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Trade Marks, Domain Names and Trade Mark Infringement

Written by Rehana Ali on 31 October 2013

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If you are the owner of a registered trade mark you must be aware that this does not equate to automatic entitlement for use of the registered mark as a domain name.

The reasoning behind this is:

  • The same trade mark may be registered for different goods or services by different owners.
  • It may even be the case that somebody may have already legitimately registered the domain name with use in connection with unregistered services or goods.

Conversely, if you have a lawfully registered domain name, it does not result in automatic qualification for registration as a trade mark.

In particular with regards to choosing domain names the following case is worth noting.

Cybersquatting

British Telecommunications Plc v One in a Million Ltd 1999

The claimants BT succeeded in a section 10(3) action under the Trade Marks Act 1994 that prohibits the use of an identical or similar sign for good or services, whether identical similar or dissimilar, if the use is detrimental to or takes unfair  advantage of the distinctive character or repute of a mark.

The facts

The defendants had registered a variety of domain names including bt.org and marksandspencer.co.uk, they were not the owners of the businesses associated with the names and so did not have websites attached to the domain names. The defendants admitted they had no intention of using the domain names and merely intended to sell them. The Court held that based on the defendants admission they were guilty of the infringement offence under section 10(3) TMA 1994.

This case highlights the importance of carrying out a diligent search before choosing to register a domain name. Meticulous and relevant searches will save you money, time and avoid legal action from proprietors with existing rights in a name.

If you'd like to know more about this article please send an email to Michael Coyle quoting the article title and any questions you might have, alternatively call the office number on 02380 235 979 or send an enquiry through our contact form.

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