The applicant has the rights to a national figurative trademark SILENCE [fig.], he uses the word “silence” in numerous famous events (“SILENCE NIGHT”, “SILENCE CIRCUS”, “SILENCE DISCO”, “SILENCE B-DAY”), the applicant is a host of the radio show “SILENCE RADIO”, founder of the company “SILENCE FAMILY”, which is the owner of the domain name silencefamily.com and the website www.silencefamily.com.
A defendant is a famous music producer, who uses a sub-domain name www.silenceagancy.com. Considering the possible likelihood of confusion and notoriety of the parties in the pop music industry, the claimant filed a lawsuit against the defendant asking to terminate the usage of www.silenceagancy.com.
The courts of all the three instances have reached the same conclusion that, considering apparent “weakness” of the element “SILENCE”, there are no grounds to state an infringement of intellectual property rights of the owner. Moreover, according to the Court of Appeal unregistered marks (“SILENCE NIGHT”, “SILENCE CIRCUS”, “SILENCE DISCO”, “SILENCE B-DAY”) do not form a “family” of trademarks because all the trademarks in the “family” have to be registered. The Supreme Court added that there is no likelihood of confusion between the trademark and the sub-domain name, the trademark SILENCE [fig.] cannot be considered as well known, there is no evidence of bad faith of the defendant in using the website www.silenceagancy.com.