Hi All, I own a small company which has grown over the past 16 months to have an office in 3 locations around the world, but still very small company since we operate remotely in the other two locations. 3 staff, 1 hamster wheel and lots of red bull. My question is this: I've trademarked our brand in Australia, and just recently completed the process in Madrid for the Europe section under section 39 which is travel and tourism. An existing company in the United Kingdom has used the URL I've trademarked for a number of years, but they trade under 2 very different names to the URL. If I trade in the UK and Australia as outlined on my trademark which is exactly the URL they use to promote a different brand within the travel and tourism section, can i claim their URL as my trademark and force them to hand it over. Heads up, i have purchased 30 plus exact URL's around the world to protect the trademark, as we expand. maybe 2 hamster wheels. Thanks in advance for your input and advice.
You can try if you can afford to. Bear in mind, however, that a trademark is intended to prevent consumer confusion, rather than form a claim over its domain name-sake just like that. Especially if that other party: a) has established use before your trademark existed, and b) hasn't used the domain name in a way that might...might...confuse users with your mark, then your chances of a successful claim aren't that good anyway. Whether or not you even remotely have a chance is something only a lawyer experienced in these matters can really tell you. (Personally, I won't be too happy if someone does that to me. Something to keep in mind, perhaps.)
Thanks for the feedback, I'll take it on-board. I can't afford such costs and wouldn't expect to challenge unless the expectation of winning was extremely likely. My main reason for asking this question, is because we have also open companies in these two other countries under the name of the trademark. The other company in question is using the url to direct traffic to their site which is A. using two different trading names but within the same section of the trademark act. B. the same company is now trying to bring that brand into Australia where we own both the url and a company name after both the url and trading name. and in the same section. We contacted them here and asked them politely to stop using our company name here since we have already been using before they did, but because they are a multi billion dollar entity with many areas within the same industry, their lawyers are just playing games knowing full well we can't afford to tackle it in court. I'm just worried that if we don't try to protect ourselves now, in two years time they will have bullied us out of our own market. We are not trying to extort money or anything like that, we just want to protect something we believe so passionately in, and that is gaining traction very quickly.
It seems you have a considerable, if not strong, presence in Australia. Thus, I'd focus on that if I'm in your shoes. If you need a law firm versed in these matters, here's one I know: https://www.facebook.com/CooperMills They're relaunching their website, so that Facebook page will have to do for now.
Now i'm no expert, but i'm pretty sure that because they have been using the domain for many years before your trademark they can continue to use it. You would either: A. Have to take them to court to plead your case. B. Offer a payout the current owners and hope. As I said, i'm not an expert so not 100% sure but best bet is to contact a legal firm in the UK and ask for some advice. Better yet, why not visit UKBusinessforums.co.uk they have a whole ton of experience in legal issues in the UK.