I awake one morning to find a notification from my business partner showing a website where a group of gamers have created a clan and a website using our company name.
We found there were actually two websites in total, and they were using the name on other gaming related websites.
I’ve had to deal with trademark law in the past, earlier this year I was threatened legal action after purchasing “fixya.co.uk” and running a demo of eTicket there, consequently “fixya.com” contacted me asking me to surrender the domain to them as they hold the trademark. As eTicket is an open source project, I decided to let the domain go at their cost, soon replacing it with “fixr.co.uk” instead.
With an firm understanding of the severity of trademark law and yet only limited knowledge on the subject, my initial approach was to contact my lawyer and let him deal with it. However at the cost of £150/hour I hesitated in case we were unable to recover the costs.
The first idea was to see if we could contact anyone by phone and get the sites removed. We attempted to contact the person who registered one of the domains, who was unreachable, and we contacted the host of the other website who suggested they will contact their lawyer.
As far as we were concerned we had reached a dead end, however there was more that could be done, after all we had their email addresses, and basic information including name and location, but we had to do this right.
At this point I had two choices, I could simply hand it over to the lawyer as I had considered to do before, or handle it myself. I decided that in order to make this decision I needed to look into trademark law in more detail.
I found very quickly that there’s far more information on US trademark law than there is UK trademark law, however the basic principles are exactly the same.
I decided to take a look at some previous cases, “theregister.co.uk” usually has an extensive coverage of UK IT related law, including trademark law. So I googled it.
I discovered a term known as “cease and desist“, it seems to be more prominently a US term, however it is very much recognised in the UK as well. I quickly found some very useful examples of previous trademark “crease and desist” requests, which very quickly helped me get a good idea as to what we needed to do.
The first example was sent to a guy named Matthew Somerville from Odeon, I also found a database of trademark cases on “chillingeffects.org”. The most interesting and related case I could find was entitled “Blogger Gets Bagged“, it also has some useful trademark information under the letter.
One very important point I took away from reading the above websites is that if we don’t defend our trademark, we risk loosing it, therefore by law, to ensure we remain owners of the trademark, we MUST pursue any possible infringements.
Based on this information I decided to construct a “cease and desist” letter. In order to do this I had to outline some core points:
- Who we are - You need to state who they are dealing with, and who you are, else it looses credibility.
- Who they are - You need to state who you think they are in the context of the issue (ie: “You” referring to the administrator of the “offending website”), this ensures it reaches the correct person.
- The violation/infringement - What are you accusing them of?
- Why we believe that - You must state why you believe they are in violation.
- A request to cease and desist use now and in the future - This is the action request, the whole purpose of the letter.
- An outline of our intentions should they not co-operate - If they do not want to co-operate you must let them know that you will pursue all available legal and equitable remedies to recover its lost profits, damages, costs, and solicitor’s fees.
- Any other laws they could be violating - For example, sometimes by deliberately not co-operating they could be subject to other laws.
- A sign off point - Make a point that you’re not unreasonable, and wish to get this resolved.
It’s all fairly straightforward apart from “violation/infringement” and “why we believe that”. To resolve this you need to know where you stand with British law, and in this case in particular, trademark law.
Luckily there’s plenty of resources out there on the web that can help you with trademark law, including the “Trade Marks Act 1994“, the UK Intellectual Property Office (IPO) website (on trademark) and Wikipedia trademark entry, some major points I took away from this are as follows:
- You do not need to register a trademark to own the trademark.
- A (R) registered trademark is different to a trademark (TM).
- You own the trademark if you “trade as” that name.
- There is no central database for trademarks or intellectual property.
- You must not use a name or mark that could cause confusion.
- The name or mark you use must not be similar or even confusing similar to anyone else’s trademark.
- Lord Woolf’s 1986 report Access to Justice identified the need for parties to see legal action as a last resort.
As long as you understand these points and are not infringing the law itself, then you have a strong case against the other party.
I sent this letter to every single email contact related to the offending website(s) I could get my hands on, this proved to
be successful and before long I was in a dialogue with the website administrator.
Due to my new found firm understanding of trademark law, I made it very clear that I would not let this lie, and let them know that they could not use our trademark or anything confusingly similar. I asked them if they were willing to co-operate, and after a bit of clarification they agreed to stop using our trademark, they were happy to “leave this in the past and just go our separate ways”.
If they had not agreed to co-operate, it would have been very easy to take this further. However, it’s advised to take on the “mediation” by the IPO, if such an event occurred, failing this, it could innitiate legal proceedings by entering the court system.
Please Note: I am not a lawyer, this information could be incorrect, if it is incorrect I invite you to correct me. You must consider this information as “to the best of my knowledge”, always seek a lawyer’s advise if you are unsure.