If someone registered a Swiss TM can I buy and use the .com

oberheimer · Mar 31, 2018

If someone filed a letter for a Swiss TM (combined word and mark (logo) ) can I buy and use the .com
I'm really after the logo but I guess I can't use that in EU or anywhere else.
But the .com should be ok as it is not related to Switzerland. The EU TM is still available so I guess I could register the word mark there if I wanted to.

ukbackorder · Mar 31, 2018

It would depend upon various factors. However the obligatory disclaimer - I'm not a TM lawyer and what I say is only an opinion. You should seek a legal response from someone with the qualifications.
As I understood (some) TM law you could use a domain in a completely different capacity that could in no way be trading on the goodwill of established business of the tm holder. eg mcdonalds.com selling farm animals as opposed to burgers... although actually that's a bad example because I guess you need some of the former for the latter

Ok apple.... sell apples no problem... sell mobile devices - issues.
I wouldn't touch logos from a TM with a bargepole. There are separate marks for separate things.
Basically unless the term is reasonably generic I wouldn't risk it.

oberheimer · Mar 31, 2018

The thing is the old company that used the tm is not in business anymore. A new company filed for the swiss tm without any website or anything.
I know i wrote registered but ment filled, sorry about that

Castion · Mar 31, 2018

Same disclaimer as Rob. This is layman's advice.

But you can pretty much find a TM somewhere in the world for any semi generic term or word. Your use will most often decide if its bad faith or not as Rob also pointed out.

dynadot · Mar 31, 2018

What is your intended usage of the domain? Is it the same as the person who owns the mark?

Those are the most important questions you should ask. If you find that there is some sort of overlap, you are probably better off getting a different domain name

oberheimer · Mar 31, 2018

dynadot said:
What is your intended usage of the domain? Is it the same as the person who owns the mark?

Those are the most important questions you should ask. If you find that there is some sort of overlap, you are probably better off getting a different domain name

Yes it's the same as the person who owns the mark. This used to be an old big company with a well known trademark thats why i wanted it.