.mobi TM Questions and discussion

[yoyosean]

here is a question. What if you live in egypt and the trademark rule in egypt differ from those in the us, how does that affect TM's do all tld's sign onto some rules that the USPTO dominates?

Maybe somebody has a tm in china, someone has one in brazil and someone has one in the US whose trademark trumps or does it when it comes to mobi tld extension?

 

[mykel241]

If it is .com I believe that is universal but if you register a .ca and a trademark exists for the domain name in canada then you most likely would lose it. But, if you had a .US and the trademark in the .US they would have no legal grounds to entitlement as thier mark is just in Canada. I am not sure though how it would out with .com though...

laws are ment to be interpreted, this way those with the most money wins...

Mike

 

[fautebol]

here is a question. What if you live in egypt and the trademark rule in egypt differ from those in the us, how does that affect TM's do all tld's sign onto some rules that the USPTO dominates?

Maybe somebody has a tm in china, someone has one in brazil and someone has one in the US whose trademark trumps or does it when it comes to mobi tld extension?

Trying to summarize, there are two things with TM:

1. First do you have a right to the name, can you keep the name?

TM are usually for a territory and for a category of products and services. If you have a TM in Egypt and someone has it in the US, it will be first come, first served (for example, during Sunrise period).

The same if you have a TM for a category of products or services and someone for another.

Even if you don't have a TM, you can register some names, especially generics, that are TM as long as you do not act in bad faith. If I want to use a name for something, and it's TM for something else, it will not necessarily be a problem. What is important is not if it is TM or not, but for what.

2. What can you do with the name?

If you did not TM your name in some countries, you risk to infringe the rights on someone else by using this name in the other country. For example, "marketiva" is TM in the US for "currency exchange and advice" by Marketiva Corporation. If you do currency exchange and advice in the US with the name "marketiva" and you are not Narketiva Corporation, even if you have a TM (for example in Egypt), you could infringe the rights of Marketiva Corporation which will certainly not accept it.

 

[yoyosean]

yes but if .com is universal and two companies from different parts of the world have the same name and each has a tm in their respective countries, who wins? My real question is on .mobi being a "universal" tld who wins first to register, first to buy or do tm's mean anything in that case, this reflects back to the marketiva 95,000 sale

you infringe but whose laws apply? do i as an american company give up my rights to a name to an egyptian company or vice versa.

Lets say the chinese company owns the domain and the american company calls tm infringement even though they both have the TM can i sue in the US to block the usage of the name and if i go to arbitration who wins?

 

[fautebol]

My real question is on .mobi being a "universal" tld who wins first to register, first to buy or do tm's mean anything in that case, this reflects back to the marketiva 95,000 sale

It's what I tried to answer. First to register, first to buy wins the name. However, it does not guarantee that you can use the name worldwide. You could have the name, but you could still be forbidden to sell your products or services in some countries.

do i as an american company give up my rights to a name to an egyptian company or vice versa.

No.

Lets say the chinese company owns the domain and the american company calls tm infringement even though they both have the TM can i sue in the US to block the usage of the name

Generally, yes, you could, but only for the US market.

 

[yoyosean]

but you cant block someones .com address in the US can you? you can try to prevent them from selling goods and services but i dont see how that is possible. does the us govt. give a cease and desist to a company in egypt, what if they dont care and they continue to sign up users? their servers are hosted in egypt and their registrar is in egypt how can you possibly keep them from "infringing" on the us companies tm?

 

[fautebol]

This is a big and difficult question. Does only a visible sign on a screen constitutes infringement or the mere accessibility of a web site or active sales? It can vary from contries to countries. I am not an expert in IP law and do not have time to develop now. But fore sure it's problematic in practice.

Here you will find WIPO recommendations:
http://www.wipo.int/about-ip/en/development_iplaw/pub845-toc.htm#TopOfPage

However, you will see that it reads :
The determination of the applicable law itself is not addressed by the present provisions, but left to the private international laws of individual Member States.

 

[yoyosean]

laws of individual states!!!!!! that is the key and i bet that the guy in egypt that owned marketiva had nothing to worry about whatsoever they probably do not recognize tms of other countries and give their citizens the benefit of the doubt! I am moving to Cairo and cybersquatting everybody : 0