the OAMI for you (no result)

Benelux,Europe and International Trademarks (no result)

Madrid Protocol ( no result)

 

[IAmAllanShore]

http://www.google.com/search?sourceid=navclient&ie=UTF-8&rls=GGLD,GGLD:2004-42,GGLD:en&q=nikonian (result)
-Allan :gl:

 

[AGS]

Sounds like a bloody nickname LOL

I cannot see a TM issue with that but you still should not have acknowledged the email mate.
I doubt very very much that they have a case against you.

Not even a camera case :lol:

 

[robertjr]

As DNQuest and IAAS already noted

Sorry to be off topic, but this had me ROFLMAO.

 

[IAmAllanShore]

Sorry to be off topic, but this had me ROFLMAO.

por que?

yo no se por que?

Why, robertjr, why?

-Allan

 

[robertjr]

I had to read it four times to be sure it was not "I A$$" So, I got me laughing.

OK....It's late and I need some sleep.

 

[wizja]

What use would you have for the word "Nikonian" that didn't infringe on their use anyway?
It's not like the domain was "chips.eu", nikonian seems to be quite specific (And which you seemed to have missed the meaning of in the above...?)
http://en.wikipedia.org/wiki/Nikonian
-Allan

Well, using the source you provide us with:

Nikonian or Nikonians refers to an individual or group of people who enjoy coming together and discussing their passion for photography using Nikon cameras. The word is in fairly common use on many photography websites. It is also applied to Nikonians.org

First of all Nikonian refer to people who enjoy taking photos using Nikon brand. Period. Like it says this word is common on photo websites. And finally it ALSO refers to Nikonians Org. The keyword here is ALSO.

I am photographer who use Nikon gear and belong to the polish nikon user group (nikon.org.pl). So I can say I am the Nikonian. That's why I like to use this name for my site.

Regards

 

[IAmAllanShore]

Well, using the source you provide us with:



First of all Nikonian refer to people who enjoy taking photos using Nikon brand. Period. Like it says this word is common on photo websites. And finally it ALSO refers to Nikonians Org. The keyword here is ALSO.

I am photographer who use Nikon gear and belong to the polish nikon user group (nikon.org.pl). So I can say I am the Nikonian. That's why I like to use this name for my site.

Regards

Ok... So I use Google. Can I carte blanche register "googler.com" or "igoogle.com" ? (Answer: "no")
Or, I used to work for McDonalds (That was fun!), should I be able to register and park McDonaldsEmployee.com or McEmployee.com ?
Sure, maybe some of those I could, but being a member of a group does not give one the freedom to use that groups branded name without restriction.
My examples above may not be the best, but I'm sure folks can think of others
-Allan :gl:

 

[DNQuest.com]

I searched the OAMI for you (no result)

Benelux,Europe and International Trademarks (no result)

Madrid Protocol ( no result)

As I suspected, they do not have a registered mark and are erronously using the mark illegally. Thought they are trying to establish a TM, registration was denied in the US. I assume Nikon may have had a say in the matter. The problem here is Nokin is the TM holder and they are allowing Nikonian to use thier TM. But I do not know if that gives Nikonian legal leverage. This one is interesting...

 

[labrocca]

Other than the advice already given I would basically ignore them from now and not even acknowledge them. I think it will be difficult for them. Possibly change registrars and add whois protection...even place the domain under fake information ownership. Yeah that's a bit grey to do but imho an eye for an eye and what they are pulling is some crap too. Best protection is to get down in the mud with them and fight it out. I think you have a good chance of keeping the domain if you keep your head down. Legally their best evidence is your email reply which really isn't great evidence from a judicial standpoint. Basically you made an error by not consulting a lawyer first.

 

[wizja]

Thank you all for support and your time. I hope it will not be so difficult to manage this situation. Thank you once more!

Regards