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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Mason Hayes & Curran
Mason Hayes & Curran
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Mason Hayes & Curran
Mason Hayes & Curran
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions