Web 2.0 Trade Mark (pt 2)

Further to [email protected]’s problems, related here and here, I was mulling over what I might suggest if I had somebody come to me in their situation.

You might write back, noting that the application E4972212 for a Community mark, as lodged in the UK Patents Office on 21.03.2006 remains within the 3 month period within which any person may lodge an objection. (Optional: That you intend to make such an objection.) That you do not believe that, according to the rules of the Community Mark protection, they have good basis for being granted this mark, and strongly asserting that they should cease their interference with [email protected]

Also bring to their attention Section 24 of the Trade Marks Act, 1996, which states

24.—(1) Where a person threatens another with proceedings for infringement of a registered trade mark other than in relation to—

( a ) the application of the mark to goods,

( b ) the importation of goods to which the mark has been applied, or

( c ) the supply of services under the mark,

any person aggrieved may apply to the Court for relief under this section.

(2) The relief which may be applied for as mentioned in subsection (1) is any of the following:

( a ) a declaration that the threats are unjustifiable;

( b ) an injunction against the continuance of the threats;

( c ) damages in respect of any loss sustained by the threats.

(3) A plaintiff shall be entitled to such relief as is referred to in subsection (2) unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned.

(4) Notwithstanding the provisions of subsection (3), the plaintiff shall be entitled to such relief as is referred to in subsection (2) if the plaintiff shows that the registration of the trade mark is invalid or liable to be revoked in a relevant respect.

(5) Notification that a trade mark is registered or that an application for registration has been made shall not of itself constitute a threat of proceedings for the purposes of this section.

Not having any clients in this situation this is, of course, not to be taken as legal advice to be relied on in any way.

2 Comments

  • […] Simon McGarr has posted a possible legal tack that [email protected] can take if things go down that road in the dispute over the use of the term Web 2.0 in the title of our upcoming conference. […]

  • […] There has been an interesting debate brewing in the blogosphere the past few days because O'Reilly of text book fame has sent a legal letter to a company in Cork in Ireland telling them that they can't use the term 'web2.0' for thier seminar. This seems a little, well, petty to me. The term is banal and although O'Reilly did write a rather average essay defined the term for the digital masses, he can hardly claim to own a term as obvious as 'Web2.0'. What do your reckon? (from Tom Raftery) Simon McGarr has posted a possible legal tack that http://www.itcork.ie/ can take if things go down that road in the dispute over the use of the term Web 2.0 in the title of our upcoming conference. Basically, Simon notes that there is still time to object to O’Reilly’s application for a trade mark for the term Web 2.0. He goes on to point out Irish statutes on harassment under which we could apply to the Irish courts for protection and damages. All in all it makes for interesting reading […]

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