USING TRADEMARKS ONLINE
OUT OF LINE: PROTECTING TRADEMARKS ON THE INTERNET
The online environment needs to be a key consideration when developing brands and slogans, says Petter Rindforth.
Back in the early 1990s, when a new product or service was being readied to be put on the market, creating its name started with the trademark in a certain logo and/or colour. T e mark had to look good in printed ads, in shops, on packaging and on TV. When the new trademark had been proudly presented at a press conference, it was time to consider registering it as a domain name.
Just a few years later—still in the 1990s—the creation of a new ‘name’ always started with fi nding the perfect domain name, and formal trademark applications had become the second step.
So, what happened, and what’s the diff erence? Well, too many companies realised too late that protecting a trademark online as the last action was the wrong way to go. Not only had pirates and cybersquatters already registered the new trademark in diff erent versions, but there were also situations were the offl ine mark did not look the same online, and therefore didn’t give the right message to the public and customers.
Device marks
Traditionally, combined word and device marks, using specifi c fonts and colours, or even pure device marks, can be some of the strongest and well-known trademarks on the market. T is is because the visual impression is very easy for customers to recognise and remember, and
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therefore these kinds of trademarks oſt en stand out from pure word marks.
Offl ine, you can use and register your device mark as a trademark or a design (in Europe, fi gurative marks and logos are commonly also protected as Community Designs), or protect it using copyright.
Of course, when used online, device marks are still important on websites, and specifi c visual impressions are also searchable on the Internet. But when it comes to online use as domain names, there are obvious limitations: a domain name can be created only by letters, numbers and hyphens.
T e problem is especially clear when it comes to domain name disputes. T e Uniform Dispute Resolution Procedure (UDRP) process shows that, as fi gurative, stylised or design elements in a trademark are generally incapable of representation in a domain name, they are typically disregarded for the purpose of assessing identity or confusing similarity. However, if the only protectable component of a design mark cannot be
represented in the alphanumeric
string of a domain name, the trademark owner/ complainant risks losing the case.
One possible solution is to fi nd a good and obviously worded description of your device mark, and register that as a domain name that can be pointed to your home page.
Trademarks Brands and the Internet Volume 1, Issue 3 Word marks and slogans
A slogan or a word mark that consists of two or more words will also look diff erent online. Technical limitations do not permit
spaces
between letters/words in the domain name, so diff erent words must either be written with hyphens in between, or as one word.
Although these online versions of the trademark are visually diff erent, UDRP practice clearly states that eliminating or adding punctuation and changing the internal spacing of trademarks for the disputed domain name does not distinguish the domain name from the mark.
When marketing such trademarks online, it is sensible to write them with initial capital letters for each word, such as:
MyFamousTrademark.com.
T e same is true of slogans. Although slogans are something—like device marks—that can easily be remembered in the public mind, they are also, unfortunately, oſt en too long to use as domain names.
On the other hand, in an online world where two and three-letter domain names are hard to fi nd free for registration, some long slogans as domain names may in fact be a good addition to your marketing policy. For example, Wal-Mart Stores has registered
savemoneylivebetter.com, and a certain village in Wales, UK, has registered: llanfairpwllgwyngyllgog
erychwyrndrobwyll-llantysiliogogogoch.com.
www.worldipreview.com
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