Vinita K (CS) 21 April 2011

Cyber Law + Trademark Query

Dear All,

One of my client is having business in cloths and has a website too.
The website is a recent one and having "s" in the name.. say Captalise.uk.in

And a similar site of another trader in UK exsists with a similar name, but with "Z" in name ... say Captalize.uk.in

Now due to this resemblence, many of the clients of that UK trader started calling my frind and traded with my client aslo.

When the foreign trader in UK came to about it, he called up my client and asked him to take some action.

My client has blocked his site till the matter is resolved as he is worried about legal action from the foreign trader.

The first date of use of the website/ name by that forign user is older one.

what can be done in this case? What actions my client might will have to face? Kindly advice.

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3 Replies

Nagaraja B S (Corporate Commercial & IP Lawyer) 24 April 2011

Dear Vinita,

It is a very interesting scenario.

We might need few more details before conculding

1) Does your client has any registered business in UK??

2) Is the company's name of your client same as domain name??

3) Is the company's name of foreign entity same as domain name??

Look forward to your response.

Thanks

Nagaraj

Trademark Attorney & IP Lawyer

IP Lex Global Services

Email: nagaraja_bs@iplexglobal.in

Mob: 9902007635

Vinita K (CS) 27 April 2011

Dear Nagraj,

1) Does your client has any registered business in UK??
>>> No He does not have any business registered in UK.

2) Is the company's name of your client same as domain name??
>>> No the Company Name & Domain Name are Different.

3) Is the company's name of foreign entity same as domain name??
>>> The Foreign Entity is operated from Mumbai & they have a Office in UK.

Nagaraja B S (Corporate Commercial & IP Lawyer) 27 April 2011

Dear Vinita,

Already foreign entity has incurred considerable loss, from the confusion created by the website. This could be the only reason they might create some problem.

Domain names are often referred to simply as domains and domain name registrants are frequently referred to as domain owners, although domain name registration with a registrar does not confer any legal ownership of the domain name, only an exclusive right of use.

If website was more popular than foreign entity & if it is a very new one from your client's side.