Question about trademarks

[shags38]

I disagree, they can still sue you if you have a domain like "FacebookFlowers.com.au" and you sell flowers online..

I know personally I have been sued by a big company for a render to a trademark for a .com domain it was not a exact match trademark yet their lawyers claimed I was rendering on the trademark. In the end we settled the case for a money sum which I was happy with.

But really if the company is big or if its government and they want to sue you they will work out a way to sue you, hence the face I steer right clear of trademark domains which have any thing to do with big business and government as they have money to burn...

James - what is a "render to a Trade Mark" ? (Render specifically in the context of a Trade Mark that is - I could look it up but am feeling lazy at present)

There is a significant difference between registering a domain and actually using it - apples and oranges - you cannot be sued for not doing something that someone thought you might intend to do, maybe, in their opinion ........ sorry, correction ........ yes you can be sued but you would not lose or more correctly put they could not win - for them to win you have to infringe or they have to prove beyond reasonable doubt intent to infringe.

Plainly if you do infinge then you cop your medicine but there are two distinctly different topics here - registering a domain that contains a TM and secondly, using a domain that contains a TM ....... the verdict is out, in the first case not guilty, in the second case do two things, get out your cheque book and then make an emergency appointment with your analyst

cheers,
Mike

 

[Ash]

Also i have another similar question regarding TM's in Australia's domain space. Say you register your .com.au in 2008 and you've been running a business off it. Suddenly in 2010, someone files a TM on your domain's name. Do you get the keep the domain and continue running business as normal or does the opposition have rights to take the domain off you?

I wonder if Taco Bell case from the 1980s would set a precedent in this case?

If you look up Taco Bell v Taco Bell Casa on wikipedia, there was a local Australian restaurant called Taco Bell Casa that existed before Taco Bell did in Australia and subsequently sued Taco Bell for misleading conduct.

Not sure how relevant that could be given that it was in the 80s and with the Internet pretty much creating a borderless society which allows a companies reputation to permeate other markets before they physically set up shop.

Ash.

 

[shags38]

I wonder if Taco Bell case from the 1980s would set a precedent in this case?

If you look up Taco Bell v Taco Bell Casa on wikipedia, there was a local Australian restaurant called Taco Bell Casa that existed before Taco Bell did in Australia and subsequently sued Taco Bell for misleading conduct.

Not sure how relevant that could be given that it was in the 80s and with the Internet pretty much creating a borderless society which allows a companies reputation to permeate other markets before they physically set up shop.

Ash.

Why is Hungry Jacks called by that name in Australia when it is Burger King worldwide ?? A small hamburger shop in Melbourne owned the business name when the Burger King franchise first kicked off in Australia back in the 70's. Legal discussions and offers about / for the name have been ongoing for years. HJ's even set up a number of outlets in Sydney a few years ago with the exact decor as used in Burger King stores in the U.S. and elsewhere and it appeared that maybe they would make the transition to BK however there still appears to be some hiccups. It is costing Burger King an absolute fortune in separate decor, separate packaging etc. Can you imagine McDonalds being called something else in other countries? (I think time has determined the outcome on this one - HJ's is now a well and truly established brand icon).

There are many other examples and in my humble opinion it indicates the heirachy of ownership of a name - a domain name (thence url) is technically simply an internet address for email - company registration and Trade Mark will invariably take precedence. If you have a business name / company registered with the same name as the domain then you are in a good position to defend your domain against a subsequently registered TM - in my opinion that is.

 

[Bacon Farmer]

Hungry Jacks has decor and it costs a fortune? Surely you can't be serious.

Damn it, there goes one new years resolution.

 

[Shane]

Why is Hungry Jacks called by that name in Australia when it is Burger King worldwide ?? A small hamburger shop in Melbourne owned the business name when the Burger King franchise first kicked off in Australia back in the 70's. Legal discussions and offers about / for the name have been ongoing for years. HJ's even set up a number of outlets in Sydney a few years ago with the exact decor as used in Burger King stores in the U.S. and elsewhere and it appeared that maybe they would make the transition to BK however there still appears to be some hiccups. It is costing Burger King an absolute fortune in separate decor, separate packaging etc. Can you imagine McDonalds being called something else in other countries? (I think time has determined the outcome on this one - HJ's is now a well and truly established brand icon).

The story regarding Hungry Jacks is a little different to what is stated above.

HJ's did not open the Burger King stores in Sydney and elsewhere in the late nineties, they were in fact opened by Burger King US after the Burger King trademark in Australia lapsed.

BK tried to get out of its master franchise agreement with HJ's on a technicality, and then they started opening the stores under their own name.

Anyway, it all went to court and HJ's won, and as part of the settlement all of the BK stores were transferred to HJ's and were re-branded accordingly.

So, HJ's could easily re-brand all of their stores to BK (and BK US would no doubt encourage it) but they actually want to keep it called Hungry Jacks. There are no trademark issues holding them back now.

HJ's was founded and is still owned by Jack Cowin, and I doubt he'd want his name dumped from one of the best know fast food joints in the country!