Tag: Trademark

Bitcoin Trademarked in the UK – Should the Bitcoin Community really worry?

A company in the U.K. has trademarked the term “Bitcoin” pressing to enforce the trademark’s use which is reported to scare crypto-currency enthusiasts. Is there really a need to be dreaded? Let’s analyse.

The story began with an Etsy (An E-commerce website headed in Brooklyn) seller getting the letter from the lawyer representing the Bitcoin trademark holder in relation to Bitcoin-branded clothing items. It stated the following:

It has come to our client’s attention that you are offering for sale a variety of clothing bearing the Bitcoin trademark on Etsy.co.uk. [Our Client] has not authorised your use of the Bitcoin trademark on and in relation to clothing. Such use, therefore, amounts to trademark infringement pursuant to s10(1) of the Trade Marks Act 1994,” the letter read.”

But in an act of goodwill, the letter goes on to note that though the trademark holder could take action against the seller but it gave the seller 14 days to remove the infringing goods instead.

Cryptocurrency sites went through a shock over the fact that a company has not only trademarked bitcoin but were also enforcing the trademark, with one site even going as far as saying the trademark holder will “have authority over everything Bitcoin, at least in the U.K.”

The Legal Truth

The truth is not even near to the speculations, as the Trademark law is clear on the point that Trademarks relate to specific goods and services. It is considered as a pre-requisite in Trademark law. Trademark used in the present case, i.e. UK00003279106, registered by a company called A.B.C. IP Holdings South West only covers three classes of goods: U.K. classes 25, 32 and 33, covering clothing, beverages, and alcoholic beverages, respectively.

The Particular trademark only pertains to the above-mentioned classes and the trademark holder has absolutely no authority and effect over anything to do with Trademark of the “Bitcoin” outside the aforementioned classes.

And since it is not something unprecedented, therefore, the owner cannot enforce his right over other classes before obtaining a registration to the same effect. Further, a search of the U.K. Intellectual Property Office trademark registry finds multiple trademark registrations for bitcoin, such as UK00003029238 from 2013 which pertains to “chocolate and confectionary.”

Still a fact for the ‘Cryptocurrency Community’ to worry

A trademark registered with status: WE00001288610, covers a lot of Bitcoin-related services

The protected trademark is registered to Japanese Bitcoin exchange “bitFlyer” and covers the use of bitcoin in six different classes. It covers over a thousand items, however, the most important and disturbing things is that it includes the use of bitcoin in computer programs, advertising, financial services, electronic commerce and much more, all of which are vital parts of bitcoin itself.

There appears to be no record of “bitFlyer” having actually attempted to enforce its trademark in the past, and it’s not clear it ever would. But if the cryptocurrency community wants to get its knickers in a twist over trademarks, this is where people should be looking and not at a two-bit seller, i.e. Etsy, who is engaged in selling T-shirts.


How To Trademark Your Logo

Imagine a person who have invested a huge amount of time, money and effort to build a brand, goodwill in an individual’s or a customer’s mind. One day, he finds out that his brand name or logo is already registered by another person and he no longer can use it. To avoid this situation and to protect the brand name or logo, its identity and goodwill one should get their logo registered as soon as they start using it. Well, the good news is – Getting a logo trademarked in India is a very simple process.
A registered trademark or logo is not restricted to just a brand name, but if used properly it can become the most valuable asset of a business. Any company, individual or a legal entity can apply for the Trademark Registration of his/her logo. The Trademark Registration process generally takes around 8 to 24 months. However, for the time being, an person who has made such application can use the symbol “TM” with his logo mark and later on when the logo is registered and the Registration certificate is issued, the symbol “R” may be used with the logo mark. As per the Trademark Act, a trademark once registered is valid for a period of 10 years, which can be renewed from time to time.
What is a Logo?
Before getting a logo registered, one should know what a logo actually is. In simple terms, a logo can be any signature, name, label, device, numerals or combination of colors and fonts used to represent his business, primarily to distinguish their brand from other similar goods or services operating in the same market domain.
In India, the process of getting a logo or Trademark Registered is governed by the Controller General of Patents Design and Trademarks, Ministry of Commerce and Industry, Government of India. A logo once registered gives the owner an exclusive right to sue for damages in case of any trademark infringement under the Trademarks Act, 1999. The Trademark Registry also have the power to refuse Trademark Registration if the mark or logo to be registered is deceptively similar with an existing registered mark or logo or is offensive or is likely to cause deception or confusion.
Getting the Logo Trademarked
      • 1st Step – Trademark Search: This search is conducted by a Trademark Attorney to check whether the logo is similar to an earlier registered logo. This search can be done by both ways, online and also offline. One should proceed to the next step only after the Trademark Attorney is satisfied that the logo is unique.
      • 2nd Step – Drafting a Trademark Application: Once the logo mark or brand name is found to be unique, the Trademark Attorney shall draft a Trademark Application, i.e. Form TM- 1. The Government Cost of the Application form is INR 4000 and is a one time fee for each class.
        Along with Form TM – 1, the following supporting documents are also needed:-
        I. An identity proof of the Director of the company along with address proof.
        II. A picture of a brand logo.
      • 3rd Step – Filing the Trademark Application: The Trademark Application can be filed by 2 ways, manual filling and e- filling. The Manual filling is done by personally going to any office of the Registrar of Trademarks located in Delhi, Mumbai, and Chennai. The acknowledgement of the application and the receipt in this process is received generally after 15-20 days from filling. The e filing process is more convenient and quicker, because here the acknowledgment receipt is received immediately. After the owner of the logo mark receives the acknowledgement, he is eligible to use the symbol “TM” along with his logo.
      • 4th Step – Examination of the Registration Application by the Registrar: After the Application is received by the Registry, the Registrar checks whether the logo is similar or deceptively similar to any registered logos or mark or any pending logos or marks.
      • 5th Step – Publication in the Indian Trademarks Journal: Once the logo mark is examined by the Registrar of Trademarks and no objection is found, the logo mark is then published in the Trademark Journal. A stipulated time period of three months is provided by the Trademark Registry if any third party wish to oppose the registration of the proposed logo mark.
      • 6th Step – Trademark Registration Certificate: If no objection is raised within a stipulated period of three months, a Registration Certificate is issued by the Trademark Registry. Now the owner of the logo mark can use the registered trademark symbol “R” along with his logo.

Getting the logo trademarked can be a lengthy process, but it is absolutely essential to get it registered to gain legal protection for one’s brand.

Article By: Sunchet Thareja – Legal Associate