A small open source project's trademark was revoked by a venture that raised over 25 billion yen
A post on the social news site Hacker News lamented that the trademark owned by the small open source project
VC-backed company just killed my EU trademark for a small OSS project | Hacker News
https://news.ycombinator.com/item?id=44883634
$160M VC-backed company just killed my EU trademark for a small OSS project. Is it even worth fighting? : r/ExperiencedDevs
https://www.reddit.com/r/ExperiencedDevs/comments/1mopzhz/160m_vcbacked_company_just_killed_my_eu_trademark/
Deepkit is a modular framework for TypeScript backend web applications founded in Hamburg, Germany in 2018 by engineer and entrepreneur Mark J. Schmidt.
Libraries // Deepkit Enterprise TypeScript Framework
https://deepkit.io/
Although it is a small open source project, Schmidt felt it was something worth protecting, so he registered the trademark in the EU and the US.
One company that emerged was Deepki, a Paris-based company that provides an ESG data intelligence platform for the real estate industry. Deepki successfully raised 150 million euros in a Series C round in 2022.
ESG DATA INTELLIGENCE FIRM, DEEPKI, RAISES €150 MILLION TO HELP REAL ESTATE SECTOR REDUCE ITS ENVIRONMENTAL IMPACT AND COMBAT CLIMATE CHANGE
https://www.prnewswire.com/news-releases/esg-data-intelligence-firm-deepki-raises-150-million-to-help-real-estate-sector-reduce-its-environmental-impact-and-combat-climate-change-301513553.html
According to Schmidt, Deepki, which needed a trademark after raising funds, applied to the European Union Intellectual Property Office (EUIPO) to cancel the 'Deepkit' trademark.
The EUIPO allows open source projects to obtain trademarks, but Schmidt said they must prove 'genuine use' of the trademark within the EU. While web services cannot prove their use within the EU without collecting user data, Schmidt said he tries to minimize the amount of information collected. He also said that Google Analytics, which he had temporarily enabled on his main page, was blocked by many users and barely functioned at all.
For this reason, the EUIPO determined that statistical data from 2018 to 2023 showed that only around 1,800 users were from the EU among those who visited the Deepkit website, and that this did not qualify as actual commercial use within the EU. Furthermore, the statistical data for npmjs + GitHub, which includes hundreds of thousands of downloads and thousands of stars, was rejected on the grounds that the lack of location data meant that EU use could not be confirmed. According to Schmidt, the EUIPO has argued that 'the registered trademark 'Deepkit' cannot be clearly linked to the use of the service.'
Deepki's application was granted, and Schmidt's Deepkit trademark was revoked retroactively to March 18, 2024, the date of the application for trademark revocation. Schmidt lost the revocation proceedings and was required to pay the costs incurred by the opposing party.
Deepki also sought to register a trademark in the United States, but its application in 2022 was rejected by the USPTO (United States Patent and Trademark Office) for being 'excessively similar.' However, it resubmitted the application in 2025 and was successfully registered. It is unclear why the application was rejected.
In this situation, Schmidt has the following advice for other users:
Should I get a second opinion and then file an appeal in the EU? Deepkit is a very small project.
Should I file an opposition to Deepki's trademark registration in the United States?
Or should we abandon the Deepkit trademark altogether? We have already suffered huge losses in this matter.
For open source projects in general, is there a practical, privacy-conscious way to demonstrate use in the EU without generating revenue?
If the EU proof of use is so weak, is it even worth maintaining the trademark, when it could easily be revoked, even if it costs thousands of dollars to hire a lawyer?
Hacker News has commented that ' Just operating GitHub and a website and using a registered name should meet the requirement of 'using a trademark' ' and ' Even if the trademark in the EU has been revoked, Schmidt was the one who used it first, and Deepki has obtained the necessary trademark and is unlikely to take any further action, so the name should not be changed, ' but also called for avoiding the problem, saying, ' Life is too short to waste it on litigation .'
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in Note, Posted by logc_nt