Latest News Articles from UKTrademarkRegistration.co.uk

Google Wins Trademark Dispute Against ‘Cybersquatter’

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The United States National Arbitration Foundation (NAF) recently ruled in Google’s favour regarding over 750 internet domain names that were deemed to be in violation of their internationally recognised trademark.

The respondent to Google’s complaints, Chris Gillespie, spent over £6,000 buying up names that involved the word “Google” and other trademarks, celebrity names, and keywords. His aim was to drum up traffic for his own websites, which are a soon-to-be online “gay network.” The result of the NAF’s rulings has given Google ownership of domains such as googlehonda.com, googleprophetmuhammad.com, googledonaldtrump.com, and googlecoors.com, and hundreds more.

Cybersquatting

Gillespie has been branded as a ‘cybersquatter,’ which is anyone who buys up domains containing company names with the hopes of profiting from the goodwill of the firm’s trademark. International car rental company Hertz, makeup company Avon, and even electronics giant Panasonic have all been ‘victims’ of cybersquatting in the past, as they didn’t register their Internet domain names before other enterprising individuals got to them first.

These companies were forced to buy the domain names back from their cybersquatters, but Google has managed to get a victory over what they called “one of the most aggressive campaigns of domain name infringement” that they had ever encountered.

Retaliation

All 750 websites pushed traffic towards an adults-only website, tgn.xxx, prompting Google to argue that their trademark was being used to promote pornographic material. However, Gillespie argued that he only redirected traffic to his .xxx site in order to measure traffic for his burgeoning online enterprise.

In retaliation, Chris Gillespie has filed for the registered trademark “Google” to be stricken from the books, as he argues that the term has now come to mean a generic word for “online search.”

Despite his protests, the NAF panel ruled that Google has sought and won trademark rights in many more nations than just the US. They also looked at the criteria for cybersquatting and ruled that all three pertained to Gillespie:

The domains bought and registered by Gillespie are “identical or confusingly similar to a trademark” for which Google has exclusive legal rights.
He had no “rights or legitimate interests” in the domain names.
Gillespie registered and used the domain names in “bad faith.”

These three criteria caused the NAF to rule in Google’s favour, showing how important it is for all firms to seek out legal protection against “bad faith” entrepreneurs with trademark registration .

Proview, Apple Battle Over “IPAD” Rages On

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One of the most recent cases in registered trademark disputes has proven that not even one of the biggest technology producers in the world, Apple, is immune to legal stand-offs and botched branding.

The bankrupt Chinese firm Proview has been battling Apple over their use of the registered trademark IPAD in China, which it says Apple bought illegally from a Proview affiliate that had no right to sell the trademark. Apple purchased the IPAD name from Proview Taiwan in 2009 for the meagre sum of just £35,000, in a move that they thought would give them absolute rights to use the IPAD trademark in China. However, Proview is claiming that only its Shenzhen branch had the right to tell their trademark, and has started a legal battle over the issue.

Move to settle

Proview, a firm owned by Xie Xianghui that once sold monitor and LED lighting equipment, won its first battle in court last December, despite Apple’s giant international presence and formidable legal team. The case has now gone into an appeal hearing, with Apple vying to have the decision reversed. However, both parties have reportedly been urged to settle out of court.

The possibility for an out-of-court settlement would spell a small victory for Proview, if indeed Apple was illegally using the trademarked IPAD name in China. China Daily and other news sources have said that the two firms are actively seeking middle ground in terms of how much needs to be paid to end this dispute.

Xie is quoted as saying that there is “still a big gap between the two sides on the settlement amount,” which means that while the issue may be settled, it is not closed.

It all goes to show just how valuable a simple trademark registration can be.

New battle on the horizon

Apple is responding to sales pressures by looking for a settlement, as it wants to start selling its latest touch-technology in lucrative Chinese markets as soon as possible. However, legal experts say that Apple is wary of inviting other legal battles from international firms just by seeming to give in too easily.

It may be particularly difficult for Apple to settle amicably with Proview now that they have started a legal dispute in Apple’s home country. They recently filed a lawsuit in the US which alleges that Apple hid its participation in the purchase of the IPAD trademark in China by going through a UK intermediary firm.

The moral of the story is that it is not enough to acquire a registered trademark, you need also to make sure that the trademark registration is assigned to you by a person who has the legal ownership of the trademark and the legal right to transfer it….but then again, you would have thought that all of this would have occurred to Apple’s trademark lawyer at the time .

One Direction in Band Name Trademark Infringement Battle

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One Direction, the X Factor stars who are on their way to becoming international superstars and are credited for bringing back the boy-band craze of the late 1990s, are currently locked in a legal battle over their band name.

The band, who are protégés of music mogul Simon Cowell, are being sued by an American group with the same name.

The American One Direction seek $1 million (£630,000) in damages, as well as a share of the British One Direction’s profits because of trademark infringement.

What’s in a name?

The heated ’Battle of the Band’ provides a lesson for all of us who have an idea, brand, band, or slogan that could end up making millions: protect your trademark in all the geographic markets that you are considering by way of trademark registration … and make sure you register a trademark before the opposition gets in ahead of you.

It is often overlooked that rock bands and groups are effectively legal partnerships and band names are a partnership asset that is jointly owned by all the members of the group absent any contrary intention. This causes huge problems when and if the band splits up. Who owns the band name? The answer is to ensure that the band name is protected by trademark registration.

It is not yet clear whether or not the lesser-known American rock band can truly claim trademark infringement, as it’s rather surprising that a seasoned music veteran like Simon Cowell would let his new talent launch an enterprise without knowing that their trademark is secure.

Some experts in trademark litigation say that groups and bands should look for names that are exceedingly unique and personal, rather than using a common turn or phrase, a strategy that can help avoid a One Direction catastrophe from happening.

*NSYNC, a boy band from the 1990s that achieved the kind of success that the X Factor group is hoping to achieve, is cited as a particularly good example because of the unique asterisk (often used as an apostrophe) and the fact that the band spelled the familiar phrase “in synch” uniquely, with letters from their own names.

No backing down

The American One Direction, who seek damages and a share of the British success story’s profits, told Radio 1 that though Simon Cowell “is obviously a very smart man,” they are not intimidated by his success in business.

Perhaps Cowell is not intimidating the American pop-rockers, but the British One Direction’s network of avid fans may be doing the job for him. Sean O’Leary, singer for the American group, said that they had received hate mail and even death threats from fans of the UK band over the legal battle.

Syco, Cowell’s record label, told the same Radio 1 programme that it was seeking an “amicable decision” over the trademark infringement case. Given the determination of the American band, the fact that they came together a year before the UK pop stars had even met, and filed a trademark application before them, an amicable decision may be far from in the works .

Chinese Firms Register High Street Names

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UK luxury brands are receiving boosts in sales from new international consumers, many of which are from China. A new generation of middle and wealthy classes are emerging in China, bringing with them an affinity for items and brands that mark prestige, such as Burberry, Mulberry, and Jaguar.

However, many of these brands will find that the Chinese love of high-end Western goods and marques is taking a new turn that will complicate their international expansion in the coming years.

Shocked business leaders

UK industry tycoons may be surprised to find out that Chinese individuals and firms are registering their specific trademarked names by the dozens. Names such as Sainsbury’s and John Lewis, both retail giants of the UK high street, are already registered in China by firms that have nothing to do with the companies as UK consumers understand them.

For example, the Hangzhou Buluna Garment & Accessories company owns the “Sainsbury’s” trademark name in China, and their quickness to register these trademarks will serve them for at least 10 years. The garment company was contacted by the Telegraph for comment, but none was available. Sainsbury’s has also chosen not to comment on the company’s registration of their name, but has reported that they began registering their trademarks in China years ago in support of eventual plans to grow in the Asian market.

Sainsbury’s is not alone, however: John Lewis and Waitrose are both registered trademark names belonging to the Li Can International Investment company. The right to use the name Dixons, also known by Chinese name Di Ke Xun, has been purchased by Shenzhen Basicon Electronics company, a giant in the Chinese mobile phones industry.

Individuals

It’s not just firms that are snapping up the opportunity to build their own brand on top of the recognition and prestige that UK companies provide. A single man, Liu Mingxi, now has the right to make and sell shoes, belts and other garments under the Asda name. Mr. Liu, of southern city Shenzen, will keep this right until 2018.

Even TopShop, perhaps Britain’s most widely known fashion export and first stop for young tourists and travellers visiting London, has been taken. A man named Zhuo Hongxiang owns the TopShop registered trademark in China until 2019.

The process of forward-thinking Chinese business men registering Western trademarks could make expanding business into China very difficult for Sainsbury’s and other large UK retailers. And of course, the booming state of China’s economy when compared to traditional UK trading partners in Europe will make it more and more enticing for UK brands to enter the Chinese market .

Should TWEETY PIE Claim Prior TWEET Rights?

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Global fame means maintaining a global ‘police watch’ on use of your trademark registrations, which for Twitter Inc, is a major task.

Twitter Inc has succeeded in securing a trademark registration in the UK for TWITTER, TWEET and RETWEET, but has had to oppose quite a few conflicting applications in the UK.

In a district court in San Francisco, Twitter is having to oppose a trademark registration (LET YOUR AD MEET TWEETS) belonging to Twittad that threatens to block Twitter from registering TWEET as its own legitimate" mark.

Twittad is a company that offers online advertising services specifically for use on Twitter and in connection with Twitter's services.

Twitter Inc considers that Twittad's trademark registration should be cancelled because it was registered for purposes the company does not use it for and because it exploits the popularity of Twitter. According to Twitter Inc, such use constitutes trademark infringement given Twitter's prior use and widespread consumer recognition of the TWEET mark and use of the trademark LET YOUR AD MEET TWEETS to identify Twittad’s services would be likely to cause consumer confusion. Under US trademark law, trademarks should not generally be issued if another mark exists and is therefore likely to cause confusion, mistake, or deception.

Twitter said that it had made a considerable investment in the word "tweet" and had filed an application to trademark it to protect the investment and "goodwill" associated with the word. It has certainly done so in the European Union. At least, Twitter has secured enough trademark registration muscle to prevent and argument that the word Tweet has become generic although policiing those rights on a global basis will be a constant struggle for the company. Even in Europe, whilst many twitter-related trademarks have successfully been opposed or withdrawn, there have been a number of successful registrations such as TWEETABILITY and CARTWEET, for advertsing and related services.

Twitter’s position is that prior to the launch of its social networking platform, TWEET was only associated with "birdsong" but that it had become "widely adopted by consumers and media outlets to refer to Twitter" since.

All of this rather overlooks the fact that Tweety Pie was the first real tweeter.

Methinks maybe Tweety Pie has prior rights!

Expelliamus Trademark Registratum! Harry Potter's Trademark Registration Spell

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Expelliamus Trademark Registratum!

Ahead of the opening of the 'Making of Harry Potter' theme studio attraction in scheduled for Spring 2012, Warner Brothers has gone trademark mad, recently filing EU Community Trade Mark applications for THE MAKING OF HARRY POTTER in no less than 19 Classes of the OHIM Trade Mark Register in addition to a suite of other familiar characters including:

HERMIONE GRAINGER
RAVENCLAW
SLYTHERIN
HUFFLEPUFF
MARAUDERS MAP
NEVILLE LONGBOTTOM
HOGWARTS EXPRESS
HONEYDUKES

In 2010, Warner Bros. purchased Leavesden Studios in Hertfordshire, England, which is the place where all of the 'Harry Potter' films were produced. It is located about 20 miles outside of London. According to the attraction's website, the Making of Harry Potter studio tour will last three hours, and allow us Muggles to see actual sets from the series, including the Great Hall and Dumbledore's office. The Great Hall set will come to life as fans get to see its solid stone floor and the same tables and benches that the wizards-in-training used in the first film, 'Harry Potter and the Sorcerer's Stone.' Dumbledore's office will be another treat on the tour, offering Potterheads a chance to see the Sorting Hat and the Sword of Gryffindor, as well as paintings from the films.

Nothing like the power of a brand.........provided it is protected by trademark registration.

Tickets go on sale later this year .

Trademark Registration - THE SUN ON SUNDAY - Possible Conflict Ahead

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Trademark Registration: THE SUN ON SUNDAY - Possible Conflict with News International

As the sun sets on The News of the World, speculation is rife that News International will orchestrate a new dawn for a new title aimed at exploiting the seeming inexhaustable appetite of the great British public for a sensational Sunday read.

It has been noted that a South London media agency, two days before the announcement of the demise of The News of The World, registered the domains www.thesunonsunday.co.uk and www.sunonsunday.co.uk. Coincidence? You be the judge.

Meanwhile, no trademark registration exists, nor any trademark application, for THE SUN ON SUNDAY in Class 16 for newspapers.

News International, should they launch a new title under the name THE SUN ON SUNDAY, could face a challenge from Newcastle Chronicle & Journal Limited whose trademark registration in Class 16 for SUNDAY SUN has a pedigree going back almost 30 years.

Should be a good fight.

Meanwhile, the technicalities of trademark registration are of little comfort to the employees of The News of The World who are facing not only the sack but a potentially blighted journalistic career given the moral turmoil of that has given rise to the demise of the title.....apparently.

London Law Firm, Silverman Sherliker has launched a News of the World Employees Action Group to provide legal support and advice to the erstwhile News of the World employees who are struggling to come to terms with the sensational news...of which they are, ironically. now themselves the primary subject .

London Law Firm Publishes The Trademark Registration Checklist

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A quick Trademark Registration 'Boot-Camp' that aims to explain the legal and commercial benefits of trademark registration and what every business should know about how to protect the legal rights in their business name....

1. Exclusivity: The One and Only…

Trademark registration will confirm your legal ownership of the name or brand and enable you to stop others using your name for the same, or similar, goods or services. A successful trademark application will mean that you quickly become the only business that can use the name in your sector. This cannot be achieved by domain name registration or by company name registration. Any name you adopt should be legally available, satisfy the criteria for trademark registration and should be registered as a registered trademark without delay. Trademark registration will ensure that you have the exclusive right to use your particular name or brand in your product or service sector in the geographic market for which you have obtained registered rights.

2. Stay Safe: Avoid Infringement Claims

A successful trademark registration demonstrates conclusively that your name is deemed to be legally available in your market sector and does not belong to anyone else. It generally means that pre-registration searches showed your name to be free for use and registration and that no one else was able successfully to oppose your application. Once you have obtained a trademark registration, the risk that your use of the trademark will infringe the trademark rights of anyone else is vastly reduced. The converse is also true. If you steam ahead and adopt a trademark without checking if it is available, and protecting it by trademark registration, you are running a very high risk that you will sue for trademark infringement by the owner of the mark. This ultimately means court action against you to restrain your use of the brand, and award of damages, confiscation and destruction of infringing stock and heavy legal costs.

3. Protect Goodwill and Reputation

A strong and memorable brand that is protected by trademark registration is the surest legal foundation on which to build the reputation and goodwill of any business. A business that soldiers on without the benefit of a registered trademark is missing out on a huge commercial opportunity. Strong registered brands (Mercedes, Google, Amazon, iPad, The London Eye etc) quickly pass into the collective consciousness of the world consumer market and become synonymous with quality, consistency and reliability.

4. Get Noticed: Differentiate Your Business

The main purpose of a trademark is to denote the origin of the products or services to which the trademark is attached. The trademark becomes a badge of origin and quality. In short, the consumer knows where it came from and what to expect. So every business has an equal opportunity to adopt a distinctive brand that it alone owns and protecting it by trademark registration. This enables the business to differentiate itself from every other business in the same market sector. It makes no sense to adopt a name that is already in use, or is similar to an existing name, since this will not serve to differentiate your business from the competition. Your brand should be strong, memorable and unique and, for this reason, invented or quirky words tend to be best.

5. First is Best: Avoid Pre-emptive Registration

Once you have identified a legally available name that you want to adopt for your business you need to bang in a trademark application without any delay. If you do not do so, someone else may file an application before you and you will lose the opportunity to own the name exclusively. This may be because someone else has seen your name in print or, for example, at a trade-show, and thinks it is a good name that they would like to use. It may simply be an honest, concurrent application. Whether it is coincidental or intentional, the first application will usually take precedence. To avoid a pre-emptive application act fast and do not invest in any name until you know that you have successfully protected it by trademark registration.

6. Anti-Sabotage Measure: Competitors

If you fail to protect your name by trademark registration, you lay yourself wide open to attack by competitors you want to close you out of the market by filing an application to register your name and then alleging that your continued use of the mark constitutes trademark infringement. If a competitor gets a trademark registration for your name, or a very similar name, you may have to stop using your brand and could effectively lose your business overnight. It may be possible for you to seek a revocation of the competitor’s mark on the basis that you used it first or perhaps that the competitor is acting in bad faith but this is likely to cost you a very substantial amount in terms of legal costs and you may fall short on proof. Sometimes an oversea competitor will seek to register your trademark in national markets where you have not protected you name for the same products(eg by filing an EU or Community Trade Mark for all of the EU Member States) with the intention of preventing you from expanding into those markets or selling your products in those countries without rebranding your products for those markets.

7. Anti-Retaliation: Employees, Suppliers, Developers

Given that anyone can file an application to register a trademark if they have a genuine intention to use it, you can see that it is very easy for an aggrieved supplier or ex-employee, or anyone else who has a grudge against you, or your business, to retaliate by getting a trademark registration for your name if you yourself have neglected to protect it. This can cause you a major headache. It is quite common for developers or joint venture partners to make a pre-emptive, retaliatory application for trademark registration of the business name in order to give themselves a negotiating platform in the settlement of a wider, ongoing dispute. Prompt trademark registration in the first place closes off this avenue of attack and ensures that your business cannot be held hostage over the ownership of its own name.

8. ‘Lock In’ Brand Value

By protecting your business name by trademark registration you are effectively ‘locking in’ your brand value. If you think about it, if you develop your business under a brand that you have not take the trouble to check out and protect, you are taking the very real and inevitable risk that the name you are using is legally owned by someone else. In such a case, all of your hard work and advertising spend under that name is actually simply building up the goodwill and reputation of a business that is owned by someone else. When you are obliged to stop using the name you will lose any brand value that you may have acquired and will have to start again with a new name. Lock in the brand value of your business by trademark registration.

9. Defeat the ‘Copy-Cats’

If you are successful, often competitors will try and copy your name and business model. They may, for instance, try and adopt a variant of your url. If you have protected your name by trademark registration, any copying of the domain name in this manner will probably amount to a trademark infringement and you will be able to stop them. Also, it is possible to protect, not just word marks, but also strap-lines, graphics, shapes and colours by trademark registration, so it is often possible to get a degree of exclusivity for the ‘look-and-feel’ of your business in this way, which also makes it much harder for competitors to copy your business idea effectively.

10. Assure Investors

Given the fundamental importance for any business of exclusive ownership of its brands and trademarks, potential investors often, quite rightly, require the business to demonstrate such ownership as a condition of making the investment. The most conclusive demonstration of ownership is a trademark registration certificate. Conversely, a conflict over name ownership is quite often a reason why investors do not proceed. Quite simply, they are not interested in buying into a legal dispute over the ownership of one of the main assets of the business.

11. Due Diligence: Satisfy Buyers

If you are planning to sell your business at any time, you will need to protect all of your names, marks and brands by trademark registration. Any prospective buyer will want to know that you have all of these rights under ownership and that there are no third parties using same name, which would obviously dilute the strength of the brand, or worse, actively seeking to prevent you from continuing to use your name. Since the value of the goodwill of your business is inextricably linked to the ownership of its trading name, failure to obtain a trademark registration can not only mean that you will not get the price you expect for your business, but, in difficult cases, your business may simply become unsaleable because of uncertainty or legal conflict over your right to use your current business or product name.

12. Support Expansion: Franchising, Licences, Agents

A strong brand protected by trademark registration is a sure footing on which to develop a business by way or franchise, licence or agency. A franchise is, in effect, nothing more than a glorified trademark licence and the very least that any franchisee will expect is the unfettered right to use the franchise name. The commercial benefit of being part of an umbrella brand is, after all, one of the main reasons that people invest in a franchise. A registered trademark can be licensed for a royalty. Any agency or distributorship network will want the comfort of knowing that you have the sole and exclusive legal right to use your product names and the only way this can be obtained conclusively is by way of trademark registration.

13. Company Registration: Control Company Name

Registration of your business name at Companies House, or any national company registration office, gives almost no name security or name ownership rights. In fact, at least in the United Kingdom, it simply means that no one can incorporate company under exactly the same name. Very similar names will often be accepted for registration. However, you protect your business name as a registered trademark, this will prevent any other company from incorporating your name into the name of their company the same products or services in which you trade. In the UK, if someone registers a company name that is the same as was similar to a trademark that you have protected by way of trademark registration, you can object to the Company Names Adjudicator and obliged the company to change its name to a different name.

14. Domains: Avoid Over-reliance on a URL

Whilst it is often difficult to register a descriptive URL as a registered trademark, there is no reason why a name that you have protected by web trademark registration cannot be incorporated into the domain name for your business. Anyone who tries to adopt the same or a similar domain name for similar products or services will then be infringing your registered trademark rights. Trademark registration therefore gives you a degree of control over your domain names and enables you to police similar URL registrations successfully.

15. First Mover Advantage: Protecting The ‘Good Idea’

It is frequently the case that a good business idea cannot be protected legally in the sense that it is not possible to stop other businesses copying the idea as soon as it is launched. Provided the imitators do not infringe any copyright or patent rights they can usually replicate the idea. However, if you are first to market with your idea, you can secure first mover advantage by branding your idea with a strong and individual trademark that is protected by trademark registration. Often the idea itself becomes referred to in common parlance by the trademark itself and, whilst this is questionable from a strictly legal viewpoint, it is certainly a major commercial advantage and is a great help in securing and maintaining market share in the face of copycat competitors.

16. International Roll-Out: Secure Priority Dates

The filing of a trademark application secures a priority date for the future protection of the trademark. This means that if the business succeeds and it becomes necessary to protect the name by trademark registration more extensively in further jurisdictions, trademark applications can be filed in those jurisdictions within the applicable priority period (usually six months from first application) whilst still maintaining the benefit of the original filing date. This means that the protection afforded by any further trademark registration filed during the priority period will backdate to the date of the first trademark application and anyone that has used the trademark in the meanwhile will have been infringing the further trademark registration.

17. Cost-Proofing: Prevent Future Costs

Protecting the main business names by way of trademark registration is a relatively inexpensive process that effectively cost-proofs the business against the potentially very substantial costs of dealing with an alleged or actual trademark infringement. The costs that can be avoided in this way include not only your own legal costs, but liability to pay the legal costs of the aggrieved trademark owner, substantial compensation by way of damages, the loss of all infringing stock and, finally, the costs of carrying out a complete rebrand of the business (including all websites, facias, advertising and other printed material) and protecting the new brand by way of trademark registration.

18. Simplicity: Avoid Legal Complication

There is a satisfying simplicity to being able to hold a trademark registration certificate and wave it in the general direction of anyone who tries to use your name. That is usually sufficient to prevent infringement. In the absence of trademark registration is much harder and much more expensive to enforce common law trademark rights or sustain a case breach of copyright. The burden of proof involved in bringing such cases is substantial and the legal position in relation to her actions for passing off and copyright infringement is always complex. In the case of passing off it is necessary to prove substantial reputation, confusion in the marketplace and consequential financial loss. Legally, this places a huge burden on any business that can be avoided by trademark registration.

19. Logo Rights: Protect Graphics, Logos and Designs

It is possible to include in any trademark registration program not only the actual name of the business but also any logos, graphics or designs used in the business in relation to its products or services. In the absence of trademark protection, it is necessary to fall back on actions based on copyright and these are notoriously difficult to bring.

and so to bed.......

20. To Sleep at Night

The best reason for protecting your business by way of trademark registration!

APP STORE: Too Generic for Trademark Registration?

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Despite a recent California District Court ruling casting a pall over the validity of Apple’s APP STORE trade mark, the computer giant continues to take steps to stop others from using the trade mark.

This week the court ruled against Apple’s motion for a preliminary injunction which would have prevented Amazon from using the mark APP STORE to designate its own online store for Google Android-compatible applications.

The presiding judge, Phyllis Hamilton, predicted that Apple is unlikely to succeed in its case because it lacks “real evidence of actual confusion” between the trade marks.

Amazon had also argued that the term, APP STORE, is generic, cannot function as a trademark and should not be accorded the benefit of trademark registration. If the court ultimately accepts Amazon’s argument on the generic nature of the APP STORE mark, Apple will most likely lose its trade mark, which has not even been cleared for registration.

Despite these setbacks, Apple has continued to threaten others against using APP STORE and similar terms. Last week, open source software startup, Amahi, received a letter from Apple demanding they cease to use term, APP STORE, on their website.

Apple appears to be fighting on several fronts here. Microsoft, Apple’s major competitor for computer operating systems, is leading the opposition against Apple’s trademark registration for its APP STORE mark at the United States Patent and Trademark Office. Notably, Microsoft also develops and distributes a competing mobile OS – though its application distribution hub is called the Windows Phone Marketplace. Competitive brinksmanship aside, it is hardly surprising that the world’s largest software vendor should like to keep the word “APP” in the public domain. For the past few years (an eon in the tech world), Amazon has been Apple’s main rival in digital content distribution, establishing successful services for the delivery of songs, movies and books. More recently, Amazon has emerged as a player in the hardware market, with its Kindle e-reader competing (at least indirectly) with tablets like Apple’s iPad.

Apple’s motives for targeting a smaller company like Amahi are likely different. It seems that Apple may be trying to show that it is policing the “mark” against ‘genericide’ – the process by which a once-distinctive mark becomes part of common parlance and ceases to distinguish the goods of a particular undertaking.

Apple may be simply be issuing such warnings to help in its battle to keep the APP STORE trade mark alive and kicking.

New ICANN Domains and Trademark Registration

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New ICANN Domains and Trademark Registration

The Generic Top Level Domain is about to become much more specific 'right of the dot' ...Instead of .co.uk, .com and .org, ...think .anything you like!

The ICANN decision yesterday to permit any name, brand or text 'right of the dot' as from next year is focussing world attention on the absolute need of companies to protect their main brands by trademark registration which is the only way trademark owners be able to prevail over the potential loss of their marks to registrants of new domains.

This means that domain addresses will begin to operate much more in the nature of brands themselves.

Trademark owners should now be reviewing the scope of their existing registrations and making sure that they are sufficiently broadly registered to prevent them being incorporated into the new-style domains without necessarily infringing their current trademark registration.

Trademark owners will need to police their registered trademarks much more agressively and much more widely in order to ensure that their trademark registrations are not diluted or, worse still, potentially hi-jacked by registrants of creative new domains.

Indeed, it has been suggested that trademark owners may think about applying to set up their own domain name registries in an effort to retain control of their marks even though the entry cost for so doing will be USD185,000 with ongoing fees of at least USD25,000 per annum.

Another threat to holders of brands already protected by trademark registration, is ICANN's determined policy that the right to obtain a domain during the sunrise period will be limited only to trademarks that are in actual use. At the ICANN meeting yesterday the debate on this point apparently raged for over an hour with ICANN not moving from their position that trademarks must be in use to be granted the right to early and exclusive registration during a sunrise
period.

This policy reinforces the importance of international trademark registration at registries like USTPO where proof of use is a pre-requirement of acceptance for registration.