Are trademarks protected on the Internet?

In Insights, Uncategorized

22 June, 2009

That’s a question I am often asked by my clients. Every time new top domains are launched many clients feel compelled to register – and pay for! – yet more new web addresses in order to prevent a pirate from getting his hands on their trademark or brand name. But is there any real commercial advantage for the client in registering another new address?

Trademark attorneys like me are frequently made aware of our clients’ misgivings about trademarks on the Internet. Many swindlers cash in on this anxiety by claiming (as certain Asian companies do) that a third party has applied to register the company’s trademark or brand under a number of Asian top domains, and that it is imperative to take swift action to prevent these registrations.

There is no need to panic in cases like this. Instead, all you need to do is to make sure that your company has a reliable domain name supplier and a trademark attorney that you can contact. Together, these two people can help you to ensure that your company’s trademarks and brand names are fully and properly protected. They can also tell you quickly whether there is any genuine need to register the domain name in question.

Stockpiling trademark registrations and domain name registrations purely to defend your brand is not something that I or any of my colleagues would recommend. The costs involved for registration and administration are often totally out of proportion to what a company stands to gain by such defensive action. Moreover, trademark law includes a requirement that a brand or trademark must be used within a specified period of time; if it is not used, the registration can be revoked. The important thing is, first and foremost, to ensure that you have adequate and effective protection in those markets where your company is active or plans to be active within the foreseeable future. It is also important to keep a close watch on your trademarks, brands and domain names. In the same way as there are services you can subscribe to that notify you when a trademark is published in the trademark register, you can also subscribe to services that alert you if your trademark is registered as a domain name.

But how should you act if your trademark is registered as a domain name? The first step is usually to check whether any rights already exist or have been registered in the relevant geographical area which would mean that the use of the trademark in a domain name or on a website could constitute trademark infringement. There is also the option of investigating the feasibility of one of a number of alternative dispute resolution procedures, such as those established by the international domain name organisation, ICANN.

In June ICANN published a proposal that aims to simplify this process for the rightful owner of a trademark. The proposal includes plans for a central database containing global IP rights information, which can be used to prevent registrations “in bad faith” when further new top domains are launched. The ICANN proposal also paves the way for a speedier and less expensive dispute resolution procedure and a centralised WHOIS database that contains details of domain name rights holders, registration and renewal dates, etc. from a number of different TLD registries.

The proposed changes will be discussed at a meeting in Sydney at the end of this month. Those of us who work with these issues are pinning our hopes on a more cost-effective and less time-consuming system that guarantees the best protection for our clients’ rights.

Ann-Charlotte Järvinen, Attorney at law

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