question Trademark Check

[Isac]

Hello friends,

I need some help. Can anyone tell me how can we check trademark of a domain name, brand name or app name.

Thank You !

 

[jberryhill]

He John

would you consider to explain why
that is so

and is it true only in the USA?

Frank, what you "get" by registering a trademark varies from country to country. For example, in the US, registration of a mark: (a) automatically confers nationwide effect, (b) shifts the burden to the defendant in a trademark suit to disprove distinctiveness and ownership, (c) confers jurisdiction in federal courts, and a few other procedural advantages. But registration is not how one "gets" a trademark in the US and in many other places. There are reasons why I would want to register my mark, but whether or not I register my mark is not what determines whether or not I have one.

Because this is a domain forum, the most usually relevant set of rules with which we are concerned is the UDRP. Regardless of the fact that "common law marks" are not recognized in many jurisdictions, UDRP panels will regularly accord unregistered TM rights to complainants from civil law jurisdictions, for a variety of reasons we can discuss in greater detail if you'd like.

This topic is covered in the WIPO UDRP Overview at 1.3:

http://www.wipo.int/amc/en/domains/search/overview3.0/#item13

As noted in section 1.1.2, for a number of reasons, including the global nature of the Internet and Domain Name System, the fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP.


Also noting the availability of trademark-like protection under certain national legal doctrines (e.g., unfair competition or passing-off) and considerations of parity, where acquired distinctiveness/secondary meaning is demonstrated in a particular UDRP case, unregistered rights have been found to support standing to proceed with a UDRP case including where the complainant is based in a civil law jurisdiction.

---

Okay, so, to cut to the chase on why it is that relying solely on registration databases to determine whether someone has a trademark is a fool's game, the bottom line is that UDRP panels will recognized unregistered TM rights claimed by complainants in jurisdictions whose own legal systems do not.

And, using "apple" as a counterexample requires a very simple-minded approach to what I said. If one is not aware that "apple" is the name of a common fruit, and that it remains free to use for that purpose, then one should probably not be trying one's luck at domaining in the first place, and should find something more appropriately suited to one's intellect.

 

[jberryhill]

...and here's a case that drives the point home quite clearly:

http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-1394.html

The issue is as to whether or not the Complainant can be said to have trade mark rights in the name of its hotel complex. The Complainant has no registered trade mark rights, so the question is as to whether or not it has unregistered common law trade mark rights or their equivalent for the purpose of the UDRP.


The word “Uniform” in the name of the UDRP is primarily a reference to uniformity across the gTLDs. At a minimum, implicit in the introduction and scope of the UDRP is its global application. The Panel takes the view that the Policy needs to be applied as uniformly as possible across the globe, particularly when dealing with a domain name in one of the gTLDs (which can be obtained and accessed around the world, irrespective of jurisdiction). Were it otherwise, on an issue such as this complainants from many civil law jurisdictions would in certain scenarios be at a disadvantage when compared to their counterparts from common law jurisdictions and those civil law jurisdictions, such as Germany, which make special statutory provision for unregistered trade mark rights.


Secondly, for the purpose of assessing what might constitute an equivalent to a common law trade mark right, it is important to understand what a common law trade mark is. In this context it is a name or sign, the use of which (or a confusingly similar variant of which) a person can restrain by way of a passing off action. For the purposes of a passing off action the plaintiff needs to be able to prove that (a) it has a reputation and goodwill in respect of the name or sign in question, (b) the defendant is using it or a confusingly similar variant of it to cause deception in the marketplace and (c) the plaintiff is suffering or is likely to suffer consequential damage.


In other words, in a common law jurisdiction, if a third party set up in competition with the Complainant under the same or a confusingly similar name, the Complainant could succeed in a passing off action and stop the activity complained of if it were able to establish those three elements.


Given the global nature of the domain name system and the international nature of much of the world's trading activity, it is entirely possible that a complainant that is physically located in a particular civil law jurisdiction could nonetheless establish common law trademark rights outside that jurisdiction by virtue of its international (including on-line) operations. Indeed, in this case, the Panel has been invited to conduct a Google search using the name of the Complainant's hotel complex, Palais Stephanie, and from the results of that search, supported by the fact that the Complainant's website has an English language version, the Panel would have thought that there was scope for the Complainant to have made out an argument on those lines. However, it did not do so and has not produced any evidence to enable the Panel to make any such finding, so the Panel turns to the jurisdiction in which the Complainant is physically located, which is France.


In a civil law jurisdiction such as France, the Panel believes that the Complainant could achieve a result comparable to that available under an action for passing off by way of an unfair competition action, provided of course that it could prove a reputation and goodwill in respect of the name, the deceptive activity of the defendant and the likelihood of damage. In other words, albeit by way of a somewhat different route, the Complainant's rights in respect of its name are potentially no different from those of a trader in a common law jurisdiction.


It is on that basis that this Panel is prepared to hold that the Complainant has rights in respect of the name, “Palais Stephanie”, for the purposes of paragraph 4(a)(i) of the Policy provided that it can satisfy the Panel that the three elements necessary for a passing off action are present.

-------------

So, bottom line: While the circumstances may have changed regarding what that particular complainant may have since registered as a mark, searching databases for registered marks at the time that domain name was registered would have been a waste of time, instead of conducting a Google search to see if a relatively uncommon non-generic phrase or combination was, or was not, being used as a trademark somewhere.

And, yes Frank, the panel in that case specifically calls out Germany as a jurisdiction in which complainants would be disadvantaged if, under the UDRP, there was not a somewhat uniform application of certain broad principles of unregistered TM rights.

 

[frank-germany]

@jberryhill

you are obviously a lawyer
and I am not

I did not read all of your post
as I am not clever enough to understand all of it
(that's why I have a lawyer to handle those issues)

what I am missing is:
even if somebody has a trademark
and you register the same .com or whatever
that does not necessarily mean that
you are infringing

I have chosen apple as an example
not because it's a fruit
but because
-as far as I know-
the beatles have the trademark for apple first of all

https://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer

the computer company was doing fine until they started itunes
here comes the conflict

which shows
that the use ( class )
is the major aspect

if you don't use the domain
to missguide people and profit from other peoples work
and start something else with it
you are not infringing

that' at least is my understanding


I am not a lawyer
but can read
no legal advice
ask your lawyer
and get a good one

 

[frank-germany]

Were it otherwise, on an issue such as this complainants from many civil law jurisdictions would in certain scenarios be at a disadvantage when compared to their counterparts from common law jurisdictions and those civil law jurisdictions, such as Germany, which make special statutory provision for unregistered trade mark rights.

https://www.wettbewerbsrecht-berlin.de/blog/allgemein/15-verbreitete-irrtuemer-im-markenrecht/


Natürlich kann man auch ohne eine Markeneintragung in das Register vom Deutschen Patent- und Markenamt Markenschutz erlangen. Die Anforderungen daran sind jedoch sehr hoch, da der Bekanntheitsgrad des Zeichens, für den der Schutz gelten soll, sehr hoch sein und im Streitfall nachgewiesen werden muss. Der Verkehr muss das Zeichen einem bestimmten Unternehmen zuordnen können oder einem bestimmten Produkt.

Hinzu kommt, dass die Unterscheidungskraft des Zeichens in Verbindung mit der Bekanntheit betrachtet wird. Ist ein Zeichen außergewöhnlich, reicht ein relativ geringer Bekanntheitsgrad aus, um Markenschutz zu erlangen. Handelt es sich aber um normale Begrifflichkeiten, so kann ein Freihaltebedürfnis begründet werden und der Bekanntheitsgrad muss sehr hoch sein, damit dem Zeichen markenrechtlicher Schutz zugesprochen werden kann.

Da es schwierig und nahezu unmöglich sein wird, den Bekanntheitsgrad eines Zeichens in der Vergangenheit zu ermitteln, macht es Sinn, Marken eintragen zu lassen.

Denn im Markenrecht gilt der Grundsatz der Priorität, nachdem die ältere Marke sich gegen die jüngere Marke durchsetzt.

So kann also ein nicht eingetragenes Zeichen von einer jüngeren eingetragenen Marke verdrängt werden, weil es dem Inhaber des nicht eingetragenen Zeichens nicht gelingt, die Bekanntheit seines Zeichens zu einem früheren Zeitpunkt zu beweisen.



google translate:
Of course, you can also obtain without a trademark registration in the register of the German Patent and Trademark Office trademark protection. However, the requirements are very high, as the degree of familiarity of the sign to which the protection is to apply must be very high and must be proven in the event of a dispute. The traffic must be able to assign the sign to a specific company or to a specific product.

In addition, the distinctive character of the sign is considered in connection with the notoriety. If a sign is exceptional, a relatively low degree of brand awareness is sufficient to obtain trademark protection. But if these are normal terminology, then a need to be kept free can be justified and the level of awareness must be very high, so that the trademark can be granted trademark protection.
Since it will be difficult and almost impossible to determine the degree of familiarity of a sign in the past, it makes sense to register trademarks.

Because in trademark law, the principle of priority applies after the older mark prevails against the younger mark.
Thus, an unregistered sign may be replaced by a more recent registered trade mark because the owner of the unregistered sign can not prove his reputation at an earlier date.

 

[jberryhill]

What factors may or may not be applied under German law to trademark claims in German courts is not the same thing as what factors may or may not be applied when a German claimant in an unregistered mark brings a UDRP against someone somewhere else.

But, yes, the blog excerpt you are posting here says the same thing - i.e. you are not going to find "all of the trademarks" in any trademark database, since there are also unregistered marks, even in Germany. If you want to find out if someone is prominently, notoriously and exclusively using a given sign as a mark, then Google is a more comprehensive way of figuring that out, for the simple reason:

In addition, the distinctive character of the sign is considered in connection with the notoriety. If a sign is exceptional, a relatively low degree of brand awareness is sufficient to obtain trademark protection. But if these are normal terminology, then a need to be kept free can be justified and the level of awareness must be very high, so that the trademark can be granted trademark protection.

In other words: organic search rank can be a rough proxy for brand awareness. First off, it is what they are calling an "exceptional" term - which is a mark with a high degree of inherent distinctiveness - then whether or not someone is using it, or a similar term, as a mark, is going to stick out pretty readily.

Here's a simple exercise I'd like to see someone try.

I've taken words for different materials and combined them into two terms:

STEELWATER

ROCKMUD

Just doing a casual Google search for each of those, can you answer these two questions for STEELWATER and ROCKMUD.

1. Does it look like it might be a trademark?

2. For what goods does it look like it might be a trademark?

Because once you've done that, then it also helps as a starting point to figure out WHO might have the trademark, WHEN they might have started using it (since a lot of companies have "about us" pages and other information, and WHICH DATABASE might be a good bet for searching further for registered marks. If you do a Google search and it looks like there is someone in Australia strongly associated with the term, then you might want to go check out the Australian database and company register, etc..

 

[frank-germany]

he should have googled it.
then he would't have won a UDPR complaint


“The disputed domain name was registered in 2006, almost 10 years before the Complainant’s trade mark was registered in the USA or Canada, and it is therefore unsurprising that the Respondent had not encountered it. Moreover, the Complainant has not produced any evidence to substantiate its claim of reputation in jurisdictions around the world. Whilst, as at 2006, the Complainant may have been known in Germany, there is no evidence to show that it was known in the USA or Canada at that time. In particular, the Complainant has not produced any evidence of the value of its sales, before or after 2006, nor any details of its advertising spend nor any information concerning the extent of use of its trade mark.”

Copyright DomainGang.com: https://domaingang.com/domain-law/indian-domainer-wins-udrp-filed-against-the-domain-digel-com/