Trademark infringement..........really

Dangermouse

Dangermouse

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I have a Facebook page with 12000 members and have had it for a few years now, so decided to set up a website advertising camping holidays in the UK, over the weekend I received an email from a company in the US saying I was infringing their trademark.

My website is under-canvasuk and theres is undercanvas similar but not the same, I have looked into this and there doesn't seem to be much information about this unless I pay a hefty sum, the US company is also saying I must hand over my paid for domain name, again I have looked into this and can see no reason to simply hand it to them.

Trademark infringement is if I was mimicking their business which I am not, both are in the camping business but completely different, and For me to infringe their intellectual property I would need to register my website in the US and it is registered in the UK only.

Do they have a case against me or are they simply trying it on.
 
I suspect they're trying it on, however if you are not Ian Bell or Emma Price then you could be in trouble with someone else as there are two relevant UK trademarks..
  • UK00003015849
  • UK00003111714
You did an IPO search before picking that business name, didn't you?
 
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Yes and nothing flagged up
 
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But there are two for "under canvas".. I'd get yours registered if I was you, and the application will itself be a test of uniqueness.
 
There are only so many words available. I'm sure their are many businesses around the world with similar or even the same names.

I'd say, they're trying it on and if it was me I wouldn't even respond. Mark their email as spam and forget them.
 
This gets more puzzling, because I'm pretty sure that Pete means this FB group - https://www.facebook.com/groups/undercanvas/

Which uses a banner image with a logo and the phrase "Under Canvas(tm)", when neither the phrase nor logo appear to be registered as trademarks in the UK.
 
Alastair said:
This gets more puzzling, because I'm pretty sure that Pete means this FB group - https://www.facebook.com/groups/undercanvas/

Which uses a banner image with a logo and the phrase "Under Canvas(tm)", when neither the phrase nor logo appear to be registered as trademarks in the UK.
Click to expand...

From reading his post I would think he means this US company: https://www.undercanvas.com/ who's domain was registered in November 2003

Also the domain name registered by Pete is http://www.under-canvasuk.com/ which was registered in May 2017

They may be able to claim the domain name from Pete
 
Keith W said:
From reading his post I would think he means this US company: https://www.undercanvas.com/ who's domain was registered in November 2003

Also the domain name registered by Pete is http://www.under-canvasuk.com/ which was registered in May 2017

They may be able to claim the domain name from Pete
Click to expand...
I figured that bit, it was the Facebook group he mentioned as having run/owned I was also checking out - when I spotted the apparently erroneous (tm).

The rather contrived domain name probably isn't helping, something like uk-under-canvas.co.uk might have been better and avoid the .com domain which rather draws the attention to the similarity.


I'm actually in the process of planning something similar to Pete, transitioning a Facebook group to a full website presence. Our priority tasks at the moment are:
  1. obtain domain (done)
  2. establish a Ltd By Guarantee legal entity (quite cheap to do, in-hand)
  3. register our trademark (a couple of hundred quid, waiting on 2.)
Putting up the website itself is a long way down the list after these three.
 
At the moment I am asking the registrar to change the word UNDERCANVAS which shows as the organisation to under-canvasuk and hope this stops them trying to nick the domain, the FB group has run nicely for years with no problems so don't thing the group has anything to do with this.
For now I have removed the website and if all else fails I wont simply hand the domain over, I will just delete and buy another similar one but lose the words UNDERCANVAS
 
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You may have to hand it over, you have registered it for the period don't think you can instead "delete" it as you suggest, I am not sure if you understood what you were registering since you say you only registered it for the UK but it is a .com domain you probably should have gone with .co.uk as others have said to make it more UK centric but all depends on how litigious they are and how much you may be prepared to spend fighting if it goes that far....

Short version is timing of registrations aside US organisations tend to get preferential treatment over .com disputes the argument being they did not historically have their own TLD whereas we did.... This was certainly the case a few years ago anyway.
 
I have been chatting to my domain provider, they can change my organisation fro UNDERCANVAS to another name if the other party allow this, I have emailed them and explained this as the domain is non transferrable, I can however keep my package and add a new domain instead of the one it currently has, so hopefully this can now be sorted amicably or the whole site deleted and re named, not nice but needs must I suppose.
 
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