Got a letter from <BIG_BRAND> for news based product

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Megist
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Got a letter from <BIG_BRAND> for news based product

Post by Megist »

Hello, guys

Soooo... I have a product for iPhone which is basically a news and data collector about clothes. I have more than 25 different brands in my app. I have monetization. So...I just received a letter from <BIG_BRAND> that I am infringing on their TMs without any specifics. I hired a lawyer, but I have some doubts about the track she is suggesting. Can you please help me to understand if it is infringing on <BIG_BRAND>'s TMs to use photos of their products to show information about them? I do not sell their clothes: I only show photos of them, their names/prices, and links to the websites where users can buy them.

UPD_1: Thank you for your response. It helped me decide what to do with a lawyer and in general with this situation. I updated this post to conceal sensitive information. I have a concern that my competitors may receive this letter and find this post, gaining information about our product. While updating, I attempted to ensure that it would still be helpful to others who read it.
Last edited by Megist on Mon Jan 30, 2023 12:37 pm, edited 2 times in total.
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AndyJ
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Re: Got a letter from Nike for news and data based app

Post by AndyJ »

Hi Megist,

Welcome to the forums.

First of all, as you have already consulted a lawyer and her advice doesn't satisfy you, perhaps you consulted someone who doesn't specialise in intellectual property law. I can't think of any other reason why you wouldn't have been told that there are no grounds for a trade mark infringememt claim arising from your app. This is the case under US and UK law. The way in which you are using the Nike (and any other brand's) trade mark is descriptively, that is to say, to refer to the real Nike etc products. This is the same as if you wanted to sell a pair of used trainers on Ebay and you wanted to identify the make of shoe to a potential buyer. However unlike the Ebay example, you app isn't selling anything and certainly isn't selling trainers and that is a second defence against this claim.

As we have said more than once here, certain brand owners think that registered trade marks create some sort of complete monopoly; they don't. This is just bullying tactics on the part of Nike. If they get to the point of threatening you with court after you have told them your reasons for denying their claim, you may wish to point out to them that making unjustified threats may constitute grounds for a counter claim by you - see sections 21 to 21F of the Trade Marks Act 1994.

The descriptive use of a trade mark is permitted under US law (the 'Lanham Act') 15 U.S. Code § 1115 (b)(4), and under UK law by section 11 (2)(c) of the Trade Marks Act 1994.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
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