Thursday, 27 April 2017

MakerSpaceGate part deux!

So after Makerspacegate part 1, I made contact with a few different IP specialists and today I had an interesting phone call discussing how the Maker community might protect the terms Makerspace and Hackspace… For what it’s worth here are the take away notes I took from todays call...

My take away notes are;

  • If we attempted to protect Makerspace or Hackspace it would be a collective mark we would be applying for as an ordinary trademark distinguishes goods and services of a single trader/entity. (more info about collective trademarks here
  • To do this we would need a legal entity (could be a company, an individual or a charity etc) 
  • The entity would need to have a set of rules that dictate what needs to be in place to allow usage of the terms,
  • User of the term would then need to be members of the collective
  • The actual applications would take around an couple of ours of work and cost up to £800 for UK and Europe (possibly around 200 for UK only and it is not completely clear atm how brexit will effect european trademarking)
  • Defending collective trademarks if needed would be costly.
  • Gratnells application (as they say they instructed their legal team last week) should reasonably be removed in around a months time... we need to be vigilant that they follow through.
  • If Gratnells had succeeded and not agreed to withdraw the TM's then we could have argued (in court) that they had been registered in bad faith..... however costs++++++++ :(

Finally... its almost a shame that we didn't get to challenge the application as we could have argued that these terms were not distinctive and in common parlance which if successful would have sorted the problem out once and for all!

1 comment:

Jonathan Oxer said...

This sounds very similar to the situation back in 2005 with the "Linux" trademark. An Adelaide company that wasn't associated with Linus Torvalds applied for the trademark here in Australia, so something needed to be done to prevent them from holding the name to ransom. The Linux Foundation in the US created the Linux Mark Institute to hold the trademark on behalf of Linus.

LMI (or perhaps it was still Linux Foundation at the time, I can't remember) delegated Linux Australia to be their representative in Australia in order to contest the application by the Adelaide company. Linux Australia engaged a local lawyer and began the process required to establish the trademark in Australia as Linus's agent, which included sending notifications to Australian companies that were using the term "Linux" in relation to their products or services. Unfortunately this wasn't communicated very clearly, and there was a huge controversy over it at the time. I was President of Linux Australia at the time, so I spent a lot of time trying to calm people down and explain that we weren't trying to block their use of the term, and on the contrary we were trying to make sure the term remained available for valid use!

There were many articles published in the tech media by journalists who totally misunderstood the situation and thought that Linux Australia was being predatory, and wanted to cash in on the name.

Eventually there was a ruling by Intellectual Property Australia that the term could not be owned by a single entity. That was just fine with us because it achieved the end result that we wanted, and the Adelaide company gave up trying to control the name. Now people take it for granted that the term "Linux" is safe, but it took a lot of work by many people to achieve that result.