A domain name provides a platform for visibility of a brand in an online space. It is a destination address for the web traffic generated around a brand name. However, simply put, a domain is a word, and a word can be trade marked.
Often, people secure a domain name first in their process of creating a new product or service. Whilst an online presence is a key part of launching a new brand, it is a mistake to think that because you own a domain name, you will be able to secure a matching trade mark. The process should work the other way around - where a domain name becomes an additional asset secured following the clearance and registration of a trade mark.
Keltie can assist clients with obtaining and registering domains, but we add our real expertise in the work related to the trade mark which should come before securing a domain name for your new product or service. By searching for and subsequently registering a good trade mark to cover your business’ operation, we can source a domain we know is clear for use. The best domain names are those which follow consistently with your brand’s portfolio, beginning with its trade mark. A trade mark will ‘trump’ everything else, so if you have a registered trade mark, it is likely that you will be able to secure a domain name to match.
A domain name does not give its owner the rights that a trade mark does. A domain name should be seen as a vehicle secondary to the trade mark. Domains can be obtained very easily through a multitude of online platforms. The issue with domain names is that a domain can infringe a trade mark, but not the other way around. A trade mark can only infringe a domain if the domain has become an unregistered mark through reputation and use over time.
People can often confuse the registration of a domain name with the registration of a trade mark. Due to the fact that domains are both cheap and accessible, people often register them regardless of whether they have invested time into searching for trade marks. Obtaining a domain does not mean you have a trade mark over the same word or phrase. Similarly, the global ownership of a .com domain can lead lay people to think they will need a trade mark with global coverage, but the cost of securing this could run to the millions.
It can sometimes be difficult to find a domain which matches a trade mark if the steps to build your IP portfolio have been taken in the wrong order. There is a greater likelihood that a domain name will match if we understand all of the elements involved within your business plan and help you to craft a mark which fits your product or service from the outset. Consistency with domains and elements such as social media handles are the benefits that come with getting your trade mark right in the first place.
The domain name registration services we provide are a direct result of our trade mark attorneys working with our clients from the beginning of their projects. As co-creators of your invention, we help build your business and IP portfolio, beginning with the trade mark.
With our work in domain names, we aim to improve your knowledge by giving you more of an understanding of how the process works within a wider trade mark or IP context. Much of our work with domains comes as a result of working with clients on their trade mark portfolios and by involving Keltie early in the process, we can help you to secure a domain name which not only fits with your invention but is less likely to be disputed.
Domain names might be the key to uncovering infringement online and subsequently, enforcement work which we undertake for our clients. It is relatively simple to search and discover goods and services which infringe your rights online, but it is knowing how to use that information to secure a successful outcome where we add value.
By understanding how a domain name sits within an IP portfolio and the work we conduct in trade mark search and filing, we can help clients to navigate their marketplace without infringing the rights of others and take action against those who seek to benefit from our clients’ work.
Domain name research, disputes and action take time away from your business’ operations, preventing you from producing or selling those services which benefit you commercially. With our help, we can reduce or even remove the need to focus on these areas, leaving you to focus on your business.
By involving a Keltie attorney early in the process, you reduce the chance of domain disputes emerging. The most beneficial advice we offer clients with regard to domain names is how to avoid the likelihood of any issues arising in the future.
12.09.2022The long-term impact of Brexit on trade marks and designs
Six years on from the Brexit referendum, we can happily say that the measures put in place for trade marks and designs have been successful in delivering a smooth transition. But IP owners now need to pay attention to upcoming changes to rights of representation, particularly in light of the huge growth in applications at the UK IPO.