Can a company "own" a Providence name?

[Bali1]

Ill appreciate your input with this situation: I wast sent today a "Cease and Desist" letter complaining about my store's website, which is "Bali Clothing Store" from a brand that owns the name "Bali". When I registered this name I did it based on the famous Indonesian Providence.. can a brand really "own" the use of a Providence name? They went as far as saying I've to transfer my domain to them.
I'm located in South America and this brand is from USA, if that makes a difference.

Thank you

 

[Zigner]

Ill appreciate your input with this situation: I wast sent today a "Cease and Desist" letter complaining about my store's website, which is "Bali Clothing Store" from a brand that owns the name "Bali". When I registered this name I did it based on the famous Indonesian Providence.. can a brand really "own" the use of a Providence name? They went as far as saying I've to transfer my domain to them.
I'm located in South America and this brand is from USA, if that makes a difference.

Thank you

I'm sorry, but this matter deals with US law matters only. You will want to seek local guidance.

 

[quincy]

Ill appreciate your input with this situation: I wast sent today a "Cease and Desist" letter complaining about my store's website, which is "Bali Clothing Store" from a brand that owns the name "Bali". When I registered this name I did it based on the famous Indonesian Providence.. can a brand really "own" the use of a Providence name? They went as far as saying I've to transfer my domain to them.
I'm located in South America and this brand is from USA, if that makes a difference.

Thank you

If the trademark is registered internationally, it could be possible for the company to enforce their mark in a country different from their own under that country's trademark laws.

If a domain name directs traffic to your website by using another's trademark in the address and this confuses consumers into thinking your site is theirs, a cease and desist letter could be a legitimate way to stop what the trademark holder sees is infringement. The trademark holder could also file a UDRP domain name dispute through ICANN, the international agency that oversees domain names.

It is possible, in other words, for a trademark holder to wrest away from a domain name registrant a domain name that uses their trademark in the name and to file an infringement claim against a foreign user of their mark.

Whether this is likely to happen is something you will need to discuss with an IP attorney in your area who can personally review all facts and advise you accordingly.

Good luck.

 

[FlyingRon]

The other problem you may run into with place names is that they may be Protected Designations of Origin. Things like Champagne, Feta, etc... can't be used outside of their designated origins.

 

[quincy]

The other problem you may run into with place names is that they may be Protected Designations of Origin. Things like Champagne, Feta, etc... can't be used outside of their designated origins.

I am not sure Bali is protected for clothing but it is something to consider. The country or place of origin would have to be shown to have significance for the specific goods being sold.

 

[adjusterjack]

Ill appreciate your input with this situation: I wast sent today a "Cease and Desist" letter complaining about my store's website, which is "Bali Clothing Store" from a brand that owns the name "Bali". When I registered this name I did it based on the famous Indonesian Providence.. can a brand really "own" the use of a Providence name? They went as far as saying I've to transfer my domain to them.
I'm located in South America and this brand is from USA, if that makes a difference.

Thank you

The company that sent you the letter, what do they manufacture or sell?

If it's clothing or related goods then you might be infringing.

Consult a trademark attorney before you respond.

 

[quincy]

The company that sent you the letter, what do they manufacture or sell?

If it's clothing or related goods then you might be infringing.

Consult a trademark attorney before you respond.

Or might not be infringing.

Trademark names can be shared (and often are), even when the goods being sold are the same or are similar. It is not unusual to find same name companies operating separately in different countries. If a company has registered their trademark in their own country, a trademark holder from a different country might find it impossible to prevent that company's use of the mark.

The fact that trademark holders all over the world are responsible for enforcing their own rights means that cease and desist letters and threats of lawsuits will be the first actions taken by most trademark holders when they see or suspect infringement.

Because all facts matter and, in the case of international actions, all applicable laws must be considered, an IP attorney in South America should be consulted for a personal review.