For many people there can be some confusion surrounding the terms trade mark and domain name, and this blog hopefully clarifies both terms as well as encourage startups and existing businesses to use companies with expertise in these areas.
Will a trademark give you right over a domain?
One question that is often asked is whether having a trade mark, automatically means you have a domain name. Quite simply, no, they are two different things. As you know from previous posts a trade mark identifies the origin of goods or services, and if an owner of a good or service would like to use its trade mark as its domain name, the owner must purchase the domain name registration. There are companies whose brand is their domain name for e.g. ASOS.com. in such a case the domain name needs to be registered as a trade mark.
It is important to note that the use of a domain name merely as an informational part of the domain name holder’s internet address does not qualify as trade mark use. Some examples of domain name used only as an Internet address include:
- A domain name that displays only in the Internet address bar
- A domain name that merely redirects website traffic to another website
- A domain name that is used in close proximity to language referring to the domain name as an address
- A domain name that is displayed merely as part of the contact information for the domain name owner
What does a domain need to be considered as a trade mark?
To qualify as a trade mark, the domain name must function as a mark. That means it must serve as an indicator of source and not merely as an informational part of an Internet address. If the domain name functions separately as an indicator of source, it may be registered with the appropriate trade mark office as a trade mark. For example, a domain name that is displayed prominently and frequently on a webpage might function as a trade mark. A key factor in determining whether the use of a domain name rises to the level of trade mark use is whether consumers view the domain name as a symbol of origin separate and apart from anything else.
It is important to note that both domain names and trade marks can expire. The expiration date of a domain name depends on the term agreed when you registered the domain name, and this can easily be renewed. If a trade mark is not renewed before the due date, the registration expires (they usually run for ten year periods). These processes are both quite straight-forward (but many people make mistakes, which can be costly and time consuming), so Trademark Hub are always on hand if you ever have any questions, or if you need to renew your trade mark.
Remember, a trade mark and a domain name are not the same, and quite simply are two very different things. The two can inter-link, however, it is advised that you speak to an expert when looking at getting any aspect of your business trade marked, even if it is the domain name!