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Table of Contents:
1. Introduction
2. Trademark Protection
2.1 Domestic and Foreign Trademarks
2.2 Selection of the Trademark Name
2.3 Trademark Search
2.4 Trademark Registration
3. Domain Name Protection
3.1 Types of Domains
3.2 Selection of the Domain
3.3 Domain and Trademark Search
3.4 Domain Registration
4. Interdependence of Trademark and Domain Registration
5. Check List: International Protection of Trademarks and Domain
Names
1. Introduction
The evaluation of an enterprise or a trade or service mark depends to a crucial
extent on it's Internet Website. The corporate site is an indispensable
prerequisite for a modern enterprise or trademark image. This applies
independently of the possibility and the importance of e-commerce-activities,
since also enterprises without actual or potential possibility for online
sales are judged on the basis of their website. The registration of the company
(www.yourcompany.de) or product name (www.yourproduct.de) as a domain name
facilitates not only the accessibility of the website and thus promotes public
relations and customer relations by preventing the necessity of using search
services to find the corporate website, but also promotes a trend-setting
enterprise image.
In Germany as in many other countries there is no requirement that an entity
(a person or company) actually be using or even intend to use a company or
product name in order to be able to register that trademark or domain in
the entity`s name as „owner" of the trademark. There is no requirement
that a domain name mirror the name of the applicant, nor even that it be
a word. Trademark registration ownership in most countries is normally granted
to the first entity who files for registration in that country, without regard
to actual use of the mark („first come first served"). Not only
for this reason it is recommendable to file trademark and domain registration
applications as early as possible in order to protect trademarks and trade
names. This applies both to markets in which the enterprise is already active
and to those markets where a market entrance is intended or is considered
possible. By an early registration one can prevent that the trademark and
trade name for these and other markets is irreparably lost, or avoid
substantially higher costs for the acquisition of the trademark or trade
name from the then-entered owner at a later point of time. Beyond that, the
registration and use of a further Internet Domain can produce additional
traffic on the own Website.
In many countries domestic top level domains exceed the importance of
international top level domains (dot.com, dot.net., dot.org) by far. In Germany
this can be seen by the fact that in early 2001 more than 4 million domestic
domains (dot.de) were already registered. For this reason an early protection
of national domains is urgently required abroad. In some countries the
use of a dot.com domain maybe sufficient - in non-English-speaking countries
one gets access to a substantial part of the potential customers only by
using the Top Level Domain of the respective country (e.g. dot.fr for France
and dot.it for Italy). Not only due to language differences, but also with
regard to the goods and services supplied in the respective country potential
customers prefer direct access to the domestic subsidiary, branch or distributor
which they expect to find rather on the website with the respective domestic
Top Level Domain (dot.de, dot.fr etc.) than on the general corporate site
(dot.com).
2. Trademark Protection
The registration of a trademark grants protection from unauthorised use of
the enterprise or product name by third parties and protects the trademark
owner through damage claims and cease and desist claims.
2.1 Domestic and Foreign Trademarks
Apart from domestic trademark registrations with
trademark offices
in more than 100 different countries there is the possibility of an
international trademark registration with various national trademark
offices. An international trademark registration grants protection in the
Signatory States of the Madrid Convention. Beyond this intergovernmental
agreements can guarantee that the earlier trademark registration made in
one country has priority before a later registration in another country.
Furthermore, in the European Union there is the opportunity to register a
community trademark. The community trademark grants a protection in
the individual European Union Member States as during entry of a respective
national trademark. The community trademark can be announced both at the
European Office for Harmonisation
in the Internal Market in Alicante and with the national Trademark Offices
of the Member States.
2.2 Selection of the Trademark Name
When selecting the name of an enterprise or a product, irrespectively of
the time of registration of the trademark, the following factors should be
taken into consideration:
· the suitability from marketing criteria;
· questions of trademark and competition law;
· the availability as trademark and domain.
All criteria should be considered promptly not only on national, but also
on international level. While selecting a trademark the potential use of
the same trademark worldwide should be considered. Normally the word constituting
a domestic trademark does not have the same meaning in a foreign language
or in a different cultural, religious, national or ethnic environment. Words
or logos which are acceptable and distinctive in the home country may have
negative or even offensive meaning in foreign cultures or when translated
into foreign language. Similarly, some words or logos which are based on
unique domestic culture or events may be meaningless or incomprehensible
in foreign countries. Thereby not only the spelling but also the pronunciation
has to be considered. Only an early examination permits in the long term
uniform or at least co-ordinated marketing measures on an international
level.
2.3 Trademark Search
Before trademark's entry a trademark search is to be determined necessarily
over whether the desired trademark is available.
It is to be considered that the trademark registration generally refers only
to certain goods and services, and that the trademark name does not gain
protection for all possible kinds of products. All goods and services are
classified according to the international class of goods directory, which
is used by various trademark offices. Despite the partitioning in 42 different
classes it is possible that a risk of confusion exists for goods entered
in different classes of goods simultaneously. This question depends, among
other things, on the similarity of goods. There are goods/services
which are similar although they are entered in different classes; for instance,
a restaurant with theatre performances can be entered both in class 41 under
„entertainment" and in class 42 under "providing of food and drink".
On the other hand there are goods/services that are entered in the same class
but are not similar; for example it is possible that one person has
a registered trademark for coffee while at the same time another person holds
a registered trademark for spices, both falling under class 30. Due to the
possibility of the similarity of goods entered in different classes the search
should not be limited to the class of goods the registration is intended
for. If a trademark is already entered for any commodity or service, it has
to be checked whether there is product identity or a likelihood of confusion
with regard to the product or service in question for which the trademark
is intended to be entered.
A simple trademark search for a word trademark is offered by several
trademark offices on-line. With a simple search the likelihood of confusion
of the looked up term with a similarly sounding or lookingword trademark
already registered cannot be recovered. For instance, a simple trademark
search for the trademark "Rudo" in Germany would not show whether the trademark
"Rudow" is already entered and prevents the use of the trademark "Rudo".
For this purpose a similarity search is required. However, a similarity
search can only determine registered trademarks. It does not cover the case
of current trademark applications having not been registered, yet, but having
priority. Furthermore, a similarity search does not cover cases of famous
trademarks enjoying priority even before registration. An active domain may
signal that trademark protection exists even before the registration of a
trademark. Thus, it is advisable to examine the availability and current
use of a domain when selecting a trademark.
2.4 Trademark Registration
The filing of an application for entry in the register of trademarks is only
recommended after completion of a trademark search. In many cases it is advisable
to conduct a similarity search.
The various trademark offices provide forms for trademark registration. In
some countries only domestic persons/entities are allowed to register, in
some countries an attorney is required for filing.
3. Domain Name Protection
3.1 Types of Domains
In many countries, domestic top level domains (.de, .fr etc) exceed the meaning
of .com-domains with regard to domestic business activities. The administration
of the national Domains is made by
national domain
registration offices mostly in the respective state. International Domains
(.com, .org, .net as well as the new Top Level Domains .biz, .pro, .name,
.aero, .museum, .info and .coop which will available by the end of 2001)
are intended to be used by enterprises or institutions worldwide. Therefore
they have a larger set of potential prospective customers and are to smaller
extent available than domestic domains.
3.2 Selection of the Domain
The legal restrictions and prerequisites for the selection of the domain
name differ in various countries. For instance, in Germany a valid domain
name may only consist of numbers, letters and the character
„-„(hyphen), the minimum length of the domain name amounts to three,
the maximum length to 63 characters. As well as in various other countries
the use of certain generic terms is restricted. However, in Germany, unlike
the situation in many other countries, the
domain registration office
(DENIC) does in general not determine whether third parties have opposing
claims to the domain name or whether the use of a generic term is prohibited.
In Germany, these questions are left to disputes brought before the courts
by private parties. Unless someone invokes a civil proceeding to challenge
an assigned domain name, the registrar will engage in absolutely no review
or examination to determine whether an applicant'a registration and use of
a domain name would impinge on anyone else's trademark rights.
In some countries an entered trademark is a prerequisite for a domain
registration. In most cases a registered trademark supersedes the registration
or use of a domain. Under certain circumstances the release of a domain can
be required even due to a trademark entered temporally later, if a famous
product already achieved a considerable market validity before the trademark
registration. To that extent not only the costs of the entry of the domain
would be wasted, but also the investments in the appropriate (not entered)
trademark names connected with the operation of the Website. Therefore,
in many cases a simultaneous trademark registration is recommended beside
a domain registration.
In most cases the need for a timely registration of a domain is higher than
for the entry of a trademark. Since trademark protection concerns only certain
goods or services, in general there is still an opportunity to register a
trademark for a specific product even if a registration of the same trademark
name for a different product or service has already been entered. More than
one producer can use similar or even identical marks when their goods or
services are sufficiently distinct and when other factors militate against
confusion as to source. For instance, the same trademark may be entered for
a cinema named „Universal", for an entertainment company named
„Universal" and a real estate agency of the same name). In contrast,
a domain name is assigned only once. Many persons of the same name and many
different trademark owners with the same registered trademark name could
lay a claim on the domain due to their name or trademark. A trademark
can be entered a second time, a domain name cannot. Abroad it has to
be considered that a competitive use of firm names or products in abbreviation
form (BMW, NTT etc.) is more likely than the use of words or names, which
occur almost exclusively in the own language. Therefore, an early registration
of domains abroad is particularly recommended for names that are common in
several languages and for abbreviations.
3.3 Domain and Trademark Search
Before the registration of a domain not only a domestic and international
domain research, but also a search of domestic and foreign trademarks is
recommended. An entered trademark may have priority to a domain so that the
registered domain has to be released to the trademark owner.
3.4 Domain Registration
The registration of national domains with
national domain
registration offices can partly be made by Internet Service Providers
from abroad. In some countries foreigners residing abroad can be registered
as domain owner, in other countries a residence/seat of the person/enterprise
in the appropriate state is required. Some countries do not allow foreigners
to register, in some countries representation by an attorney is required.
In Germany, a registration of dot.de domains with the
DENIC is usually made by
the different members of the DENIC and other Internet Service Providers.
A registration directly with the DENIC is connected with substantially higher
costs. If a dot.de-domain is already occupied, the release of the domain
can be demanded from the domain owner due to trademark law, competition law
or the right of name based on general civil law rules under certain
circumstances. In addition there may be damage claims or claims to cease
and desist.
Claims concerning the release of domain names are treated differently in
various countries. In some cases they are handled by national domain registration
offices (either governmental or private companies), in other cases by courts
in the respective country or by the WIPO Arbitration Court. Since the release
of a domain used by a third party is in general far more difficult, lengthily
and expensive abroad, especially if one does not have trademark protection
in the respective country, the importance of an early domain registration
is even higher abroad than in a domestic market.
4. Interdependence of Trademark and Domain Registration
The use and registration of trademarks and the use and registration of domains
supplement each other. An entered trademark can be a prerequisite for
registration or claim for release of the domain name or at least facilitate
the release of the domain name. On the other hand the use of a domain name
in practice may lead to a famous trademark granting protection even before
registration of the trademark. Therefore, the early co-ordination of the
use of enterprise and product names and trademark and domain registration
is advisable.
5. Check List:
International Protection of Trademarks |
International Protection of Domain Names |
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identity searches (wordmarks) of registrations and applications for domestic
trademarks, community trademarks and foreign trademarks
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similarity searches of domestic, community and foreign trademarks
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registration of domestic, international, community and foreign trademarks
(in individual countries or by groups of countries/regions as a service package)
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asserting and protection from requirements on entry, objection, deletion,
damage claims and claims to cease and desist before domestic and foreign
courts and trademark offices
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simple search of national (domestic and foreign) and international domains
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similarity searches for trademarks and domains (domestic and abroad)
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registration of national (domestic and foreign) and international domains
(in individual countries or by groups of countries/regions as a service package)
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asserting and protection from requirements on entry, release, deletion, damage
claims and claims to cease and desist before domestic, foreign and international
courts, domain registration offices and arbitration courts
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