There is a common misconception that owning a company name means that you have automatic rights to the same domain name. This is not the case, and each Registry operates on a 'first-come first-served' basis. It is only by owning a registered trade mark for the same or a similar name and/or first using the name in commerce for your goods and services, that will provide a business with legal rights to challenge a registered company or domain name.
Contents:
- What are the benefits of registering a trade mark for a domain name?
- What are the requirements to trade mark a domain name?
- What steps do I need to take to trade mark a domain name?
- If the trade mark application is refused what are your options?
- How much does it cost to trade mark a domain name?
- How long does it take to register a trade mark for a domain name?
- If I can't trade mark a domain name, what are other ways I can protect it?
- Summary
What are the benefits of registering a trade mark for a domain name?
Sometimes it may be better to register your domain name as a trade mark, instead of a logo or corporate name. For example, if your corporate name is descriptive or in common use and will only be used for company matters rather than as the name of your actual goods or services, or if you will have several different names for your different product lines that are different to the corporate name.
If your domain name is particularly important and valuable and the business is heavily reliant on the website to generate revenue, registering the domain name as a trade mark can help prevent competitors and cybercriminals from using a confusingly similar domain name to try to profit from your business’s success and reputation.
What are the requirements to trade mark a domain name?
There are few requirements for registering a domain name, other than that the exact domain is not already registered and that you meet certain requirements as to length and permitted characters.
Registration of a trade mark is more complicated and there are certain legal requirements that must be met by the name in question.
In order to register a domain name as a trade mark, it needs to be distinctive. This means that it must be capable of distinguishing your goods and services from those of other businesses and must not be purely descriptive or generic with respect to those goods and services. For example, a trade mark for 'garagedoors.co.uk' would not be acceptable but the domain 'jkkgaradedoors.co.uk' may be. The domain name suffix is not, in itself, considered to be distinctive for trade mark registration purposes so simply adding .com or .store e.t.c. to an otherwise descriptive or generic term would not render that domain name registrable. If the combination of otherwise descriptive or generic words together is unusual, adding a domain suffix could assist in just rendering the trade mark acceptable for registration. An example is the domain 'softandgentle.com' which may just be acceptable, whereas the words 'Soft and Gentle' alone may not be.
If your domain name is not distinctive enough to be registered as a trade mark, the Registry will refuse the registration application.
Another requirement for a domain name to be registrable as a trade mark is that it is not identical or confusingly similar to another registered mark. This can include trade marks that are spelt differently but sound similar. The Examiner will write to the owners of prior registered trade marks that he or she considers to be identical or confusingly similar to inform them of your application so that they may ‘oppose it’.
Having trade mark clearance searches conducted by a legal advisor is recommended before you submit your application, to check that your domain name is available to use and register as a trade mark. These are checks of the Trade Marks Registry that identify any prior applications and registered marks that are identical or similar to your domain name and cover the same or similar goods and services. Once identified, your legal advisor can help you ascertain what risk such prior marks present in practice to the registration and use of your mark. For example, if a registered mark is over five years’ old and does not appear to have ever been used in commerce, the risk of receiving an opposition based on this mark may be low.
You should also check whether your chosen domain name is available on important social media sites that you will want to use for advertising and marketing purposes. A web search is also recommended as a third party may be using a similar domain name or trade mark in commerce but not have registered it as a trade mark yet.
What steps do I need to take to trade mark a domain name?
You should apply to register your domain name as a trade mark as soon as you have secured the domain name registration and ideally, before you start to trade under the name. This is because your trade mark application will take priority over applications for similar marks that are filed subsequently and will also give you sufficient time to re-brand if your trade mark registration application is unsuccessful.
If you only intend to use your domain name for a short term marketing campaign or short term product line, it is still worth registering it as a trade mark if you intend to use it for a year or more or if the expected revenue from the campaign would justify the cost of the registration application.
You may also want to register common spelling variations of your chosen name. This is not essential but can help strengthen any action that you may need to take against cybersquatters or fake websites that are created to try to create confusion amongst consumers. The Trade Marks registry allows the filing of a 'series applications' to include up to six marks in a single application, provided that those marks only differ in minor ways that do not affect the overall distinctiveness of the trade mark as a whole.
A domain name application is filed in the same way as any other trade mark application by filing a form at the UK Intellectual Property Office along with the registration fee. You should consider whether you want the domain name suffix to form part of the mark itself. This is only necessary when the words in the mark may otherwise be refused on their own as too descriptive or not distinctive enough, e.g. in the 'Soft and Gentle' example given above.
The Examination and registration process for a domain name is the same as that for any other trade mark. The mark itself will be examined to see if it meets the legal requirements and the Examiner will then issue an Examination Report, detailing any objections which need to be overcome. The mark will then be 'advertised' in the Trade Marks Journal for two months’, during which time a third party may file a threatened opposition notice or actual opposition against it if they believe it is too similar to their prior registered or unregistered trade mark. The filing of a threatened opposition notice during this period automatically extends the opposition period by a further month. If no opposition is received, the mark will be registered a month or two after the end of the opposition period. If an opposition is received, this will need to be dealt with and overcome before the mark will proceed to registration.
Even though domain names can be global in nature, this does not mean that a registered trade mark for a domain name gives you global protection for that name. This is because trade marks are territorial in nature and registration of a trade mark in one country does not mean that it will be enforceable or registrable in another. If your web site is intended to be used internationally, it is recommended that you apply to register the domain name as a trade mark in all those countries that are key to your business.
If the trade mark application is refused what are your options?
Your trade mark registration application could be refused for a number of reasons, some of which may be more serious than others. For example, if the Examiner objects to your application because the mark is descriptive in relation to some of the goods and services, you could opt to remove those items and continue with the application for the remaining goods and services. Or, if a third party opposes your trade mark application, you may be able to negotiate a compromise with the opposing party, such as filing a limitation to your goods and services or entering into a coexistence agreement with them to only use your mark in certain ways.
Sometimes an objection or opposition cannot be overcome and you may be required to abandon your trade mark registration application. This does not automatically mean that you cannot continue to use the domain name for your business although if a third party is already using a similar domain name or trade mark, it may be wise to re-brand in order to avoid an 'infringement' or 'passing off' action being brought against you in the courts.
How much does it cost to trade mark a domain name?
The Registry fee for registering a trade mark in the UK is £170 if the application is filed online plus a further £50 for each additional 'Class' of goods and services included in the application.
This is very rarely all the fees that will be incurred as in practice, few registration applications are completely straightforward and do not require legal advice or additional cost to overcome objections and/or oppositions during the application process. The benefit of clearance searches has already been explained. Although such searches may cost a few hundred pounds, they are usually worth it as an opposition from a third party can result in legal fees and possibly a costs award, far exceeding this amount. Worse still, if you commence use of the mark and an 'infringement' or 'passing off' action is filed against your business in the courts, the resulting legal costs and damages could damage your business.
If the Examiner raises an objection to your mark on grounds that it does not satisfy the legal requirements, you may need legal advice to help you overcome the objection, incurring additional fees.
A contingency fee should also be budgeted for in case an objection or opposition cannot be overcome and you are forced to re-apply for a different trade mark.
Taking legal advice at the start of the process is a worthy investment to help ensure that you get the application right and do not waste your hard-earned funds on an application that is doomed to failure or results in far greater losses than you ever envisaged.
How long does it take to register a trade mark for a domain name?
UK trade mark applications generally take around six to eight months’ to register if all goes smoothly. More often than not, this period is extended by objections from the Examiner which will need to be overcome and/or oppositions that are filed against your application, which can take over a year to reach a decision. Conducting clearance searches before you apply can help to reduce the risk of opposition however, you should leave as much time as possible from applying to register your trade mark before launching your website/commencing business under the mark. This can save significant costs if your application ultimately fails and you are obliged to re-brand.
If I can't trade mark a domain name, what are other ways I can protect it?
If your domain name cannot be registered as a trade mark, you can gain some additional protection by taking the following action:
- You could register as many variations of the domain name as possible, for example with different domain name suffixes and different spellings. This can help prevent competitors or cybersquatters from registering similar domains to try to cause confusion amongst consumers and profit from your business’s reputation;
- You could consider purchasing similar domain names from third parties if they are already taken;
- You should regularly monitor the domain name registries and the internet to check whether any confusingly similar domain names have been registered and are being used in respect of similar goods or services. If so, and you have been trading under your domain name before the new registrant, you may be able to take action based on your unregistered trade mark rights and send them a 'cease and desist letter';
- Specialist software is available to assist in identifying and taking action against fake websites and cyber crime. This may be a worthy investment if your domain name and website are particularly valuable to your business;
- You could also consider using a trading name for your goods and services that is different to your domain name, that can be registered as a trade mark.
Summary
Many businesses rely heavily on their web site as their main revenue generator but do not realise that additional action may be necessary to protect it. Ideally, you will be able to register your domain name as a trade mark so that you can take legal action and file 'takedown notices' against third parties that seek to use confusingly similar domain names and trading names to exploit and unfairly benefit from your goodwill and reputation. This may require additional thought at the beginning of the process, to ensure that you select a domain name that not only fulfils your marketing and branding requirements but also can be registered as a trade mark. Initial consultation with a trade mark lawyer is recommended and can make the difference between securing a valuable IP right that can be protected, enforced and exploited to its utmost potential and incurring wasted cost and time if your chosen domain name proves to be unenforceable.
