[Jared MacDonald]

Hi All,

As the title says I am looking for a Canadian lawyer who deals with Trademark and IP law. My BB10 app "DictaNote" apparently is infringing on a trademark of a company in Germany and I have received several e-mails from their lawyer and this morning I received a Cease & Desist letter from them. I removed the app from sale after receiving the first e-mail in order to try to avoid any legal action being taken against me. Before i do anything else, including signing the cease and desist, I would like to get some legal advice, but unfortunately I cannot afford the lawyer fees of any of the places in Ottawa where I live.

I develop BB10 apps in my spare time as a hobby. My apps are mostly free apps or make use of in-app purchases, but I have made very little money off of the apps. I am hoping someone out their would know someone who is willing to help.

Thanks,

[middbrew]

Good luck with your efforts. I'm not a lawyer and I don't know any in Canada, but I will pass this on to a few friends here in the US who might be able to point you in the right direction.

[SCrid2000]

I don't do IP law but a quick Google search revealed multiple Dictanote apps.
Did they send you verification of the trademark you're allegedly infringing?

[pkcable]

Wondering out loud if it would help to just remove the app for sale from Germany, but not other Countries? I know with my app, I am only allowed to sell it in the US for copyright reasons. Of course I'm about as far from a lawyer as you can get!

[AnimalPak200]

Wondering out loud if it would help to just remove the app for sale from Germany, but not other Countries? I know with my app, I am only allowed to sell it in the US for copyright reasons. Of course I'm about as far from a lawyer as you can get!

Depends on where they have registered their trademarks. In the US you can even file local state/county trademarks if you only intend on doing business within that area (difficult nowadays with the internet). Also note that the infringement exists only when the similar trademarks are for the same product/service category (i.e. They don't own the term 'DictaNote' for every possible use)... although I can't see how something called DictaNote would be used for anything else.

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[Jared MacDonald]

Thanks guys for your replies.

@middbrew - Thanks!

@SCrid2000 - They send me the registration numbers for their trademarks, which I have looked up. They don't have a trademark in Canada but they have German trademarks, a Community trademark, and an International trademark that i believe is only for the US. They've asked me several times to provide my address, but I am not really comfortable doing that. This is something I have to give them or can I decline?

@pkcable - I have removed the app completely from Blackberry World when I received the first e-mail months ago, and I informed the lawyer that I was doing so. So, the only reason I can think of for the Cease & Desist is so they have a hardcopy proof that I said I would cease.

I'm probably going to just sign the cease and desist but I was hoping to maybe get some advice first.

Thanks for the replies.

[SCrid2000]

Easiest thing to do really is just change the name of the app and rerelease it. That's not legal advice lol, but it's what I personally would do.

[Jared MacDonald]

Easiest thing to do really is just change the name of the app and rerelease it. That's not legal advice lol, but it's what I personally would do.

Which is exactly what I plan on doing, when I get the time. But as I said I already removed the app from Blackberry World, like 2 or 3 months ago and I e-mailed the lawyer to tell him I was doing so. But since then I keep receiving emails and now a Cease & Desist letter. Also in the e-mail that the C&D came in they told me if I don't sign it and send it back they will advise their client to take legal action. In the C&D it mentions that if I don't stop they would be seeking damages of 5000.00 Euros for each individual cases of contravention. I'm assuming that means each download of my app, which is over 73k which amount to like $54 million Canadian, if I've done my math correctly.

[SCrid2000]

That sounds more like a spam email than a legal demand.

[Jared MacDonald]

That sounds more like a spam email than a legal demand.

If it is not spam and I ignore it, is there anything that they can really do? Like I said I've stopped selling the app completely. I kinda wanna just ignore it, but I'm worried that ignoring it will make matters worse.

[MiSsY_]

Thanks guys for your replies.

@middbrew - Thanks!

@SCrid2000 - They send me the registration numbers for their trademarks, which I have looked up. They don't have a trademark in Canada but they have German trademarks, a Community trademark, and an International trademark that i believe is only for the US. They've asked me several times to provide my address, but I am not really comfortable doing that. This is something I have to give them or can I decline?

@pkcable - I have removed the app completely from Blackberry World when I received the first e-mail months ago, and I informed the lawyer that I was doing so. So, the only reason I can think of for the Cease & Desist is so they have a hardcopy proof that I said I would cease.

I'm probably going to just sign the cease and desist but I was hoping to maybe get some advice first.

Thanks for the replies.

I wouldn't sign anything. Nor give them my address. In fact I would refrain from any type of real response until them and their claim are 100% verified. Never jump the gun at admitting fault, you won't be able to take that back, law101.
What exactly do they claim you are infringing upon? A name? a logo? A function? None of this is very specific, and with law the specifics count.

Just off the top of my head, I would think they would approach BlackBerry first by default since their app store is where it is provided as opposed to contacting you directly. If your content was infringing their trademarks and ip they would naturally contact the direct provider first to have the offending content remove, since they would have the direct ability and access to do so immediately.
It wouldn't take too much research to check the validity of their claim and what limitations or recourse, if any, actually exist.

Just to clarify I'm not from Canada but I've studied law in SA

Posted via CB10 from my Z10

[Jared MacDonald]

I wouldn't sign anything. Nor give them my address. In fact I would refrain from any type of real response until them and their claim are 100% verified. Never jump the gun at admitting fault, you won't be able to take that back, law101.
What exactly do they claim you are infringing upon? A name? a logo? A function? None of this is very specific, and with law the specifics count.

Just off the top of my head, I would think they would approach BlackBerry first by default since their app store is where it is provided as opposed to contacting you directly. If your content was infringing their trademarks and ip they would naturally contact the direct provider first to have the offending content remove, since they would have the direct ability and access to do so immediately.
It wouldn't take too much research to check the validity of their claim and what limitations or recourse, if any, actually exist.

Just to clarify I'm not from Canada but I've studied law in SA

Posted via CB10 from my Z10

Hi MiSsY, thanks for the reply. I guess I forgot to mention that they did contact Blackberry first. Blackberry tried to reason with them and request that they not demand I stop selling my app. But after they had their discussions, BB was forced to forward the complaint on to me. So the initial complaint came to me through Blackberry.

As for what I am infringing on, they have a trademark on "Digta" and analog/digital dictation / voice recording hardware and software. I can provide the trademark numbers that they gave me if that will help you in offering any suggestions. Also, you can find them by googling GBS Holding GmbH.


In any case, I don't care about needing to change my app name or stop selling it. I haven't made much money off it and its not like my income is impacted. I'm just concerned with protecting my self from being sued or any other big legal consequences.

[middbrew]

If you haven't made very much money from the sale of the app, I really doubt you will get sued. It just isn't worth their time and money to go after you. If you have pulled the app and aren't selling it anymore they will most likely drop they pursuit after awhile.

[MobileMadness002]

Dood, none of us are lawyers and none of what we say should be taken as gospel. Get a lawyer, you say you cant afford one, can you afford not to get one is a better question.

Sent from my ME173X using CB Forums mobile app

[AnimalPak200]

If you haven't made very much money from the sale of the app, I really doubt you will get sued. It just isn't worth their time and money to go after you. If you have pulled the app and aren't selling it anymore they will most likely drop they pursuit after awhile.

Unfortunately the way trademarks work, they must be enforced (or at least be in record as actively trying to) against any infringement/dilution in order for it to remain valid.

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