trademarks/copywright

[Paul Bulpit]

Re. Norman's comment, if you search a well-known auction site for 'actinic' you get a load of lightbulbs for aquariums. So it's a generic word with a principle meaning that has nothing to do with ecommerce software. It's also in Wiki as a medical term.

However, if a domain name seeks to latch on to a known product/service/company offering some service related to that company's offerings, that could be dodgy - but then, who is going to type in the url incorrectly (so it's NOT seeking to deceive) to that extent. So it must be there to promote services which genuinely seek to support users of the original product.

I give you www.actinicplugins.co.uk which as the owner says

You have to have permission from Actinic to use Actinic on your eCommerce related website

so is probably OK.

Therefore I contend that actinicstuff is perfectly acceptable for use by someone offering additional services related to the core offering, and not provided by the core offerer.

On the other hand, I have had a dispute with my ownership of a domain that was just one letter different from a competitor - changing a generic word to a plural, as often voiced by customers - came to blows. They should have thought of the connotation - they did with co.uk, but not .com.

My view is that actinicstuff is significantly different - but you might not get away with say, actinix, actinik, if the domain were offering an alternative, but related, product. Then again it could be offering lightbulbs or skin lotions, & that would be OK, as punters would not be deceived.

[Mark Evenden]

www.mikerowsoft.co.uk might get a phone call from Bill?

[cbarling]

There's lots that could be said about this topic. I've recently given a talk on it, using Actinic as a case study. It was arranged by a medium sized firm of lawyers and the UK Patent Office was there, so I'm reasonably certain of the facts.

There are various ways that you can protect your Intellectual Property including registering trademarks, designs and domain names.

"Actinic" is a registered trademark in the area in which Actinic operates. The fact that "Actinic" is used in other contexts is irrelevant, otherwise "Orange" couldn't be trademarked. Actually, the use of the colour orange is protected in the mobile phone space, would you believe.

Because we have our trade mark, we can approach anyone with a domain name containing "Actinic" that encroaches on our space and ask them to stop. Incidentally, we have already done that a few weeks ago with the domain name mentioned earlier in this thread.

It'a actually not true that we can't do anything about people using "Actinic" in their domain names. I'll make sure that is clarified for others in the company. We have a legal right to take action against anyone using our trademark in our area , although obviously not if someone is selling light bulbs, which isn't in our area.

Trade marking is, in my opinion, a critical defense. If they can afford it, I would recommend people register their trademark before they even open up their business. That way, you can make sure that you can actually trademark the name you've chosen (some names are too generic and aren't allowed) and you can also make sure no-one else has already got it. Once you've started up, it's very hard to change names.

Incidentally, as a result of having a trade mark, we are able to get Google and eBay to stop people advertising on our name.

Chris

[davidbenson]

What do others think?
We registered a .co.uk name of a European manufacturer whos products we sell. We did it because we were 'offered' it by a name registering company via a phone call. They wanted a lot of money for it so while they were kept talking we registered it ourselves. Although we have only used it a few times in printed adverts the manufacturer asked us to cease using it. Despite the fact it was selling their products and they have no direct marketing or advertising within the UK. It referred directly to our normal site where all the products are shown complete with their name. Should we start using it again in printed advertising?

[Duncan Rounding]

...the manufacturer asked us to cease using it....

That's like me registering microsoft.biz or microsoft.net or suchlike - I would be getting visitors that might think I was microsoft.

Just because you were offered it doesn't mean you have the right to use it legally. I would expect you'd need the manufacturers consent to use it. If you go against their wishes maybe they would stop supplying you.

[RuralWeb]

What do others think

If you are using a trade marked word in a domain or otherwise then you are guilty of "passing off" ie attempting to create an association with a product or brand in order to potentially decieve customers.

This is why companies MUST as Chris says protect thier brand by trademarking. It only costs £200 if you DIY but can save you a fortune in the longterm and if you ever consider selling your business then it is vital that you own the trademark.

[RuralWeb]

From the Trademark office website:

Unauthorised use of a trade mark6 months and or a GBP £5,000 fine

[pinbrook]

What do others think?
We registered a .co.uk name of a European manufacturer whos products we sell. We did it because we were 'offered' it by a name registering company via a phone call. They wanted a lot of money for it so while they were kept talking we registered it ourselves. Although we have only used it a few times in printed adverts the manufacturer asked us to cease using it. Despite the fact it was selling their products and they have no direct marketing or advertising within the UK. It referred directly to our normal site where all the products are shown complete with their name. Should we start using it again in printed advertising?

i wouldn't use it for all the reasons already stated in this thread, you've got more to lose than`gain

[davidbenson]

Thank you for the response. We did stop using it all adverts at their request and just kept a page for visitors who found it by accident. It gave a choice to redirect either to their site or ours. Their site has not worked properly for about 9 months since a change of ISP (so I was told) and after some time, and several reports from disgruntled visitors, we dropped the link back to them. They list most of their dealers throughout the world on their site but re-directs from them have been almost non-existent.
We doubled our sales of their products last year and have a good relationship with them and do not wish to spoil that.
I see that in the USA their name is used as ****usa.com and this made me think about using it again in the UK.
I thank you all again and appreciate your comments.

[jont]

gave a choice to redirect either to their site or ours.... we dropped the link back to them.

I would still keep the link - if the company takes another peek at least you can say you are directing people to their site. If you sell other manufacturers products I would also ensure the link from the site points straight to the same product section on your main selling site. It may also be worth placing a note on the page that you are not the official manufacturer but a major distributor in the UK for their products.

I have found in the past if you play fairly with the producers and help to shift their products they are often OK with it.... although the bigger global bullies tend to unleash legal teams at you if they can spell their name from the letters made up from a paragraph of text!!