# dairy trademark claim against my design website - unfair?



## eme (Feb 10, 2012)

I have a personal website that I started in 1997 (www.goldtop.org) that started out as a kind of online scrapbook and eventually served as a portfolio for my design / illustration work. One of the things I had *a thing* about at college was milk and its related imagery (packaging etc etc) so I chose the name goldtop as a reflection of that. 

I've now received an email from the accounts department(!) of the Jersey Cattle Society (ukjerseys.com) saying:

"we hold the trade mark registration for the name Gold Top, as a bottom line is that we can’t be seen to endorse or overlook 3rd party use of our well known t/m GOLD TOP, as this is a chain of products that are out under licence. With references to www.goldtop.org and milk on the web site obviously exacerbating the situation"

I responded:
"Please note that the art-based goldtop website is well established and has been online and constantly updated since 1997.

The site sells no milk related products, and as such I fail to see what possible claim you might have on the name (which, you will note, is 'goldtop' and not 'Gold Top). 

I see no likelihood of confusion on the part of the public, so I would therefore be grateful if you could expand upon the exact nature of the claimed trademark infringements."

They replied:
"All we are asking is that milk be removed from the web site. According to Cleveland's our solicitors this becomes an infringement into the trademark and the CTM registration.

We have had several of these appear recently over the past two years, whereby I have been able to amicably remove or rename items on designer websites."

It seems really unfair that I have to amend my website just becasue they say so, but would appreciate any advice as to how I should proceed. Thanks lots


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## WouldBe (Feb 10, 2012)

Find out when they trademarked "gold top". If it's after your website was set up tell them to shove it.


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## editor (Feb 10, 2012)

You'd have to be suffering mad cow disease to confuse goldtop.org with the Jersey Cattle Society of the United Kingdom. It's just another example of company bullying.


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## Lazy Llama (Feb 10, 2012)

Gold Top Trademark info.

http://www.ipo.gov.uk/ohim?ohimnum=E90340

Filing date: 01 April 1996
Publication date: 05 October 1998
Registration date: 20 July 1998
Applicant:QUALITY MILK PRODUCERS LIMITED
Scotsbridge House Scots Hill, Rickmansworth, United Kingdom, WD3 3BB

Class 29 Dairy Products, milk, milk products, cream, yoghurt, cheese, butter, butter oils, custard, rice pudding, egg-custard mix, milk puddings, desserts and puddings all being wholly or substantially made from the milk of Jersey and Guernsey cows.

Class 30 Ice-cream; ice-cream mixes; choc ices; cakes; pastries; desserts and puddings; all being made wholly or substantially wholly of ice-cream; all made from the milk of Jersey and Guernsey cows.

There's also a registered trademark of Gold Top for hosiery and stockings!


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## WouldBe (Feb 10, 2012)

A quick look on trademarkdirect.co.uk says

"More than one person can own a trade mark as long as it is used for a different type of product or service."

So unless you're selling dairy products you should be OK. It didn't actually say that gold top was already registered as you have to register to find out and they want to charge you £470 to register your trademark.


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## Lazy Llama (Feb 10, 2012)

Interesting that the trademark was registered by QUALITY MILK PRODUCERS LIMITED who just happen to have the same address as Jersey Cattle Society of the United Kingdom, the former being a co-op, the latter being a registered charity.


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## colacubes (Feb 10, 2012)

Fucksake  

I have no advice to offer but this came to mind when I read it (and is v loosely dairy based )


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## Quartz (Feb 10, 2012)

I remember gold top milk - it had the cream on top. I didn't think that sort of milk was sold any more, but a quick Google shows it is and specific to CI cows. That said, gold top (space and no space) seems to be a very varied term, from guitars to chickens. So is it a valid trademark in the first place?

Anyway, for a trademark to be valid it has to be defended. They haven't defended their trademark in respect of you for over 13 years, so you could argue that their trademark is invalid, at least in your respect. If they were to go to court, they might lose it all.


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## ddraig (Feb 10, 2012)

it's probably because you got good search engine results and they are jealous!
good luck with naffing them off


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## Quartz (Feb 10, 2012)

Sorry, but I missed the obvious: your site is goldtop.org, which is an American domain, and not goldtop.org.uk, so UK law may not apply!


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## Cid (Feb 10, 2012)

WouldBe said:


> A quick look on trademarkdirect.co.uk says
> 
> "More than one person can own a trade mark as long as it is used for a different type of product or service."
> 
> So unless you're selling dairy products you should be OK. It didn't actually say that gold top was already registered as you have to register to find out and they want to charge you £470 to register your trademark.


 
I presume that's why they're saying  remove the 'milk' section, rather than take down the site.


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## Minnie_the_Minx (Feb 10, 2012)

Cid said:


> I presume that's why they're saying remove the 'milk' section, rather than take down the site.


 
I reckon she'd be alright if she did that, although it's not really fair considering it's only a small part of her site

Found this about McDonalds



> *McChina Wok Away (UK)*
> 
> In 2001, McDonald’s lost a nine-year legal action against Frank Yuen, owner of _McChina Wok Away_, a small chain of Chinese takeaway outlets in London. Justice David Neuberger ruled the McChina name would not cause any confusion among customers and that McDonald's had no right to the prefix Mc.[8]


 
and



> *The real Ronald McDonald (US)*
> 
> The company waged an unsuccessful 26-year legal action against McDonald's Family Restaurant which was opened by a man legally named Ronald McDonald in Fairbury, Illinois in 1956.[15] Mr. McDonald ultimately continued to use his name on his restaurant, despite objections by the franchise.[16]


 
Not being serious here, but if Eme changed her surname to Goldtop, I wonder if she'd be able to use the name?


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## Corax (Feb 10, 2012)

Where's the milk bit?  Or have you taken it down?


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## Minnie_the_Minx (Feb 10, 2012)

Corax said:


> Where's the milk bit? Or have you taken it down?


 
http://www.goldtop.org/milk/index.html


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## Corax (Feb 10, 2012)

Minnie_the_Minx said:


> http://www.goldtop.org/milk/index.html


Ta.

When I clicked that link, I thought you'd sent me to the Jersey Cattle Society of the United Kingdom's webpage as a joke.

I didn't, obviously.  Tell them to stop being daft and go do something more useful with their client's time and money.  This is not a legal opinion.


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## Minnie_the_Minx (Feb 10, 2012)

Jersey Cows were only on Countryfile (I think it was) the other week. They're worried because a shopowner wants to stock milk from the mainland thereby undercutting their prices. Maybe all this publicity prompted them to have a nosey around and see if they should be pissed off with anyone else


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## quimcunx (Feb 10, 2012)

Extra points if you manage to fit  
	

	
	
		
		

		
			





  into your response.


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## FridgeMagnet (Feb 10, 2012)

You could propose to put in a part saying "this is nothing to do with the Jersey Cattle Society" - as long as they put a similar disclaimer on their site saying "this is nothing to do with goldtop.org" on _their_ site, of course.


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## Minnie_the_Minx (Feb 10, 2012)

Tell them to get off their high horse and drink their milk


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## Minnie_the_Minx (Feb 10, 2012)

I reckon you should also put up an image of you wearing a gold top, just to wind them up, although winding them up isn't probably a good idea


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## Cid (Feb 10, 2012)

Quartz said:


> Anyway, for a trademark to be valid it has to be defended. They haven't defended their trademark in respect of you for over 13 years, so you could argue that their trademark is invalid, at least in your respect. If they were to go to court, they might lose it all.


 
Indeed, after all eme's been using it since before it was even published. Might be worth PMing Winot as well.


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## ShiftyBagLady (Feb 10, 2012)

Urgh, just tell them to piss off. I'm not expert on trademarks but your stuff is OBVIOUSLY different.

More importantly, when I was little I used to go regularly to a little cafe which had a milk machine, the milk would be absolutely freezing and lovely.
Had this sign on it:





"Mum, can I have some nice cold, ice cold milk?"


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## Puddy_Tat (Feb 10, 2012)

Subject to the disclaimer that I'm not a lawyer, I'd suggest a response along the lines of


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## Minnie_the_Minx (Feb 10, 2012)

Puddy_Tat said:


> Subject to the disclaimer that I'm not a lawyer, I'd suggest a response along the lines of


 

My friend told a TV licence inspector who queried his aerial, "just because I've got a pint of milk in my fridge, it doesn't mean I've got a cow in my back yard".

I can't see Eme advertising any products for sale that could be mistaken for Gold Top milk


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## Puddy_Tat (Feb 10, 2012)

Seriously...

My knowledge of the law as relates to trade marks and web sites and such, but would a way out of this that satisfies all concerned be something on the relevant page saying something like

"This website has no connection with [company] who are purveyors of [product] - for their website go here [link]"

or words to that effect?

ETA -

I'm aware, for example, of a number of transport history websites that have disclaimers along the lines of "this website is about the history of bus services in [area], it is not run by [local bus company] and has no connection with them.  We also can not handle travel enquiries etc - for their website go to [link]" - and I'm not aware of any having trouble.


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## editor (Feb 10, 2012)

Puddy_Tat said:


> We also can not handle travel enquiries etc - for their website go to [link]" - and I'm not aware of any having trouble.


Eme's never, ever had any enquiry relating to this other bunch in over a decade, probably because there is clearly not the slightest connection.


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## Cid (Feb 10, 2012)

editor said:


> Eme's never, ever had any enquiry relating to this other bunch in over a decade, probably because there is clearly not the slightest connection.


 
They've probably got a new legal team in, or new management trying to 'remonetise an established and consumer-friendly brand'.


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## Puddy_Tat (Feb 10, 2012)

editor said:


> Eme's never, ever had any enquiry relating to this other bunch in over a decade, probably because there is clearly not the slightest connection.


 
That is obvious, and I'd have thought it would be obvious to the average idiot.

But we're talking lawyers here...


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## stuff_it (Feb 10, 2012)

I always wondered if these ever got in trouble for the blatant Express Dairies logo rip off....


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## dessiato (Feb 10, 2012)

There is the tort regarding "passing off" which is intended to stop people pretending that there product is the same, or very similar another's. Having looked at your site, I didn't even bother to look at theirs. There is no way that yours is similar to anything milk related. It would take a complete idiot with a degree in advanced stupidity to mistake yours for theirs.

There is also the law of "passing off" which 


> The _law_ of passing off prevents one person from misrepresenting his or her goods or services as being the goods and services of the claimant, and also prevents one person from holding out his or her goods or services as having some association or connection with the plaintiff when this is not true.


 
Disclaimer: I haven't studied business law for about ten years and could easily be out of date here.


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## dessiato (Feb 10, 2012)

A quick check on Wikki I found this:



> The Trade Marks Act 1994 states that "a person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered" (section 10(1) of the Act). A person may also infringe a registered trade mark where the sign is similar and the goods or services are similar to those for which the mark is registered and there is a likelihood of confusion on the part of the public as a result (section 10(2)).
> A person also infringes a registered trade mark where a sign is identical but the goods are dissimilar if the trade mark has a reputation in the UK and its use takes unfair advantage of, or is detrimental to, the mark’s distinctive character or reputation (section 10(3)).


 
Can't see how you can be accused of any of that!


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## eme (Feb 10, 2012)

Thanks for the replies all. Will reply re-stating the bit dessiato quoted.

I think they're just trying it on, as have had no formal explanation as to *why* they should be in any legal position to make a request to change my website other than, 'because we say so'. This pisses me off. So it'd be great to figure out a way of just telling them to get stuffed (all legal like).

Will write something about the 13 years of TM left undefended and the bit about the TM Act 1994, and might consider putting a disclaimer on the milk section. Don't want to link to them really as, as someone pointed out, my site ranks higher, so that in turn would help their business. Cow insemination services are not what I was interested in when I started my milk related ephemera collection!


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## Corax (Feb 10, 2012)

Puddy_Tat said:


> Seriously...
> 
> My knowledge of the law as relates to trade marks and web sites and such, but would a way out of this that satisfies all concerned be something on the relevant page saying something like
> 
> ...


 
I see this as potentially problematic.  By putting such a clarification, you're essentially admitting that the two sites/products _could_ be mistaken - or so it could be argued in court anyway.


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## Stanley Edwards (Feb 10, 2012)

Ignore them. It's total bollocks.

If you are so inclined you could 'milk' it for all it's worth publicity wise. They have absolutely no claim whatsoever. Nothing. Nada!


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## Quartz (Feb 10, 2012)

Stanley Edwards said:


> Ignore them. It's total bollocks.


 
No, don't ignore them. Reply and tell them to fuck off, for reasons discussed previously - but not all of them. Of course, they've probably used Google and discovered this thread.


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## editor (Feb 10, 2012)

Quartz said:


> No, don't ignore them. Reply and tell them to fuck off, for reasons discussed previously - but not all of them. Of course, they've probably used Google and discovered this thread.


It should prove an educational and a salutary read for them.

If they are indeed reading this, I feel it is only fair that they should know about the Streisand Effect before they proceed.


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## Minnie_the_Minx (Feb 10, 2012)

removed


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## oryx (Feb 11, 2012)

Wind them up that you come from a family of rabid knitters who patented the word 'Jersey' in 1783.

(not really)

Good luck, it does sound like a case of corporate bullying, corporate power v. the individual etc.


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## WouldBe (Feb 11, 2012)

Cid said:


> I presume that's why they're saying remove the 'milk' section, rather than take down the site.


 Eme doesn't sell milk or other dairy products so it's irrelevant. No one is going to buy a photo or print of some milk from Eme and try and pour it over their cornflakes.


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## WouldBe (Feb 11, 2012)

Quartz said:


> I remember gold top milk - it had the cream on top.


 You used to be able to get gold top from our milkman but the milk didn't come from Jersey. The coloured tops on the milk bottles just indicated the fat content of the milk with the gold topped ones having the highest fat content.


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## joustmaster (Feb 11, 2012)

see how much they would spend on buying the domain from you


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## mauvais (Feb 11, 2012)

joustmaster said:


> see how much they would spend on buying the domain from you


Don't do that. Then it indicates that you're trying to profit from the connection and you'll lose it for nothing - not standalone law as such, but domain dispute rules.

I'm not a lawyer, but they will argue that they didn't know about your site in all of that time (search indexing changes) and now must pursue you for exactly that reason - the 'use it or lose it' rules of trademark enforcement. It's a bit tenuous but it doesn't matter that you're not selling milk. If in a hypothetical scenario you posted a gallery of dairy-themed art and implied that it was in some way sponsored by or connected to the dairy producers, they would be right to come after you. The question is this: would the man on the Clapham omnibus assume there was any connection between your site and gold top milk after a quick browse? In your case _almost_ certainly not, but the 'almost' might become a headache.

I would think that given the only slight degree of connection (milk), a disclaimer would be a show of good faith and sufficient to end any complaint.


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## Winot (Feb 11, 2012)

eme said:


> I have a personal website that I started in 1997 (www.goldtop.org) that started out as a kind of online scrapbook and eventually served as a portfolio for my design / illustration work. One of the things I had *a thing* about at college was milk and its related imagery (packaging etc etc) so I chose the name goldtop as a reflection of that.
> 
> I've now received an email from the accounts department(!) of the Jersey Cattle Society (ukjerseys.com) saying:
> 
> ...



Haven't had time to look at sites but sounds like bollocks to me. I can draft you a reply on Monday if you like (I'm a trade mark attorney).


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## RoyReed (Feb 11, 2012)

Sounds a bit like Dell versus Dell from a few years back. Paul Dell nearly got bankrupted over this.


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## ViolentPanda (Feb 11, 2012)

WouldBe said:


> You used to be able to get gold top from our milkman but the milk didn't come from Jersey. The coloured tops on the milk bottles just indicated the fat content of the milk with the gold topped ones having the highest fat content.


 
Not from Jersey the territory, from Jersey*s*. The Jersey breed of cow.


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## mauvais (Feb 11, 2012)

ViolentPanda said:


> Not from Jersey the territory, from Jersey*s*. The Jersey breed of cow.


Confusing. They should sue.


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## Corax (Feb 11, 2012)

mauvais said:


> I would think that given the only slight degree of connection (milk), a disclaimer would be a show of good faith and sufficient to end any complaint.


As I said before, I'd be _massively_ wary of doing that. If you post a disclaimer, you're admitting that people may confuse the two. Don't you think? (not a lawyer either, although trained to CPE level)

ETA: Be interested to see Winot's professional opinion on this.


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## WouldBe (Feb 12, 2012)

ViolentPanda said:


> Not from Jersey the territory, from Jersey*s*. The Jersey breed of cow.


 The milk from our milkman was locally sourced with not a single Jersey cow for miles around.


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## ViolentPanda (Feb 12, 2012)

WouldBe said:


> The milk from our milkman was locally sourced with not a single Jersey cow for miles around.


 
But with several prisons on the near horizon...


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## wemakeyousoundb (Feb 12, 2012)

dessiato said:


> There is the tort regarding "passing off" which is intended to stop people pretending that there product is the same, or very similar another's. Having looked at your site, I didn't even bother to look at theirs. There is no way that yours is similar to anything milk related. It would take a complete idiot with a degree in advanced stupidity lawyer to mistake yours for theirs.
> 
> There is also the law of "passing off" which
> 
> ...


fixed for you


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## ajdown (Feb 12, 2012)

Quartz said:


> No, don't ignore them. Reply and tell them to fuck off, for reasons discussed previously - but not all of them. Of course, they've probably used Google and discovered this thread.


 
Indeed, time for an Arkell V Pressdram moment methinks.


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## Puddy_Tat (Feb 12, 2012)

ViolentPanda said:


> Not from Jersey the territory, from Jersey*s*. The Jersey breed of cow.


 
or a cow wearing a jersey?


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## ViolentPanda (Feb 12, 2012)

Puddy_Tat said:


> or a cow wearing a jersey?


 
That's just plain wrong!


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## eme (Feb 13, 2012)

@Winot - great, thanks lots! Have just emailed you.


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## mauvais (Feb 13, 2012)

Corax said:


> As I said before, I'd be _massively_ wary of doing that. If you post a disclaimer, you're admitting that people may confuse the two. Don't you think? (not a lawyer either, although trained to CPE level)
> 
> ETA: Be interested to see Winot's professional opinion on this.


If you did it from the off, you would be proactively admitting that there was the likelihood of confusion - bad news. If you did it only in reaction to their complaint, and by agreement, simply in order to make them go away, I'd have thought it couldn't really be used against you.


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