online trademark infringement

I own a website with a .ie domain. In order to aquire this address I had to register the name with the CRO as a registered business name. This was done in Nov 2009.

Recently it has come to our attention that another individual runs a website with a .co.uk domain. Both our businesses have the same name. This .co.uk was granted a community trademark in Feb 2010.

Both our businesses are very similar and we are targeting the same industry.

The .co.uk company are now demanding that we cease to trade as it infringes their trademark and we hand over our .ie domain to them.

Can they do this?

Surely I can trade in Ireland under this name and domain if I have been registered with the CRO.

Any thoughts?

Thanks

of course you don't have to give them the domain.
However if they had an existing business and you registered the .ie domain to steal their business, then you are infringing their trademark.

Can you contact them and ask them to transfer the UK domain to you seeing as you had registered your name before them?

A UK business cannot use a .ie domain - the domain registry people wont allow the transfer full stop - the fact that they have asked for it demonstrates that they are not up to speed with the law or are being deceptive, so anything they say in their correspondence has to be taken with a pinch of salt.

You have 2 choices.

1. Ignore them.

2. Send them copies of your CRO cert and say that your use of the name pre-dates theirs, so you are fully entitled to continue to use it.

The OP only registered the name with the CRO, this does not protect the name in any way. The OP did not register it as a Trademark. The AFAIK the CRO are quite happy to accept duplicate company names from different people. On the otherside UK company cannot have a .ie domain without somesort of Irish operation, but does have an EU wide trademark.

The real question is does the UK holder have the will and resources to take a court case in Ireland.

Also a trademark and a business name are not the same thing. And registering a trademark does not stop prior usage of similar names/logos.

Hi all,
Thanks for your opinions so far. Just some more background that may clarify things.
The UK company ( NI address) was actually formed in 2006 but didnt get a trademark until Feb 2010.
When setting up my site in 2009 I knew that they existed but i registered my business name and .ie in good faith. I first launched my site with the address Xireland.com where X is the recently trademarked name in question. The UKs domain was X.co.uk

After a few months as I only deal with the Irish market I registered X.ie and directed all the traffic from Xireland.com

The Uk company claim that they have goodwill and reputation that I am harming by using X.ie In reality the UK site has 4000 uk customers but only 4 irish ones ( the business in question is a indusrty directory). I have over 250 Irish customers and no uk business( i only accept irish listings).

Surely this proves that I have more of a reputation and more goodwill in Ireland??

I dont think you've anything to worry about. Legally speaking, you existed before they created a trademark. Also, they have no right to use a .ie domain name as they are not incorporated in Ireland. There are may businesses in the world with similar domain names except for the country extension e.g. .ie/.co.uk/.de etc.

Since first posting, I remembered that one organisation I do a lot of work for has a domain name that is identical in most countries in the western world. Their website is their what they do (lets call it "xyz") followed by .ie. Off the top of my head I'm aware of the existance of the following unrelated businesses in various countries:

xyz.ie
xyz.co.uk
xyz.de
xyz.fr
xyz.be
xyz.es

etc. etc. etc.

You're up against an NI company that operates in the UK and ireland.

I think it all comes down to what "X" stands for.

If it stands for "travel" I don't think they have a leg to stand on, regardless of when they set up their company, because it is such a generic term and it describes your business. Similarly if it stands for DunnesTravel and your name is Dunne and you sell holidays, you should be fine.

If it stands for "EdsList" and they had an established and reputable business called "Ed's List" that you should have been aware of, you're on dodgy territory.

I think you know yourself whether they have a case. Registering a business name doesn't mean anything. Even if you registered a company name you may still fall foul of infringing someone's intellectual property.