European Union: The Importance Of Trade Marks When Choosing A Domain Name

Last Updated: 12 January 2018
Article by Deirdre Kilroy

If you're building an online branding strategy, you need to think about trade marks. Our partner Deirdre Kilroy has the essential checklist for securing your online brand.

Choosing a good brand for a website is not easy. It can be a challenge to get the domain name that you want. Once you find an available domain name that you like, it can be tempting to start using it immediately. However, it is worth spending the effort and time to find a good name that is protectable, and in which you can build real value.

At Matheson, we recommend that every online company thinks long and hard about its online brands and reviews its online branding strategy periodically. Take the time required to select a protectable brand.

People often assume that once they have registered a domain name that they are free to use the name however they want exclusively. Not so. The only way to be sure that you have exclusive rights to a brand name is to obtain a trade mark registration for the goods and services that you use the website to commercialise. This can be quite an important point for someone setting up an online presence, as the domain name will become an important primary or secondary brand for the business transacted.

Often, quite a lot of money is spent informing customers and potential customers about where to find a business online. Brand value online is built through careful selection, advertising, public relations, SEO and an attractive and functional website. It makes sense to protect that investment by ensuring that you have a registered trade mark for the domain name, or relevant parts of it. Securing a trade mark will help you prevent cybersquatting (also known as domain squatting). Cybersquatting is a practice where someone registers a domain name that is the same or similar to that of a legitimate business or registered trade mark, in an attempt to trick people, or to redirect traffic away from the legitimate website to another website.

Prior to using a new domain name, it also is advisable to ensure that no other business has secured a trade mark for the domain name that is the same or confusingly similar to the one you want to use. If you begin trading online using a brand that is the same or confusingly similar to a registered trade mark in the same industry, you may find yourself at the end of a costly infringement action.

A registered trade mark gives an owner exclusive rights to use the trade mark in connection with classes of goods or services in the jurisdiction in which it is registered. In most countries, there are 45 classes of goods and services in which you can register trade marks. To get protection and value for your online business, register a trade mark in the class or classes in which you trade or intend to trade in the future. A registered trade mark owner has legal rights to prevent others using the trade mark for those classes of goods or services without its consent, and to be compensated for unauthorised use. Registering your trade marks is highly recommended because registration enables a mark owner to take full advantage of the IP protections that law provides to online businesses.

When using a trade mark online, it is important to think about how geographically broad the online audience will be. Think about whether your trade mark is legally protected in all of the principal jurisdictions that you trade in using the website.  You can apply for trade marks on a country-by-country basis under national law; and, in the EU, you can apply for a European Union trade mark (EUTM), which covers all EU member states.

When you have registered a national trade mark or an EUTM, you can use that trade mark registration as a basis to apply for trade mark registrations in more than 90 countries by making a single application to the World Intellectual Property Organisation, designating the countries in which you intend to use your trade mark.

Checklist for securing your online brand

1. Choose a strong brand

To choose a strong brand that is protectable, it must be inherently distinctive. Avoid descriptiveness and do not pick a brand that primarily describes (as opposed to suggests) your offering.

2. Own your domain

Check the domain name is available in the top-level domain name registry or registries most relevant to your business.

3. Conduct a thorough search

Carry out trade mark clearance searches to make sure the mark that you want to use in your domain name can be used in connection with your specific business, and that it is available to you to register as a trade mark for your business in each of your principal markets. At Matheson, we pre-screen potential new trade marks with a full search service that includes 'knock-out' searches. A knock-out search quickly identifies marks that are obviously unavailable and should be avoided.

4. Search for similarities

There may also be unregistered trade marks identical or similar to the one that you want to use, and these unregistered rights could affect your rights to use the trade mark. Carry out 'common law' searches to see if any such issues exist.

5. Get social

For some businesses, securing a name on a social media platform such as Twitter, Facebook and LinkedIn can be important. Carry out searches to see what is already on the platform that you are interested in and familiarise yourself with the platform rules.

Originally published in Silicon Republic on 11 January 2018.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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