Trade Marks Domain Names and Trade Mark Infringement
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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
In particular with regards to choosing domain names the
following case is worth noting.
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 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.
Written by Rehana Ali
About the Author
Solicitors offer services and advice for litigation,
commercial contracts, Intellectual Property and IT legal agreements. We
are experts in commercial law with a heavy emphasis on Intellectual
Property, Internet and e-commerce law. Lawdit is a member of the
International Trademark Association, the Solicitors' Association of
Higher Court Advocates and we are the appointed Solicitors to the
largest webdesign association in the world, the United Kingdom Website
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Article Published/Sorted/Amended on Scopulus 2013-12-24 16:17:35 in Legal Articles