Trade Marks and Domain Names - Legal Overiew

Trade marks are marks that distinguish goods or services provided by the trade mark owner from those of others. For example, the word Lawdit® in relation to legal services relates exclusively to Lawdit Solicitors, it is the trade mark owner. Lawdit and no-one else has the exclusive right to the use of LAWDIT® or similar words in relation to legal services.

Like copyright and other items of intellectual property , the trade mark system is territorial in its effect. In other words, each country or territory has its own trade mark system. The trade mark WIDGET, for example, might be owned by one person in the United Kingdom and by a different and unrelated person in the United States. The mark BUDWEISER is a classic example: in some countries it refers exclusively to the beer brewed by the Czech brewery; in some countries the trade mark is owned by the US brewers of Bud.

Historically the domain name system, with its current emphasis on the .com tld as the “international” domain, does not fit well, therefore, into the international trade mark system. A good illustration of this in practice is the case of Prince v Prince. This was a challenge by the US manufacturers of sports goods to the use by a British computer consultancy company. The British company had registered www.prince.com in good faith and were using it. The US company Prince, who manufacture sports equipment had a US trade mark for, amongst other things, sports goods. They had no registered trade mark either in the UK or the respect of computer consultancy services. They threatened to sue the British company for infringement of the US trade mark; the British company counter-sued in the UK for unjustified threats of trade mark infringement. They won. The US company had to be content with www.princetennis.com.

An example, however, of where the rights of a trade mark owner probably will prevail over the rights of a domain name holder is in the case of Marks & Spencer v One in a Million. In a case in the English High Court in 1997 (confirmed in the court of appeal in 1998 ) various trade mark holders, including the well known British retailer Marks & Spencer, sued a company, One In A Million, who had stockpiled a number of domain names which reproduced well known trade marks such as Marks & Spencer, Sainsburys, Virgin and Cellnet. The domain names had been registered with a view to selling them to their “owners”. One In A Million were required by the court to assign the domain names to the trade mark holders. One In A Million had unsuccessfully argued that the domain name registrations were, in effect, “first come first served” and accordingly the trade mark owners had no rights.

In general the way that trade marks and domain names interrelate can be said to be as follows. Marks which have no trade mark significance (like, for example, first.com or sell.com) are in effect in the hands of those who registered them first - and once they become used a reputation can certainly be built up in them. As between two separate companies with a bona fide right to the mark, such as the two Prince companies, then the state of the law in most countries (but individual countries’ laws do need to be checked) is that the first to register will obtain the mark. But, a registrant of a name the subject of trade mark to which, off the web, the registrant would have no entitlement is forbidden by the laws of most countries.

Most domain name registries have a disputes procedure which usually allows for a domain name to be suspended if someone other than the registrant claims the right to use it. See, for example, the .uk policy at http:// www.nominet.org.uk/ref/drs.html and the .com and proposed general policy at (amongst other places) http://www.awregistry.net/policy.html. But these policies, in general terms, cannot and do not override the courts’ rights to deal with domain name disputes as they would deal with any other trade mark disputes.

Michael Coyle - Lawdit Solicitors