Domain names v trade marks

Contrary to the common misconception, having a registered domain name does not equate to having a registered trade mark. You can have the two, i.e. both a trade mark and domain name that correlate to one another, but it is important to note that the application process and types of protection afforded by the two differ significantly.

What’s the difference?

A domain name is an internet address e.g.,  whereas a trade mark is any word, symbol or logo registered with an Intellectual Property Office and is capable of distinguishing the goods or services of one undertaking from those of other undertakings. 

Securing a domain name for your brand will provide you with what is known as ‘unregistered rights’ which arise automatically on the creation of the work, whereas successfully registering a trade mark will provide you with ‘registered rights’, both of which are enforceable should you discover anyone infringing your brand in future.

Whilst it is important from the offset to establish a domain name and trade mark that are identical to one another, it may not always be so straightforward. This is because cyber squatters tend to auction a sought out domain name directly to an individual who is interested at a price far beyond the cost of registration.  In this situation, it is recommended that you opt for a domain name that is highly similar to that of your proposed mark or, alternatively, acquire domain names with highly similar variations (e.g. .com/ Doing so could prevent other brands from potentially diluting or weakening the distinctiveness of your proposed mark.

What comes first?

In terms of trade marks, it is recommended that you firstly check whether something identical or similar exists (by way of a trade mark search) and if discover that it doesn’t, then to proceed with registering both the trade mark and domain name simultaneously. Ensuring whether the domain name/trade mark you wish to register is already out there could save on both time and expenses as you may find that either of the two is already registered. You can either carry out these prior searches through domain name databases and intellectual property offices yourself or better yet, have the experts at Lawdit do this for you.

Therefore once you have carried out the relevant searches and you can confirm with confidence that both the domain name and trade mark is available to use, you can purchase both at the same time. Although registering a trade mark will take considerably longer than registering a domain name, securing the domain name before anyone else does will prevent the risk of someone else getting there first.

If you have any questions relating to this article or need some guidance on the above, contact us today.

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