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Trade Marks Domain Names and Trade Mark Infringement


Lawdit Solicitors - Expert Author

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 31 October 2013

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.


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 and, 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

Lawdit 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 Designers Association.

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Article Published/Sorted/Amended on Scopulus 2013-12-24 16:17:35 in Legal Articles

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