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Alex J.
Alex J., Solicitor
Category: Law
Satisfied Customers: 3692
Experience:  Solicitors 2 years plus PQE
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Trademark infringement through word variation

Resolved Question:

I own the trademark "Hypno-CBT" in the UK (UK00002398937). Another individual in my profession uses the term HypnoCBT on his website and has also registered the domain hypnocbt.com (but doesn't use it). Is this trademark infringement?
And another individual uses "hypno cbt" (space and no hyphen) - is this infringement?
If I use the variant "HypnoCBT" will I weaken my trademark? Do I need to register the variant?
Thanks!

Submitted: 3 years ago.
Category: Law
Expert:  Alex J. replied 3 years ago.
Hi
Thank you for your question and welcome.
My name is ***** ***** I will assist you.
Is Hypno CBT registered as a word or a graphic?
Infringement occurs if someone else uses the similar or same mark so as to causes a likelihood of confusion in the eyes of the public as to the origin of that mark and its goods and services.
If you need to dispute the use of a domain name there is a service known as Icann.org - this is the centralised body for disputes over effective cyber squatting and unused domain names.
I look forward to hearing from you.
Kind regards
AJ
Customer: replied 3 years ago.

Hi Alex

I already understand the general principles that you outlined and know of the ICANN procedures. I was looking for an assessment of whether this is a clear and obvious infringement.

It is word that is registered.
http://www.ipo.gov.uk/tmcase/Results/1/UK00002398937

Also please let me know how much you would charge to issue a friendly but firm cease and desist letter.
And if that needed to be sent to several parties - at least two parties involved.

Thanks
Mark

Expert:  Alex J. replied 3 years ago.
Hi
Thank you.
I will review the specific mark and revert to you with my opinion in the morning.
Thank you
Kind regards
AJ
Expert:  Alex J. replied 3 years ago.
Thank you for your patience.
Trade mark infringement is described in S.17 of the Trade Mark Act 1994.
This states that the infringing article, goods or material need only be the same as or similar to the registered Mark.
You have registered the words Hypno CBT without any distinguishing logo or graphic.
Under the S.10 (3) of the Trade Mark Act 1994 - potentially both of these individuals are guilty of infringement because they are using a sign in the course of trade and in the same class of goods and services that is identical with or similar to your registered Trade Mark. Just adding a hyphen or de capitalising the words in my opinion would not distinguish the marks and likely cause confusion as to the origin of those marks.
If you are going to use a variant of HypnoCBT and use it as your trading style, it probably would be a good idea to register the mark as well to ensure any goodwill you build up in that variant is protected.
Kind regards
AJ
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