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Rampages2015-04-24 07:03:30
Domain name market
Rampages, 2015-04-24 07:03:30

Three-letter domains - do I need to consider their trademarks when registering new domains?

Recently there was a need to register a domain in new zones (.win, .men, .green, .lgbt and others).
The bottom line is that when registering we want to use the abbreviation ykt , let's say the domain ykt.lgbt , then a certain organization appears on the horizon: Limited Liability Company SakhaInternet New Technologies Company, with its own rules of use: ykt.ru/offer.php
Excerpt from rules:

Infotainment network Ykt.Ru (Limited Liability Company "Sakhainternet New Technologies Company") is the owner of the trademarks "Ykt.Ru" (certificate No. 492566 of Rospatent of the Russian Federation) and "Ykt" (certificate No. 483463 of Rospatent of the Russian Federation)

Links to patents:
fips.ru (492566)
fips.ru (483463)
I note that many people use the abbreviation "ykt" as an abbreviation for the city of "Yakutsk" or even the republic of "Yakutia", due to the fact that the content of the site will be intended specifically for the population Republics / cities really want to use this particular abbreviation, and not "ya", "yak", etc.
If you read the law ( www.consultant.ru/popular/gkrf4/79_33.html), then in theory we have the following:
1. Subparagraph 2, paragraph 1, Article 1483 of the Civil Code of the Russian Federation: "State registration as trademarks of designations is not allowed, not having a distinctive ability or consisting only of elements: 2) which are generally accepted symbols and terms". It will most likely be very difficult to prove that the abbreviation YKT is a generally accepted symbol and the term will most likely be very difficult.
2. You can try to put pressure on the fact that any abbreviation should have a transcript or some more specific meaning znaka/) quote:
Signs that do not have a distinctive ability cannot be used as a trademark. For example, it will not be possible to register combinations of letters that do not have a verbal character (abbreviations), simple geometric shapes, as well as their combinations that do not form compositions. At one time, the Brest Electric Lamp Plant was denied the registration of a trademark, which is the letter "B", which does not have any original style.

3. You can also somehow refer to the color scheme:
(591) Specifying a color or color combination: blue, red, grey, black, white, brown

Has anyone encountered similar problems? There is already a solution to one such trial on the Internet: pravo.ru , they recognized the complaint of the owner of the rights to the trademark as "reasonable", quote:
...to oblige the individual entrepreneur Andrey Anatolyevich Shurkalin (TIN 143521440220, OGRN 310143520100083) to install the following phrase on the bars-ykt.ru website in the source code of the page: “The rights to the registered trademarks “Ykt” and “Ykt.Ru” belong to the Ykt network. Ru"...
it would be interesting to know about the consequences of using YKT without the .ru prefix, but most likely the solution would be the same.
It is also interesting to learn about the fate of "similar" abbreviations, namely:
  • msk ( http://msk.ru) – Moscow
  • spb ( http://spb.ru) - St. Petersburg
  • nsk ( http://nsk.ru) – Novosibirsk
  • irk ( http://irk.ru) – Irkutsk
  • khv ( http://khv.ru) – Khabarovsk
  • kzn ( http://kzn.ru) – Kazan
  • prm ( http://prm.ru) – Perm

Has anyone registered them as "trademarks"?

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3 answer(s)
V
Vladislav Eremin, 2015-04-30
@wisevision

A trademark is registered for a specific activity limited by classes and region of registration, if you plan to engage in similar activities on an identical domain, then you can expect legal claims. Geographical names are prohibited from being used as trademarks, and trademarks can also be canceled if they have not been used for more than 3 years. It is also possible to register an identical trademark, but in other classes, and it is legal to use a domain with the same name.

M
Maksim Zverev, 2015-04-27
@m1skam

Here for your reference:
info.nic.ru/st/20/out_647.shtml
Regarding point 3.
I went to the leopard website, there is no link. Most likely there was a dispute because of a similar logo.

I
Igor Kondratyuk, 2020-02-22
@ToGosha

If you answer the question "Three-letter domains - is it necessary to take into account their trademarks when registering new domains?"
The answer is: Yes, it is necessary to consider.
1) You are also right that " It will most likely be very difficult to prove that the abbreviation YKT is a generally accepted symbol and term." And therefore, it will be unrealistic to cancel the registration of their marks ."
2) An analysis of the information provided on the YKT website and the registration classes of their YKT trademarks shows that they competently covered the services they need.
Conclusion:
Domain registrations in new zones (.win, . men, .green, .lgbt and others) if they have the same services - definitely leads to infringement of trademarks Nos. 492566 and 483463.
Disclaimer.Of course, you can play around with registering these new domains offshore to make it harder to fight you ... But this does not solve the problem.

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