Trademark infringement notice...

[eben]

So, received one of these this morning. VWSA is worried the public will confuse us with them..

Their letter:

Dear Sirs

TRADE MARK INFRINGEMENT: VW; VW-IN-CIRCLE LOGO; VWSA

It has come to our attention that you are using the above-mentioned trade
marks unlawfully by operating a website with the domain name
http://www.aircooledvwsa.co.za and making use of the trade marks on the site.

According to our records, you have not been granted consent to use the
trade marks and the impression being created that you enjoy our approval
is incorrect.

We view this conduct in a serious light.

Conduct of this nature amounts to offences in terms of various Acts, such
as The Trade Marks Act, The Copyright Act and The Trade Practices Act.
It also amounts to passing-off in terms of which your conduct is likely to
deceive and/or confuse members of the public into believing that you are
associated with Volkswagen of South Africa (Pty) Limited (“VWSA”),
which is not the case.

We accordingly request that you comply with the following:

1.

Cease making use of the trade marks and confirm this in writing;

2.

Provide a written undertaking that you will refrain from making
unauthorised use of the trade marks or any similar marks which
are confusingly or deceptively similar in the future;

3.

Cease making unauthorised reproductions and/or adaptations of
the copyright works and confirm this to us in writing;

4.

Provide a written undertaking that you will refrain from creating the
impression, in any manner, that you are connected with or
associated with VWSA;

5.

Remove all signs on display and destroy all documents which
reflect the marks and confirm that this has been attended to.

We require your compliance, undertakings and written confirmation
before close of business on 20 December 2012. In this regard initialling
at the foot of page 1 and signing this page will be adequate. The signed
letter can be returned to us by fax.

If we do not receive this we may need to consider further steps, which we
wish to avoid.

We await to hear from you as a matter of urgency.

Yours faithfully

###############
LEGAL ADVISOR

My Response:

Good morning,

Thank you for your email. I have been running this site since 2005 and at that early stage, I requested permission to use the names and trademarks from VW Germany. My requests were ignored though and since so much time has passed, I unfortunately do not have my original email anymore.

It is strange to me that after all this time, and after receiving no response from VW AG, this has become a problem only now. At least 10 employees of VW of South Africa are members of the site, one of them since 2007.

The site functions to help the people in South Africa, some of them, your customers, to maintain their classic VW's and as such your comments that the site is deceiving or confusing the public is quite inaccurate.

VW of South Africa do not produce aircooled vehicles anymore and neither are they very helpful to the community who are maintaining and supporting them so I do not reckon that there is any chance of the site negatively affecting VW of South Africa as it doesn't provide competing services.

With this in mind, I would like to request if it would be possible to retrospectively give permission to use the site in it's current format in order to strengthen the brand loyalty for VW. A lot of the members of the site are current VW customers and I reckon they might not be receptive to the reasons that you have provided of why aircooledvwsa.co.za is detrimental to VW as a brand.

If we could not come to some kind of agreement or compromise, could you please provide me with the relative documentation about exactly which trademarks you are protesting about so that I could make the required changes where it is deemed necessary.

I am making the members of my site aware of this action by yourselves just in case some of them has indeed confused aircooledvwsa.co.za with Volkswagen of South Africa.

Kind regards


Eben van Ellewee
Administrator of aircooledvwsa.co.za

[beetlepower]

What are they asking you to do?

[Golfmad]

How long has this site been up? And they worry NOW? VWSA can GFT !

[fig]

I can't see the image, but I've seen these sorts of corporate bully letters before.

Personally, I wouldn't even bother to respond unless they issue summons. Just a gang of thieving lawyers trying to jusify their huge corporate retainers.

They don't own the term aircooledvwsa. They don't have the right to regulate anyone's use of their name for identification purposes. They cannot reasonably argue that anyone, except some dumb-ass parasite lawyer, would confuse this site with VWSA or any other VW brand or copyright or IP.

I would be very happy to participate in a campaign where we remove all VW emblems from our cars in protest. Bus drivers could go further by fitting the VW emblem upside down.

My personal response to VW and their parasitic lawyers: go fcuk yourselves! Is this how you treat enthusiasts who keep old Volkswagens on the road and help build your brand's reputation for reliability and longevity? Enthusiasts who keep these cars on the road with zero support from VW; just this kind of hindrance.

If you gang of parasites wants us to stop using the aircooledvwsa name, then make an offer and buy it so you own it and then you can do as you please, including shutting the site down. I am sure Eben would be open to seven-figure offers.

[eben]

I'll go over it when i get in the office

[Retrobug]

They should hope the puplic confuses the two!
Try calling VW South africa and asking them how to repair a 50+ year old car!
In my opinion VW should thank this forum!

[eben]

I've updated the first post.

I would like to provide them with the opportunity for a positive response to the aircooled VW community first.

After all, this site is not here to break down the VW brand, to the contrary.

[Golfmad]

Its because of VW SA that I will never again buy any new VW from them- I will be buying Japanese, or other German marks.... they are SO out of touch with what their PAYING customers want, it actually hurts !!! Even though I know lots of people who are VW fanatics, for their newer waterpumpers, and all of them really REALLY wants SA to have a 2 door Gti - noooooo !! They have been giving us stupid 4 door models since, well, the begining of Gti in SA, claiming market research shows people prefer 4 doors bla bla bla wara wara etc - they are so out of touch !

Judging by that stupid email from a stupid lawyer(liar) person I feel vindicated !

[arnocill]

Maybe you can rename this site?
Aircooled S.A
dedicated to cars manufactured by people that don't want to be associated with their product

[Tony Z]

to be perfectly honest, the two logos are not the same.
The VW logo has a distinct line between the V and W seperating the logo.
It can be argued that as ours does not have this seperation, it is actually an X with a / and \ on either side.

Mayeb a line can be added under our logo on the site "VW wants nothing to do with us or the aircooled vehicles they produced, so do not confuse us with VW".

[eben]

I reckon I'm going to see what they come back with first before I go any further. I don't see what they hope to gain from their initial contact.

[MarshallGTi]

thats actually fkn hilarious... what about the VW club of SA? their whole site is littered with VW logos and much more likely to attract the google searches of customers with more modern dubs... i think some lawyer just wants his xmas bonus...

[eben]

thats actually fkn hilarious... what about the VW club of SA? their whole site is littered with VW logos and much more likely to attract the google searches of customers with more modern dubs... i think some lawyer just wants his xmas bonus...

Maybe they received a letter too

[eben]

Trademark Act:

PART VIII
INFRINGEMENT

33.

Registration a condition precedent to an action for infringement.

No person shall be entitled to institute any proceedings under section 34 in
relation to a trade mark not registered under this Act: Provided that nothing in
this Act shall affect the rights of any person, at common law, to bring any
action against any other person.

34.

Infringement of registered trade mark.

(1)

(2)

The rights acquired by registration of a trade mark shall be infringed
by—

(a)

the unauthorized use in the course of trade in relation to goods
or services in respect of which the trade mark is registered, of
an identical mark or of a mark so nearly resembling it as to be
likely to deceive or cause confusion;

(b)

the unauthorized use of a mark which is identical or similar to
the trade mark registered, in the course of trade in relation to
goods or services which are so similar to the goods or services
in respect of which the trade mark is registered, that in such
use there exists the likelihood of deception or confusion;

(c)

the unauthorized use in the course of trade in relation to any
goods or services of a mark which is identical or similar to a
trade mark registered, if such trade mark is well known in the
Republic and the use of the said mark would be likely to take
unfair advantage of, or be detrimental to, the distinctive
character or the repute of the registered trade mark,
notwithstanding the absence of confusion or deception:
Provided that the provisions of this paragraph shall not apply to
a trade mark referred to in section 70 (2).

A registered trade mark is not infringed by—

(a)

any bona fide use by a person of his own name, the name of
his place of business, the name of any of his predecessors in
business, or the name of any such predecessor’s place of
business;

(b)

the use by any person of any bona fide description or
indication of the kind, quality, quantity, intended purpose,
value, geographical origin or other characteristics of his goods
or services, or the mode or time of production of the goods or
the rendering of the services;

(c)

the bona fide use of the trade mark in relation to goods or
services where it is reasonable to indicate the intended
purpose of such goods, including spare parts and accessories,
and such services;

(c)

the importation into or the distribution, sale or offering for sale
In the Republic of goods to which the trade mark has been
applied by or with the consent of the proprietor thereof;

(e)

the bona fide use by any person of any utilitarian features
embodied in a container, shape, configuration, colour or
pattern which is registered as a trade mark;

(f)

the use of a trade mark in any manner in respect of or in
relation to goods to be sold or otherwise traded in, or services
to be performed, in any place, or in relation to goods to be
exported to any market, or in any other manner in relation to
which, having regard to any conditions or limitations entered in
the register, the registration does not extend;

(g)

the use of any identical or confusingly or deceptively similar
trade mark which is registered:

Provided that paragraph (a) shall not apply to the name of any juristic
person whose name was registered after the date of registration of the
trade mark: Provided further that the use contemplated in paragraph
(a), (b) or (c) is consistent with fair practice.

[brianj]

I would completely ignore this. Your site has cropped up purely because it contains the phrase 'vwsa' in the URL. They have probably done a search and found a whole bunch of these and sent letters to these site admins... The reasonable person should be able to tell the difference between this site and the vw sa site.