[HardwareGuru]

Hello Guys,

I want to discuss the following issue that we have in the benelux ( Belgium, The Netherlands en Luxemborg ).
The trademarks for "Kodi"and "Xbmc" are registered by a thisrt party person/company.
The registrar is a seller for android boxes and raspberry pi's.

At the moment any retailers or info websites in the region are starting to get emails stating to recieve a financial claim when the words "KODI" or "XBMC" is on there websites or advertisement etc.

Links to the registers: ( public register data )
https://register.boip.int/bmbonline/deta...ID=3392923
https://register.boip.int/bmbonline/deta...ID=3392924

It seems KODI and XBMC can not be mentioned anyware in the region of trademark, one retailer/seller is trying to get the sole right to use it.

Will kodi support anyone that is going to court with this person/company?
I think i can speak for the entire benelux region and ask what we can do about such things or will the foundation stand up also?
Are there any examples where such things allready accoured in the past?

I think a lot of people are interested at how this ends up.

Best regards,
Martin

[da-anda]

I can't speak for the foundation, but I think you can be assured that once our trademark registration process is finally finished (it's taking ages) we'll be hunting down a lot of violators and will try to take away these trademarks. But that won't give hardware sellers the freedom to do whatever they want with our brand namel. They ofc are free to advertise as long as they play by the rules and no piracy is involved in any way.

edit: and I don't think we can support in a legal fight with them as long as our trademark is not valid.

[natethomas]

Our lawyer has already been advised and is currently dealing with this situation. We almost certainly aren't going to support the companies who are also using our trademark in ways that violate our trademark policy, but steps are already being taken with regards to this person.

[HardwareGuru]

Our lawyer has already been advised and is currently dealing with this situation. We almost certainly aren't going to support the companies who are also using our trademark in ways that violate our trademark policy, but steps are already being taken with regards to this person.

Thanks,

Please keep us updated if posible.

Best regards,
Martin

[krldot]

I sure hope the Kodi Foundation is registering the trademark in all european countries , because by law US trademark cannot be applied to EU
EU full trademark is done by registering in all applicable member states ( 2000E - 40000E per country )
I support a small trademark registration company in my country and unfortunately talking to the employees at this company even if you register the Kodi Foundation trademarks now they will not be valid in the country that this guy already registered the trademark.

[jjd-uk]

Nonsense you can invalidate any trademark when you can show an application has been in bad faith see http://oami.europa.eu/en/enlargement/pri...f/INTA.pdf

The fact he's distributing Kodi and not a different or similar product/service of the same name shows he must know our prior usage.

[krldot]

Until its invalidated by court even if you register the Kodi Foundation trademarks now they will not be valid in the country that this guy already registered the trademark.

[natethomas]

Until its invalidated by court even if you register the Kodi Foundation trademarks now they will not be valid in the country that this guy already registered the trademark.

I feel like you didn't read jjd-uk's reply to you.

[krldot]

Until its invalidated by court even if you register the Kodi Foundation trademarks now they will not be valid in the country that this guy already registered the trademark.

I feel like you didn't read jjd-uk's reply to you.

The trademark is valid until you invalidate it in court!

[HardwareGuru]

Nonsense you can invalidate any trademark when you can show an application has been in bad faith see http://oami.europa.eu/en/enlargement/pri...f/INTA.pdf

The fact he's distributing Kodi and not a different or similar product/service of the same name shows he must know our prior usage.

Thanks a lot, i think that was what we are looking for.
Seems there where cases just like this where "bad faith" ruled out a trademark beeing legal.
This information is actualy realy usefull.

Thanks a lot from the entire KODI community within the benelux.
* and probably also elseware

[HardwareGuru]

Until its invalidated by court even if you register the Kodi Foundation trademarks now they will not be valid in the country that this guy already registered the trademark.

I feel like you didn't read jjd-uk's reply to you.

The trademark is valid until you invalidate it in court!

Then he has to go to court first.. if that happens i will gather up a whole community to back the case.
It will be a hard case for this person to prove his legal rights ( after reading the above article + referal cases )
Time will tell.

[HardwareGuru]

Its all clear to me now;

An owner of a trademark who tolerates the use of a later trademark during a period of 5 years may no longer invoke the nullity of the later trademark based on his or her prior right (except when the later trademark was filed in bad faith).

This also rules inside the benelux, even for trademarks registered outside of europe.

"Bad faith" legal law definition;

bad faith

1) n. intentional dishonest act by not fulfilling legal or contractual obligations, misleading another, entering into an agreement without the intention or means to fulfill it, or violating basic standards of honesty in dealing with others. Most states recognize what is called "implied covenant of good faith and fair dealing" which is breached by acts of bad faith, for which a lawsuit may be brought (filed) for the breach (just as one might sue for breach of contract). The question of bad faith may be raised as a defense to a suit on a contract. 2) adj. when there is bad faith then a transaction is called a "bad faith" contract or "bad faith" offer.


Again thanks jjd-uk for giving the pointer on this issue.

[natethomas]

I believe you may be using the US definition of bad faith there and particularly one that doesn't apply to trademark. What you're looking for is this.

Bad faith is the mental state characterized by an intent to deceive consumers by using a competitor's trademark or one that is confusingly similar to it.

[nickr]

You guys are a lawyer's nightmare LOL. Like the guys who phone me from prison saying their cellmate tells them I am running their case wrong.

Leave it to the lawyers guys.

[natethomas]

* natethomas looks at his law degree. Wonders if it's worth mentioning.

Anyway, at the end of the day none of this conversation matters. Our lawyer is very much on top of things.