Don’t let your trademark be guillotined!

In Insights, Uncategorized

28 February, 2014

Throughout history we have learned that revolutions can be very bloody. Or at least, the bloodiest and most horrible revolutions are the ones we remember from our history lessons back in school.

I remember a little play about the French revolution from my own school time. All the girls wanted to play Marie Antoinette. Not because her character had many lines, except the famous one to the starving people: ‘Let them have cake’! Nor because she wore a beautiful dress and a huge wig, but because she got to squeeze a little tube of fake blood when guillotined!

Now we are standing in front of a new revolution, yet a quite different one: a revolution of the Internet. Will this revolution also be bloody? Well, perhaps not, but we expect that 600-700 new generic top level domains will be released over the following three years and this will without doubt give rise to some conflicts between trademark owners.

Some of the new domains will appeal only to a specific business like .film, .architect, .airforce, .doctor, .university, etc.

For instance, I don’t think that the trademark owner of the famous cognac brand Renault will be interested in the domain name renault.car. But I´d be very surprised if the trademark owner of the famous car brand Renault will not have an interest in that domain.

But what about .luxury? Or .email? Or domains that may be attractive for marketing campaigns like .events or .vip?

It´s not hard to imagine that co-existing brands will share a common interest in some of the domains. And what will happen if both the car and the cognac trademark owners file for the same domain in the sunrise period? Remember that we will be dealing with hundreds of new and probably very different registries with different sets of rules. So it’s not quite clear yet, how these conflicts between trademark owners will be handled by each registry. A method that we have seen from previous sunrise periods is that the domain is put up for an auction between the applicants.

However, what is absolutely clear is that you must pre-protect your trademark in the sunrise database for trademark owners (the so-called Trademark Clearinghouse database) if you don’t want to see your trademark being guillotined! If your trademark is not protected here you will not be able to file any domains at all in the sunrise periods.

By the way, I didn´t get the role as Marie Antoinette but this shouldn’t stop me today from saying to all trademark people: ‘Let them have trademarks’

Dorthe Vangsgaard Sørensen, Paralegal

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