Domain Names VS. Trademarks

19 May 2021

In today’s digitally connected world, having a great product is simply not enough. No matter how ground-breaking your idea, you’ll need a website if your business is going to succeed.

A website can be make or break, and every great website starts with a strong domain name.

A domain name is a marker of credibility. It’s the binary equivalent of a sign on your bricks and mortar store; it can increase brand awareness and separate you from your competitors. Just like your brand name, your domain name can have a huge impact on how you are perceived by your target audience.

Some brands aim to have their domain name match their brand name, for the obvious reason that it’s easily identifiable and memorable for the consumer. If the website can be discovered by simply typing the brand name and the relevant domain extension e.g. .com. or .co.uk, the hurdle of a search engine is removed. Others choose a domain name that describes their products, such as “electricappliances.com” – this approach seizes the competitive edge by capitalising on a descriptor that could be used industry-wide.

Either way, a great domain name should be simple, easy to remember and fool proof.

Now, let’s say you’ve decided to opt for the first approach. Having chosen a strong brand name and successfully registered it as a trademark, you might assume that your right to this mark extends to the internet – or more specifically, your domain name.

Unfortunately, the opposite is true. Being the owner of a registered trade mark does not automatically entitle you to use that mark as a domain name. That isn’t to say you won’t be able to register it as a domain name: it just depends on whether that domain is available to register.

So, what if you’ve chosen a descriptor as your domain name and don’t want any competitors attempting to register a similar name? Your first thought could be to register it as a trade mark. In most cases, that won’t be possible.

 

Domains and Trade Marks: what’s the difference?

Your domain name and your trade mark may consist of the same word or phrase, but they are entirely separate entities. A domain name is an internet address (e.g., www.360businesslaw.com); ownership of a domain can be acquired by purchasing it (if it is available) from domain name registrars. The domain name registrar regulates the use of the domain name.

A trade mark is a sign that is capable of distinguishing the goods or services of one brand from those of another. A trade mark may consist of words, designs, letters, numerals, colours, shapes, sounds or motions and any combination of such signs. You can obtain a trade mark by applying for one with your country’s Intellectual Property Office.

A domain name can be registered if it is not identical to a previously registered domain name. A trade mark, on the other hand, may not be registrable if it is similar enough to a previously registered trade mark.

When registering a domain name, a brand may choose to register a name that describes the characteristics of the goods or services they are selling. Doing so can help inform search engines of a brand’s relevance with a particular enquiry – for instance, ‘fastbikes.co.uk’ for a bicycle vendor.

However, the owner of fastbikes.co.uk would likely struggle to secure “fast bikes” as a trade mark in respect of bicycle sales as it would be considered descriptive and non-distinctive. Were a company selling something completely unrelated to bikes attempt to trademark “Fast bikes”, they may have more success, as such a mark would be unique in a different industry.

Another key difference is the duration of ownership. A domain name is valid for as long as the contracted period states: this is something that you will agree to when purchasing the domain name. Usually, you’ll be able to renew ownership of your domain name when the end of this contracted period approaches.

A trade mark, on the other hand, is valid for 10 years from the date of registration. It can be renewed in the 6 months prior to its expiry and for 6 months afterwards. If your trade mark expired over 6 months ago, a new application will need to be made with the UK IPO.

 

Can I trade mark a domain name?

While owning a domain name won’t automatically grant you the rights to a registered trade mark, you can trade mark a domain name to receive legal rights over the name in the country where the trade mark was granted. This will prevent others from using a similar domain and help you to boost visibility of your brand online.

In order to receive a trade mark for a domain name, it must be used as a trade mark. In other words, the domain name itself must function to identify the source of particular goods or services. For example, Amazon.com identifies the source as Amazon.com. However, if your brand name is Smith Jacobs & Lyle and your domain name is “sjl.com”, the “sjl” does not identify the source of the products – it’s just an address on the internet. Just like all trade mark applications, this comes back to distinctiveness: anyone else may use the letters ‘s’, ‘j’ and ‘l’ in that order, such as a firm by the name of Shaw, James & Lambert.  SJL says nothing to distinguish you or your goods/services from others.

On the other hand, ‘Sportsdirect.com’ is an example of a domain name that could be registered as a trade mark. Why? Well, not only does it identify the source of the goods it sells, but this domain name is more than just a URL address – it’s used across marketing and promotional materials, in both on and offline settings.

Securing the domain names that correspond to your trade marks is essential in protecting your brand. Similar domain names could cause confusion for potential customers searching for you or your services online. What’s more, a similar domain name can lessen the distinctiveness of your trade mark and, therefore, its enforceability. It would make sense to register similar domains (e.g. those with the same or similar name but different extension, those with variation in spelling, spacing and common typos) to prevent this from happening.

 

What happens if someone trademarks my domain name?

Usually, trademark holders are given the first opportunity to register their ‘trade marked’ names as domain names before they are open to the public. However, if your domain name is trademarked by someone else after you have registered the domain, and the trade mark holder seeks legal action to seize your domain name to correspond with their trade mark, that would be a strong argument in your favour that you didn’t do anything wrong.

Ultimately, it will depend on the unique circumstances and the nature of your business.

For example, if you owned a domain with ‘CandyAnimals’ in it, and another brand released a product called CandyAnimals and trademarked the term, they wouldn’t automatically own all uses of the phrase and have rights to the domain.

If your site has been selling sweet treats in the shape of animals long before the trade mark was registered, you’re in a good position. If it looks like you are trying to mislead people into thinking your domain is that company and demand the company pays you a fortune to hand it over, you won’t necessarily fare well in a legal dispute.

Of course, as with all intellectual property matters, it’s best to seek specialist advice from a trade mark lawyer with the expertise to help you navigate the situation and secure the best possible outcome.

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