12 July 2010
A small computer consultancy in Lancashire, which had registered a domain name that described a new web-based service, received a letter from an in-house lawyer for a big US company headed “First Notice of Trademark Violation”. The letter complained of trade mark infringement in the UK and US and demanded the transfer of the domain name and threatened trade mark proceedings if its demand was not met. The computer consultancy had invested a lot of time and money in its new website. The US company’s trade mark was very different from its domain name and the name of its new service.
I advised the client that I could settle a response to that letter but that I could not send it on my own stationery. I told him that he could send it himself on his own notepaper or instruct a solicitor to send it on hers adding that the other side was more likely to be impressed by a letter from a specialist solicitors than the same letter from him. He took my advice and asked me to recommend a solicitor. I introduced him to one of the firms on the NIPC panel.
My draft letter drew s.21 of the Trade Marks Act 1994 and the decision of Mr. Justice Neuberger in Prince Plc. v Prince Sports Group Inc.  FSR 21 to the other side’s attention. It indicated that we were prepared to negotiate but not to capitulate.
Negotiations did ensue which resulted in a settlement that was satisfactory to my client.