Oops, I thought it was mine

By | March 24, 2011

New start up Internet companies who value their names or have clever names should take immediate steps to register them as trade marks. If they fail to do this they may quickly build up recognition in the minds of consumers which other, more alert, marketeers may exploit. Registering a domain name does not give proprietary rights!

Because of the huge coverage provided instantly by the World Wide Web, a new domain name can very quickly become the buzzword on the lips of literally tens of millions of consumers. Many of the new Internet companies hit the headlines for a variety of reasons, the goods or services they make available, the insatiable demand for their shares or the personalities involved. The common denominator throughout all this is the domain name and this will be repeated time after time in all the media, newspapers, radio and TV. The name almost takes on a life of its own. One thing is certain, notwithstanding the money that may be spent on commercial advertising of the site, the gratuitous promotion of the name by the various media can be immense.

For this reason the owners should be aware of the potential, and pit falls, associated with this enviable notoriety. They should examine the possibilities of their branding goods or services with the new name. To this end it is worth reflecting on the merits of trade mark registration. The purpose of a trade mark is to distinguish the goods or services of one competitor from that of another. This protection also extends to the prohibition of a rival mark which is identical or confusingly similar to the registered mark – domain name registration does not.! Moreover, the exclusivity is territorial, that means it has effect in every country in which the mark is registered. There is also a Community Trade Mark (CTM) facility, which, with just one application, can provide exclusive rights throughout the 15 member states of the European Union (a market of 370 million consumers which will grow to 500 million when the new entrants come onboard). Therefore the owner of the domain name can utilise this protective mechanism to secure trade marks rights for whatever goods or services he has honest intent to brand with his name in whatever markets he envisages exploiting in the foreseeable future. This now adds not only increased value to the new name by virtue of the breath of cover but also open up great possibilities to expand usage by way of licensing agreements and the like.

On the other hand if these provident steps are not taken then the potential can be usurped by others. Should someone else, in the early days, recognise the potential which the popularity of the name provides and moves to register it to his own ends, then the possibilities can be lost forever for the originator.

So, although any start up web based company may only have its sights and aspirations focused on the Internet it would be foolhardy and costly to overlook the wider picture.

By the same token anyone who has created a clever name for a non-web based business and fails to apply to register can also receive a rude awakening. Consider this scenario; you have a new branding which goes, unprotected, into the marketplace. Someone else sees it, thinks “that’s clever” has a search done of the trade mark register, finds the way clear then files on his own behalf for a similar class of goods or services. Once the registration comes through, which may take up to 18 months, he can go to the original, unregistered user and legally insist that they cease usage of his now registered mark.

Liam Birkett

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