Trade marks and infringing domain names

When you have successfully registered your trade mark, you need to be aware of any potential infringement.

Infringement is any use of your trade mark or one that is confusingly similar by any third party that has not been authorised to do so. Trade mark infringement needs to be taken seriously as it can damage your brand and prevent your business from continuing as you would like.

Infringement does not need to occur in the using of another trade mark but it can be from the using of your mark or one confusingly similar in another form.

As a domain name for example.

A domain name is the link or address used for one to access a website.

If your trade mark is being used as a domain name without your permission, you can try to recover it.

The way to do this is through the Uniform Domain Name Dispute Resolution Policy (UDRP).

To succeed in a complaint under the UDRP, a trade mark owner must satisfy the following requirements:

• The domain name registered by the other party is identical or confusingly similar to a trademark for which the owner and initiator of the claim has registered;
• The infringing party has no rights or legitimate interests in respect of the domain name; and
• The domain name has been registered and is being used in bad faith.

If your situation fits these criteria, the World Intellectual Property Office who will hear the case will order the transfer of the domain to yourselves as trade mark owner for you to do with it as you wish. You may not want to use it, but with you have control over it, it will prevent any other party trying to capitalise on it at your expense.

For more information, contact Jane at The Trademarkroom.

By Ellis Sweetenham