Article - Trade Marks Versus Domain Names

Trade Marks versus Domain Names

In the last issue of e-briefing we explored the nature of domain names and their importance to a business’ branding strategy. Whilst domain names do form an important part of any branding strategy, their value is arguably small in comparison with the importance of trade marks. Trade marks are the “senior” form of protection and will be explored in this article.

So what are trade marks?

Trade marks are signs which are used to distinguish goods and services from one business from those of another. There are two forms of trade marks, the registered and the unregistered, the former providing better protection in the sense that it more easily enforceable against third party infringement. This article will be limited to registered trade marks only. Registered marks may use the ® symbol. However, only the ™ symbol may be
used in respect of unregistered trade marks.

A traditional trade mark may consists of any one or more of the following: characters, numbers, symbols, words, logos, and pictures, as well as less usually colours, sounds and smells. Examples of these less normal types of trade marks include the “green” registered by British Petroleum, Direct Lines’s “jingle” which is used in their television advertisements and Chanel’s “Chanel No. 5” smell.

In order to obtain a registered UK trade mark, the trade mark must comply with the following criteria:

• it must be distinctive (i.e. it most not be descriptive of the goods and/or services it covers); and
• no prior identical or similar trade mark covering same or similar goods and/or services exist; and
• is not deceptive, or contrary to law or morality.

If you are successful in registering a trade mark, you are a granted a 10 year monopoly right in respect of that trade mark. An advantage of registered trade marks is that they may be renewed indefinitely at 10 year intervals, provided you continue to use the trade mark. One of the most well known and oldest registered trade marks in the UK is the red ‘Bass Triangle’, which was originally registered in 1875 and is still going strong!

You should note that trade mark protection is a national right and therefore a valid trade mark registration is only enforceable in the country in which it has been obtained. This needs to be borne in mind particularly by businesses who trade on the net as the global nature of the Internet could result in third party infringements. However, this is a topic on its own and will be explored in a future e-briefing issue.

Why is a trade mark a “senior” right over domain name

Once a trade mark is registered a registration certificate is received from the UK Patent Office and this is deemed prima facie evidence that the owner mentioned on the certificate is the rightful owner of the mark. Whilst a valid trade mark registration may be challenged for various reasons, it is rather difficult to do.

Domain names on the other hand, although likened to trade marks are quite different in nature, in that they can be challenged quite easily under the Nominet UK Limited’s (“Nominet”) or The Internet Corporation for Assigned Names and Numbers’ (“ICANN”) uniform domain name disputes by trade mark proprietors. Nominet governs the registration of all “.uk” domain names whereas ICANN controls all generic top level domain names (for example, .com; .net.; .org; .gov; .aero etc.).

Well established case law shows that where trade/service mark owners are able to prove:

• that they own a registered trade mark or service mark and that the domain name in question is identical or confusingly similar to the trade mark (covering goods) or service mark (covering services); and
• the domain name registrant has no rights or legitimate interests in respect of the domain name; and
• the domain name has been registered and is being used in bad faith

the domain name will be cancelled, suspended or transferred to the trade mark owner, depending on what was requested.

In light of the above, owners of registered trade marks clearly have a head start over persons who own an unregistered trade mark and/or domain name because it is automatically assumed that the owner of the registered trade mark is the rightful owner of the mark.

Accordingly, a good trade mark is a vital element of any branding strategy. We have extensive experience in advising clients on their branding strategy and are able to register trade marks in-house. Should you have any questions, do please feel free to contact us.

Useful links

Nominet UK Limited : www.nominet.net
ICANN: www.icann.org
UK Patent Office: www.patent.gov.uk

Published 27/09/2005.