A $160M-funded company named Deepki (Trademark 1751952) came along and filed for cancellation at EUIPO since they needed the trademark now after getting lots of funding. They won. Now my trademark is gone.
The frustrating part? The EU actually does allow open-source (even free projects) to have trademarks, but you have to prove "genuine use" in the EU for the goods/services your trademark covers. Which seems to force you in collecting user sensitive data otherwise you are entirely unable to prove that you have actual users in the EU. I generally try to collect as little information as possible (also because I don't care where my users are coming from). I had google analytics running for some time on the main page (not documentation), but most of the time it didn't work and it seems most of my users block it anyway.
Here's what I gave the EUIPO and why they said no:
- Google Analytics for my site with a full country breakdown from 2018–2023. A few hundred to ~1,800 EU visitors per year per country. They said that’s "too small" to count as real commercial exploitation for my Class 9 software. Also, they said they couldn’t tell which goods those visits were actually for.
- npmjs + GitHub stats - hundreds of thousands of downloads and thousands of stars. Rejected because there's no location data, so they couldn't confirm if the usage was in the EU. In some cases, they said the timeframes weren't even clear.
- They basically kept repeating that they couldn't clearly link any of the usage to the specific goods/services my trademark was registered for.
The conclusion:
>Conclusion: It follows from the above that the EUTM proprietor has not proven genuine use of the contested mark for any of the goods and services for which it is registered. As a result, the application for revocation is wholly successful and the contested European Union trade mark must be revoked in its entirety. According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 18/03/2024.
>COSTS: According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear fees and costs incurred by the other party.
They even admitted there's no strict minimum for usage, and free software can count, but in their eyes my EU traffic was too low and not clearly tied to the trademarked goods.
I also have the US trademark for the name. This same company tried to register in the US around 2022 (Trademark #79379273) and got blocked because it was too similar (decision made by USPTO). But a few months ago they somehow got it registered there too (Trademark #7789522), not sure how they did that now.
Now I'm sitting here wondering:
- Is it even worth getting a second opinion and appealing in the EU? I mean the project is very small.
- Should I fight the US registration?
- Or should I just walk away from trademarks altogether for my open-source projects. I lost so much money because of this already.
- And for OSS projects in general, is there even a practical, privacy-friendly way to prove EU usage without generating revenue?
- Is it even worth holding the trademark if proving EU usage is this brittle for OSS? If the trademark can be deleted just like that even after spending a few thousands dollars on lawyers. Probably a skill issue, but still, damn.
It sucks to lose the name I've been building for years to a corporation with $160M behind them, especially when this is just a side project I do in my spare time, and to them I'm a nobody. If nothing else, maybe my case can be a cautionary tale for other OSS maintainers.
>Deepki holds the label BCorp certification, thereby strengthening its commitment towards its communities and stakeholders.
https://www.bcorporation.net/en-us/standards/complaints/
>B Lab will investigate material, credible, and specific claims against a current B Corp in one of the two following categories:
> 2. Breaches of the B Corp Community's core values as expressed in our Declaration of Interdependence.
https://www.bcorporation.net/en-us/certification/
>B CORP DECLARATION OF INTERDEPENDENCE
>As Certified B Corporations and leaders of this emerging economy, we believe:
> That we must be the change we seek in the world.
> That all business ought to be conducted as if people and place mattered.
> That, through their products, practices, and profits, businesses should aspire to do no harm and benefit all.
> To do so requires that we act with the understanding that we are each dependent upon another and thus responsible for each other and future generations.
If it's worth it. OP needs to decide.
But what I see here in France is mostly young companies getting certified as a proof of them being built better than the big ones that they are competing with
For instance, most of the new IT consultancoies are B Corp certified and promote it a lot, even though they work for the same customers as the big old ones
So now there are companies that are getting rid of their B Corp cert because they say it lost its meaning and being BCC is getting more and more a sign of being a bad company doing virtue signaling
Overall I think that business certifications can't work above a certain scale, because then they become just a hoop that needs to be addressed and not an actual engagement leading every business decisions.
They seem to be very busy. It seems showing that your corporation accompanies positive social impact, fairness, and responsibility is in high demand.
> Thank you for reaching out and for you interest in the B Corp Movement! Despite our high ambition for an inclusive, equitable and regenerative economic system for all people and the planet; we are still a small team. So kindly allow us to come back to you within 2-3 weeks
> Due to a high level of inquiries recently, it may take us longer than usual to respond to your message. We will answer questions in the order received. Response times may be up to 2 weeks.
Life is too short for lawsuits.
This comes from someone who dated someone for three years who was in a lawsuit when I got to know them, and was still in a lawsuit when we split. It affected them daily, hundreds and hundreds of hours were lost, thousands and thousands of dollars went to a nice, well-intended family lawyer.
But the best advice they could have got:
When given the chance, walk away.
Life is too short for lawsuits.
If you’re up against a behemoth, figure out how to get out ASAP.
But I’ve learned that small claims lawsuits can actually be quite fun! Earlier this year I sued a former landlord in small claims court. He had entered my rented space while I was away (without notice, multiple times) and then refused to return my security deposit when I moved out.
I went into it with a “let’s have fun and learn” attitude. I had never sued someone and I’d never represented myself in court. I read a lot, had some good conversations with LLMs (and then fact-checked them!) about the laws and case history in my area, then filed my suit.
After he dodged the summons three times, I discovered I could file a motion for alternative service (post on his front door, post in a newspaper, etc). When I went to court to argue for that motion, he actually showed up in court! So I asked the judge if he could be served right there, and he was!
Our trial was highly entertaining, I caught him in a bald-faced lie, then looked at the judge and said I’m not sure how both of these things he said could be true, I can’t figure out how it adds up but maybe you can.
I won the case, the judge awarded me less than I was asking for, but more than I was actually owed.
I was kinda hoping he would not pay (that’s common) in which case I was looking forward to learning about how to garnish his wages or put a lien on his property. But he’s actually paying me in monthly installments for the next very many months. He could pay me all at once so he’s being a bit of a jerk, but at least he’s paying.
All-in-all, I knew I had a solid case, had fun along the way, and didn’t spend more than a few bucks on court fees. In that specific context, it made sense for me and I’m happy I did it.
> So I made my landlord pay me rent, with the help of some LLMs....
If he has assets to his name and the action was against him, I don’t see him doing that. In most countries you can hire private recovery, so the process will be very fast to collect.
I'm happy it worked out for you, and that you had fun doing it. I could imagine going your route.
But for most people, sifting through legal papers and preparing for court is neither enjoyable nor affordable.
I don't know if I agree that that is correct every single time, but it strikes me as a very useful heuristic at the least.
Danny DeVito
My wife is a lawyer so I collect amusing statements about them ;-)
Even seemingly simple issues can turn into never ending money pits that consume thousands of hours of your life spread over months or years.
If you’re really committed to something then you should evaluate how much time and money you’re willing to put into pursuing it. Unless both of those values are uncomfortably high numbers, just move on.
We're already all dead in geologic time. Make the biggest ripples in the pond.
Attachment is discontent.
This whole thread is a question for a lawyer.
But for real...just change the name of your project. It sucks, but the ruling was handed down, you lost the dispute.
Nobody's going to mind that the name changed. Firefox used to be called Firebird and changed due to trademark disputes. Dozens of open source projects have changed their names when they forked off of a corporate project, like LibreOffice and MariaDB.
I know that OP may be fond of the name but it's just a name.
It was first called Phoenix, then a trademark dispute forced them to rebrand to Firebird, then a trademark dispute forced them off that name too. Firefox was the third public name for that project. I'm surprised they didn't also get sued by Clint Eastwood[1] and have to change again.
[1] https://en.wikipedia.org/wiki/Firefox_(film)
I think we're just trying to keep busy on this lonely planet amist all these stars.
At the end, the only thing that ever matters is the good we tried to do and the love we shared between ourselves and strangers.
You may get more attention this way, because it can affect the company more than the optics of a legal dispute. It’s not revenge, and you shouldn’t have that intent, if you want it to work.
However this method, and other similar methods used in the U.S. such as filing BBB complaints, are mostly used for harm done to consumers rather than businesses affected by disputes, so it may not be the best advice.
Ironically this HN post will probably be higher in search results for their name.
OP it looks like the company is French -- maybe try contacting their local elected representative? Open by stating you are not a constituent, but worried about the impact to their district if the dispute is not handled well.
In parallel, reach out to a local library in Paris and state that you're looking for pro-bono trademark law assistance.
I used to work in public policy, and you'd be surprised how one or both of these methods can yield results.
Sounds like it was maybe about custody for children?
Then it is hard to walk away, I think. What to do, if the other party does not cooperate and you still want to see your children?
Best advice for both sides still is obviously, avoid the need for lawyers in the first place and maintain basic level of communication.
Besides money and hours, it will also affect your psychological wellbeing as it will dominate your mind every day.
Not worth it.
We met her ex once randomly on the street, and the first thing he asked was if she was still in her lawsuit.
Since the other part in the lawsuit lived in another part of the same house, you became paranoid about whether they would hear what you said through the walls, and you would be made painfully aware of the conflict every morning on the way to work.
It felt like a curse.
I would never wish for anyone to end up in a lawsuit.
This is the best advice you can get.
https://www.youtube.com/watch?v=Y5XfYTgm4x8 (that’s only part of a longer scene, where he basically tells the guy not to proceed).
And then the loser may request a next level court to consider the case, potentially leading to more stressful years and a lot of additional financial risk.
Dead Comment
See if you can "shop" around (start local) to see who's interested in publishing a story something along the lines of "The EU has declared war on small businesses. I'm being forced to pay thousands of euros because a brand-new company decided they wanted to steal my years-old project name."
Bad publicity is still publicity.
Dead Comment
More generally: don't treat the lack of registered mark as something you need to act on. You were doing your thing just fine without a registered trademark in the other ~180 countries. Just keep doing what you're doing.
Fighting it will be painful, expensive, stressful and unrewarding. But that doesn't mean you need to go change your name.
Tbh...use should already be satisfied by having a Github or website and using the registered name.
Keep us posted.
A lot of posts on HN are about things that should have happened already. Every few days there is a story about a person doing something pretty boring and standard, but they can't because a payment processor or large regulatory body got involved and the computer went "boop boop" and now someone can't have money or continue to invent things. Sorry, pull the slot machine again and see if you get lucky?
are they actually pursuing use of "Deepkit" or possibly did you just piss them off? Either way, I wouldn't expect to win anything going up these majors. Also, isn't clear there's any tangible benefit even if you were to win appeal.
It's a bit disturbing that that doesn't appear to be true any more.
I don't know why you decided to trademark your project name, but I think the biggest issue here is that trademark law is naturally the domain of IP rightsholders and an outlook that presumes and enforces scarcity when it comes to names, name spaces, and digital content.
There aren't that many reasons why FLOSS projects need to work within that same domain. My thought is that it is better to try and defend the environment of a digital commons that exists outside of them, than to enter into it and try to participate in a quite alien system of existing IP law, which has a lot of presumptions and standards that, as you say, don't really match the world you work within.
I decided to protect the name because I liked it and wanted to build upon it in the future. Be it OSS, or further commercial offerings.
I hoped to get also protection against corporations that just try to register the name or very similar ones and then decided to get me deleted or sue me for infringements.
In EU it's first to file principle, which means whoever holds the mark, has the right. This means if I would not have registered it, the company could just register "Deepkit" or "Deepki" and sue me to death. Now that I lost the trademark (not totally final, I can appeal), I risk getting sued for having a too similar name - which is exactly what I tried to avoid by having a registered trademark.
Did I make some mistakes with appealing and not collecting enough user data? Likely. Was it too naive from me? Yes. But I think reasonable and the whole idea behind trademarks is to protect projects like this. I could be wrong though, am not an expert.
Or .. maybe you could sell it to them or use it as a lever to get the EU one.
https://deno.com/blog?tag=freejavascript
You will be asked to prove you have marks to do things like be listed in the app store. You need to prove your identity with third party legal companies that look into your company and the marks you are using. If you don't own those marks you probably won't get your app published.
Many examples come to mind, but basically anytime a FOSS app goes into the app stores, like KDE. In the past we mostly argued about who should be the person that has to act as the app owner etc. or created foundations or other legal entities to bridge this gap.
Look at elementaryOS as well. They attempted to assert rights to marks they don't own and it created a fiasco for them. They are virtually irrelevant now in the Linux space. All of the developers left the project besides one who is struggling with mental illness.
tldr; Burger King had to rebrand when they expanded into Australia because there was already a Burger King restaurant here. They're still called Hungry Jacks here.
I think that it might be a good idea to flagpole an OSS trademark just in case some bozos come and spoil the fun
https://deno.com/blog/deno-v-oracle3
Deleted Comment
On a different note, a quick cursory glance of this company really makes me wonder who even gave them $160M? The company site is soulless and filled with corporate jargon, and the whole company smells of bloat and leadership team is a long list of people in bullshit jobs. Is this where VC money goes these days? I am dumbfounded by the degree of mismatch between capital and utility
Another notable investor is a french public entity (bpifrance) which might very well have similar reasons but on the country level, having to allocate funds to "AI" to demonstrate France leading role in future technology.
Note that this doesn't mean Deepski and it's leadership can't be great - but the thought experiment of some well networked people noticing they could all benefit over a glass of wine also doesn't seem too far off.
Edit: Maybe there's an angle for someone really serious about this FOSS dilemma here, I hear public entities really hate bad PR - maybe ask bpifrance how they feel about this?
That's often a sign of money laundering