Protecting the domain name as a trademark? Many companies would like to do this and it is certainly possible. However, there are some aspects that need to be considered.
A wide variety of signs can be protected as trade marks
Trade mark law allows in principle (§ 3 (1) Trade Mark Act) to protect a wide variety of signs as trade marks, including words (including personal names!), fancy words, numbers, mixtures of words and pictures (as in many logos) and also mixtures of words and numbers. In the field of 3D design, even the shape of the product can be protected as a trade mark, which is particularly important for well-known brand manufacturers, such as Louboutin and Ritter Sport.
Relatively new since the last trademark law reform in October 2017 is that sound signs and also scent and taste can also be protected as trademarks – in Germany and in the European Union.
Domain names are also, in principle, protectable signs. This is pleasing for companies, all the more so if the domain name develops into a generally known brand name – for example, billiger-mietwagen.de.
Domain names as trade marks – must not be descriptive!
However, the example of “billiger-mietwagen” immediately shows the problem that many domain names have from the perspective of trademark law: domain names are often descriptive of the product or service that is offered. This is logical, after all, domain names are chosen with a view to the best search engine optimisation, and there a well-descriptive domain name counts as a clear competitive advantage.
But not so in trade mark law. Trademark protection cannot be granted for a sign that is descriptive of the goods or services claimed. Similarly, signs or words that are so widespread in the common language that they are kept free for the general public and can thus be freely used by anyone and everyone cannot be granted trade mark protection.
So if you want to build up your domain name as a trademark, you need to have a good strategy. In addition, a careful trademark search is a must, because it is essential to check whether the intended or already existing domain name is similar or identical to already protected signs. Therefore, if you want to register a domain name as a trade mark, you should supplement the classic trademark search with a search specifically for domain names.
Trademark research is important
Not knowing does not protect against punishment; if a sign that is already protected is carelessly registered as a trade mark, there is a risk of injunctive relief and also claims for damages from the earlier trade mark owners.
If you actually want to register the domain name as a trade mark, it is necessary – as with every trademark application – to select the appropriate list of goods and services according to the so-called Nice Classification. This is because the same brand name can even be used very often – if it is claimed for different goods and services.
Only the so-called “second-level domain” and/or any sub-domains can be placed under trade mark protection if they are not purely factual or advertising indications.
We will be happy to assist you!
We will be happy to assist you with both the trade mark search and the trade mark application. Our law firm for trade mark and patent law has been very experienced and successful in this field for many years. We are also happy to help where it still seems difficult to invent new brand names for certain goods or services, as the density of trade marks has increased significantly, especially recently.
Please contact us if you are interested – we will be happy to help!
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