Go Back   English Forum Switzerland > Living in Switzerland > Business & entrepreneur  
Reply
 
Thread Tools Display Modes
  #1  
Old 23.01.2020, 23:39
M. Ploymi's Avatar
Forum Veteran
 
Join Date: Mar 2011
Location: GE
Posts: 926
Groaned at 37 Times in 23 Posts
Thanked 810 Times in 356 Posts
M. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond repute
Clarity on trademark / Facebook

Hi all,

So I administer a Facebook group which is essentially a marketplace for free goods in Geneva (Freecycle Geneva). There is also an organization by the name of Freecycle who has approached me and requested that I change the name to avoid confusion, and as it conflicts with their trademark. More specifically:

Quote:
"...your group is not an official Freecycle® group and therefore does not have permission to use the trademarked Freecycle name or logo, or any confusingly similar derivations thereof... This is our first request to you to please stop using the trademark-protected Freecycle name and logo, as well as any and all copyrighted texts, graphics, rules, guidelines, title, or its URL."
Always up for a challenge and a bit of drama, and somewhat begrudged by the gesture, I decided to not immediately acquiesce and instead see if they can legitimately challenge me.

I found their registration for a Community Trademark (CTM) on the EU IPO website (https://euipo.europa.eu/eSearch/#det...arks/005722723) and, while I'm not well-versed enough to know where to look or what to look for , it sparked a few questions that I was hoping someone in this community could help me get to the bottom of:
  1. Perhaps the most relevant question: Switzerland is not part of EU, so is this trademark even protected here?
  2. Does this protection also apply to Facebook groups?
  3. Can a trademark really protect a name like Freecycle? Is that the case here, or is it actually the logo that's protected (which I don't use btw)?

The obvious response will be: "just change the name and be done with it." I probably will do just that, but it doesn't hurt to try to learn something along the way and not just accept what you're told.
__________________
Geneva airport parking offer
Reply With Quote
  #2  
Old 23.01.2020, 23:50
Forum Legend
 
Join Date: Feb 2010
Location: CH
Posts: 8,345
Groaned at 280 Times in 228 Posts
Thanked 11,623 Times in 6,111 Posts
greenmount has a reputation beyond reputegreenmount has a reputation beyond reputegreenmount has a reputation beyond reputegreenmount has a reputation beyond reputegreenmount has a reputation beyond reputegreenmount has a reputation beyond repute
Re: Clarity on trademark / Facebook

It seems that Freecycle the name and the logo are both protected.

https://wiki.freecycle.org/Trademark

From the link

Quote:
Freecycle and the Freecycle logo are trademarks of The Freecycle Network in various countries.
If you search for more info about Freecycle Network, apparently they did go after another organisation/company that included Freecycle in their name.

I guess you'll have to change the name of your Facebook group.
Reply With Quote
The following 2 users would like to thank greenmount for this useful post:
  #3  
Old 23.01.2020, 23:53
M. Ploymi's Avatar
Forum Veteran
 
Join Date: Mar 2011
Location: GE
Posts: 926
Groaned at 37 Times in 23 Posts
Thanked 810 Times in 356 Posts
M. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond repute
Re: Clarity on trademark / Facebook

Just found the following on Facebook:

Quote:
Not all uses of a trademark without permission of the trademark owner are necessarily an infringement of that trademark. The use of a trademark is only infringing if it’s likely to confuse people regarding the source, endorsement or affiliation of products or services. So, if a trademark is used in a way that is unlikely to cause consumer confusion, it’s generally not considered infringing.
Notably, simply referring to a trademark for the purpose of discussing the product or service offered probably won’t be an infringing use of the trademark, as long as that reference doesn’t use more of the trademark than is needed to make its point. In fact, you might need to use the trademark to describe or comment on a particular product or service. This is known as the doctrine of nominative fair use, and typically permits such uses as commentary, criticism, parody, reviews and, in some countries, comparative advertising.
And while these matters are very fact-specific, trademark rights also often don’t prevent:
The resale of legitimate goods or selling legitimate goods through channels that are not authorized by the trademark owner.
The use of a trademarked word in its ordinary dictionary meaning.
The use of a trademark in a way that is not related to the sale or promotion of products or services.
Trademark rights are generally limited to the geographic territory where the trademark owner uses the trademark to identify their goods or services. For example, if a trademark owner uses a trademark to refer to their restaurant in Country A, they likely won’t be able to prevent another person from using the same term to refer to their own restaurant in Country B.
The two bits in bold stand out to me. Given that the group does not sell or promote the group (there is even a disclaimed in the group info that reads: "DISCLAIMER: This group is independently administered and is not affiliated with The Freecycle Network.", and that CH is not in EU, I feel like their challenge is illegitimate. Would appreciate any other insights.
Reply With Quote
This user would like to thank M. Ploymi for this useful post:
  #4  
Old 23.01.2020, 23:55
M. Ploymi's Avatar
Forum Veteran
 
Join Date: Mar 2011
Location: GE
Posts: 926
Groaned at 37 Times in 23 Posts
Thanked 810 Times in 356 Posts
M. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond repute
Re: Clarity on trademark / Facebook

Quote:
View Post
It seems that Freecycle the name and the logo are both protected.

https://wiki.freecycle.org/Trademark
Thanks greenmount.

So putting aside the question of whether or not the freecycle name is protected, the questions remain: 1) am I infringing on that protection (given that I am not selling or promoting)?, and 2) is the trademark valid in Switzerland? Even the link you shared seems to suggest that the answer to #2 is 'no'.

On the other lawsuit, the outcome was as follows:

Quote:
On November 24, 2010, The Freecycle Network (TFN) lost its trademark claim to "Freecycle" and its logo in the Ninth Circuit Court of Appeals.[24] Justice Consuelo María Callahan wrote in her opinion, "Beal did not coin the word 'freecycle' and TFN is not the first organization to promote freecycling ... even ... viewing the evidence in the light most favorable to TFN ... [they] engaged in naked licensing and consequently abandoned the trademarks."[25]

On September 25, 2012, TFN regained a registered trademark in the United States for Freecycle.org (registration number 4215094) from the United States Patent and Trademark Office.[26] TFN also received a registered-collective-membership trademark on that date (registration number 4215095).[27] TFN maintains additional registered trademarks in the European Union, New Zealand, Australia and Canada.
Reply With Quote
  #5  
Old 24.01.2020, 00:08
M. Ploymi's Avatar
Forum Veteran
 
Join Date: Mar 2011
Location: GE
Posts: 926
Groaned at 37 Times in 23 Posts
Thanked 810 Times in 356 Posts
M. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond repute
Re: Clarity on trademark / Facebook

Quote:
...as Switzerland is not an EU member state, the EU trademark regime does not apply.
Source: https://www.worldtrademarkreview.com...es-switzerland
Reply With Quote
  #6  
Old 25.01.2020, 11:46
M. Ploymi's Avatar
Forum Veteran
 
Join Date: Mar 2011
Location: GE
Posts: 926
Groaned at 37 Times in 23 Posts
Thanked 810 Times in 356 Posts
M. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond repute
Re: Clarity on trademark / Facebook

No other opinions?
Reply With Quote
  #7  
Old 25.01.2020, 12:21
Forum Legend
 
Join Date: Mar 2016
Location: Leimbach, Zürich
Posts: 6,570
Groaned at 394 Times in 323 Posts
Thanked 7,619 Times in 3,797 Posts
EdwinNL has a reputation beyond reputeEdwinNL has a reputation beyond reputeEdwinNL has a reputation beyond reputeEdwinNL has a reputation beyond reputeEdwinNL has a reputation beyond repute
Re: Clarity on trademark / Facebook

Even if not protected you still use the same name as another company, and both of you are offering roughly an equal service while even being active in the same region.

Who of the two of you was first in the region?
Reply With Quote
  #8  
Old 25.01.2020, 15:03
aSwissInTheUS's Avatar
Forum Legend
 
Join Date: Nov 2007
Location: Zurich area
Posts: 11,111
Groaned at 85 Times in 76 Posts
Thanked 16,866 Times in 7,507 Posts
aSwissInTheUS has a reputation beyond reputeaSwissInTheUS has a reputation beyond reputeaSwissInTheUS has a reputation beyond reputeaSwissInTheUS has a reputation beyond reputeaSwissInTheUS has a reputation beyond reputeaSwissInTheUS has a reputation beyond repute
Re: Clarity on trademark / Facebook

Quote:
View Post
So putting aside the question of whether or not the freecycle name is protected, the questions remain: 1) am I infringing on that protection (given that I am not selling or promoting)?, and 2) is the trademark valid in Switzerland? Even the link you shared seems to suggest that the answer to #2 is 'no'.
:
1) Possible.

2) At least it is not registered in Switzerland. https://www.swissreg.ch/srclient/fac...demark/sr1.jsp

You might register it yourself but it might be challenged because of bad faith.

Question: Are you just a single private person or organised as a association/Verein according the Swiss Civil Code?
Reply With Quote
This user would like to thank aSwissInTheUS for this useful post:
  #9  
Old 25.01.2020, 15:14
M. Ploymi's Avatar
Forum Veteran
 
Join Date: Mar 2011
Location: GE
Posts: 926
Groaned at 37 Times in 23 Posts
Thanked 810 Times in 356 Posts
M. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond repute
Re: Clarity on trademark / Facebook

Quote:
View Post
Question: Are you just a single private person or organised as a association/Verein according the Swiss Civil Code?
Just a single individual, with no intention to register anything.

I'm also wondering whether it would suffice to change it to "Freecyclers Geneva" or "Freecycle Fans Geneva" or something along those lines, just like there are Facebook groups for "McDonalds Lovers" etc.
Reply With Quote
  #10  
Old 25.01.2020, 18:30
miniMia's Avatar
Forum Legend
 
Join Date: Apr 2007
Location: romandie
Posts: 9,994
Groaned at 101 Times in 92 Posts
Thanked 9,058 Times in 4,502 Posts
miniMia has a reputation beyond reputeminiMia has a reputation beyond reputeminiMia has a reputation beyond reputeminiMia has a reputation beyond reputeminiMia has a reputation beyond reputeminiMia has a reputation beyond repute
Re: Clarity on trademark / Facebook

As you write above, the name is registered in the EU but not in Switzerland. You can check the WIPO to find out which countries and in which categories trademarks are registered in.


https://www3.wipo.int/branddb/en/




However, I don't think this means it's not protected in Switzerland. Switzerland is a party to the Paris convention for the protection of intellectual property. I guess it depends on how "well known" Freecycle is and how much drama you like.





12. Is it necessary or advisable to register trade marks?

Registration is a requirement for trade mark protection. However, unfair competition law and, in exceptional circumstances, copyright law can be invoked to protect unregistered signs that are used as trade marks.

Under Article 6bis of the World Intellectual Property Organisation Paris Convention for the Protection of Industrial Property 1883 (Paris Convention), foreigners can enjoy protection of their trade mark in Switzerland without registration, if it is well-known in Switzerland. In this case, the scope of protection is the same as for a registered trade mark.





https://uk.practicallaw.thomsonreute...anchor_a130680
__________________
Reply With Quote
The following 4 users would like to thank miniMia for this useful post:
  #11  
Old 25.01.2020, 20:34
Jim2007's Avatar
Forum Legend
 
Join Date: Jun 2006
Location: Kt. Bern
Posts: 3,771
Groaned at 130 Times in 113 Posts
Thanked 5,686 Times in 2,667 Posts
Jim2007 has a reputation beyond reputeJim2007 has a reputation beyond reputeJim2007 has a reputation beyond reputeJim2007 has a reputation beyond reputeJim2007 has a reputation beyond reputeJim2007 has a reputation beyond repute
Re: Clarity on trademark / Facebook

Quote:
View Post
  1. Perhaps the most relevant question: Switzerland is not part of EU, so is this trademark even protected here?
  2. Does this protection also apply to Facebook groups?
  3. Can a trademark really protect a name like Freecycle? Is that the case here, or is it actually the logo that's protected (which I don't use btw)?
1: Trade marks, copyright, royalties etc... are all protected internationally, it doe snot matter that Switzerland is not in the EU.

2: Yes it applies to the use of a name anywhere and I'd expect the T&C you agreed to when creating the group/setting up your account covers this.

3: Yes

That is the theory, after that it comes down to who has deep pockets to go into court and argue that it applies in this case and get you closed down, at a minimum. My bet though is that they will complain to FB and they will close you down because they won't want to get involved.
__________________
"There is no passion to be found playing small - in settling for a life that is less than the one you are capable of living." - Nelson Mandela
Reply With Quote
This user would like to thank Jim2007 for this useful post:
  #12  
Old 25.01.2020, 21:06
M. Ploymi's Avatar
Forum Veteran
 
Join Date: Mar 2011
Location: GE
Posts: 926
Groaned at 37 Times in 23 Posts
Thanked 810 Times in 356 Posts
M. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond reputeM. Ploymi has a reputation beyond repute
Re: Clarity on trademark / Facebook

Quote:
View Post
As you write above, the name is registered in the EU but not in Switzerland. You can check the WIPO to find out which countries and in which categories trademarks are registered in.

https://www3.wipo.int/branddb/en/

However, I don't think this means it's not protected in Switzerland. Switzerland is a party to the Paris convention for the protection of intellectual property. I guess it depends on how "well known" Freecycle is and how much drama you like.
Quote:
View Post
1: Trade marks, copyright, royalties etc... are all protected internationally, it doe snot matter that Switzerland is not in the EU.
Thanks for that link! And for everyone's comments.

So I think my only real argument boils down to whether or not a trademark is truly protected internationally. I didn't (and still don't) think that is the case. The fact that "freecycle" has different trademarks in different countries (as per the link) is perplexing, because then who has precedence if the trademark holders are different? Similarly, whose trademark is protected in Switzerland?

Coincidentally, it turns out that I know someone who works at WIPO's arbitration and mediation centre, working specifically on disputes, so I'll provide an update after I speak with them on Monday.
__________________
Geneva airport parking offer
Reply With Quote
  #13  
Old 25.01.2020, 23:23
RufusB's Avatar
Forum Legend
 
Join Date: Jul 2015
Location: In my head. And UK. Ex-Basel.
Posts: 3,972
Groaned at 74 Times in 67 Posts
Thanked 7,435 Times in 2,988 Posts
RufusB has a reputation beyond reputeRufusB has a reputation beyond reputeRufusB has a reputation beyond reputeRufusB has a reputation beyond reputeRufusB has a reputation beyond reputeRufusB has a reputation beyond repute
Re: Clarity on trademark / Facebook

Something similar happened in the UK... two separate factions using Freecycle. One of them is now Freegle because of copyright infringement.
Reply With Quote
  #14  
Old 25.01.2020, 23:30
fatmanfilms's Avatar
Forum Legend
 
Join Date: Apr 2010
Location: Verbier
Posts: 17,368
Groaned at 297 Times in 245 Posts
Thanked 16,296 Times in 9,050 Posts
fatmanfilms has a reputation beyond reputefatmanfilms has a reputation beyond reputefatmanfilms has a reputation beyond reputefatmanfilms has a reputation beyond reputefatmanfilms has a reputation beyond reputefatmanfilms has a reputation beyond repute
Re: Clarity on trademark / Facebook

It comes down to if a name is really unique or part of everyday language.

25 years ago there was 'The Ski Company' run by Phil Smith who ran ski courses, later a Chalet operator opened & 'The Ski Company Ltd' Advise was you can't protect something like 'fruit & veg'
Reply With Quote
  #15  
Old 26.01.2020, 00:23
Forum Legend
 
Join Date: Mar 2016
Location: Leimbach, Zürich
Posts: 6,570
Groaned at 394 Times in 323 Posts
Thanked 7,619 Times in 3,797 Posts
EdwinNL has a reputation beyond reputeEdwinNL has a reputation beyond reputeEdwinNL has a reputation beyond reputeEdwinNL has a reputation beyond reputeEdwinNL has a reputation beyond repute
Re: Clarity on trademark / Facebook

Quote:
View Post
It comes down to if a name is really unique or part of everyday language.

25 years ago there was 'The Ski Company' run by Phil Smith who ran ski courses, later a Chalet operator opened & 'The Ski Company Ltd' Advise was you can't protect something like 'fruit & veg'
Surely you can protect a fruit or vegetable name. It just depends on how relating it is to the business. "The Fruit Store" for a store that sells fruit can't be protected since it is way to common, But name your computers Apple and there is no problem at all as for protecting your name since Apple is perhaps very common but has nothing to do wth computers so they can claim the use of the word for that.

If you were to start selling motorbikes which you would name "Fruit & Veg Motors" than the name can be protected from other companies who want to do the same.
Reply With Quote
Reply




Currently Active Users Viewing This Thread: 1 (0 members and 1 guests)
 
Thread Tools
Display Modes

Posting Rules
You may not post new threads
You may not post replies
You may not post attachments
You may not edit your posts

BB code is On
Smilies are On
[IMG] code is On
HTML code is Off
Trackbacks are Off
Pingbacks are Off
Refbacks are Off


Similar Threads
Thread Thread Starter Forum Replies Last Post
Several questions on Trademark registration in CH and USA Mr.Maquiavelo Business & entrepreneur 7 10.12.2018 23:50
To trademark or not? USA vs CH where and why? Mr.Maquiavelo Other/general 2 07.12.2014 20:45
Trademark attorney for fashion company LeLe73 Employment 2 08.09.2014 18:30
Trademark help in_zuri Business & entrepreneur 2 16.11.2012 10:46
Registering a trademark Zanzibar Business & entrepreneur 7 25.09.2012 13:58


All times are GMT +2. The time now is 21:33.


Powered by vBulletin® Version 3.8.4
Copyright ©2000 - 2020, Jelsoft Enterprises Ltd.
LinkBacks Enabled by vBSEO 3.1.0