Jeffery Green Russell

Intellectual Property case studies

Successful return of Domain name for client with unregistered trade mark rights

Our client, a leading investment research company, operates its business on-line through its ".co.uk" website. It discovered a registered ".com" domain name wholly incorporated its word mark, which was the key element of the disputed domain name. 

Attempts to negotiate via initial channels failed. The client approached Charles Gerada who assigned the matter to Rebecca Dimaridis. After a complaint letter, we filed a Complaint under the domain name UDRP proceedings and sought the transfer of the Domain Name.  

As our client did not have a registered trade mark, we had to assert unregistered trade mark rights and prove that the name had become a distinctive identifier associated with the client or the services provided by it. We succeeded in doing this, thanks to our expertise in knowing what evidence is persuasive and how to present it. The Panellist found that the client developed a protectable goodwill and reputation in the name and mark.  We also satisfied the other two required elements (the registrant had no rights or legitimate interests in the domain name and the domain name was registered and was being used in bad faith).  

A trade mark registration would have made proving our client's rights to the name much easier. A registration satisfies the threshold requirement of having rights. It was lucky that our client kept excellent records, and was able to provide us with the evidence we required to successfully assert its rights. However, this added burden increased the time, effort and the cost of the proceedings.  Our client, now aware of the importance of trade mark registration, has instructed us to register its trade mark for its goods and services.

Successful defence of opposition to Bingo mark

We successfully defended an opposition against the National Bingo Game Association's trade mark application for N (& Device). The Opposition was filed by the registrant of a trade mark for N NUPIK INTERNACIONAL SA.  The Opposition Division found that:

  • the promotional and consultancy services in Class 35 were dissimilar to the opponent's Class 35 services (interior design and manufacture of goods);
  • identity or similarity between goods or services is an imperative requirement for there to be a likelihood of confusion. As the Class 35 services were dissimilar, and the opponent did not claim its marks were particularly distinctive (and therefore enjoy broader protection) there could be no confusion;  
  • the goods in the three of the contested classes were identical. However, the dominant and the most distinctive element of the opponent's mark is the word 'nupik'.  That word clearly stands out in comparison to the other word elements of the earlier marks. Also, the consumer is more likely to identify the mark by its verbal constituent (because it consists of both a word and figurative elements). Therefore, the existing similarities between the figurative elements of the conflicting trade marks play only a secondary role when assessing the overall similarity between them; and
  • the differences between the marks outweigh the existing similarities and their overall impression.