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. Th 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.
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. Th is is because the visual impression is very easy for customers to recognise and remember, andtherefore these kinds of trademarks oft en stand out from pure word marks.
Offline, 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.
The problem is especially clear when it comes to domain name disputes. The Uniform Dispute Resolution Procedure (UDRP) process shows that, as figurative, 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.
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 different words must either be written with hyphens in between, or as one word.
Although these online versions of the trademark are visually different, 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.
"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."
When marketing such trademarks online, it is sensible to write them with initial capital letters for each word, such as: MyFamousTrademark.com.
The 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, oft 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 find 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.
Distinctive offline—descriptive online
Some trademarks which are created from ordinary words may be free to use by people other than the trademark owner, as long as they adopt a generic or descriptive meaning. Apple is a well-known trademark for computers, but is also a free word for a certain fruit. This is the same offline as well as online.
However, technical limitations on how you can use your trademark as a domain name also include a risk that what is clearly distinctive offline may well be descriptive on the Internet.
‘Findus’ is a well-known Swedish trademark for food products, established in the 1940s. The trademark owner filed a UDRP complaint in 2000, against the domain name findus.com, registered by a Swedish-based holder. It could have been seen as a clear case: the disputed domain name was identical with what the panellist described as “one of Europe's leading European frozen food brands”, and the parties involved were both based in Sweden.However, the respondent stated that findus.com was registered in order to set up an English search engine called ‘Find Us’. The panellist found that the respondent had demonstrated legitimate rights to the disputed domain name (see Sudnif SA v Tulle).
How to use your online mark to protect it offline
Use of your trademark online may be a very efficient and cost-effective way to show proof of use. The online use of trademarks as domain names can also be seen as a form of advertising. The top-level domain connected to the mark may show that yourgoods are produced in a certain country, or can also be used as a message or description of your services such as TurnOnYour.tv (Tuvalu) or Buy.it (Italy).
To summarise: start your protection online, to minimise the risk of falling completely out of line.
Petter Rindforth LLM is the managing partner of Fenix Legal KB, Sweden. He can be contacted at: firstname.lastname@example.org
This article was first published on 01 September 2012 in World IP Review
design marks, udrp, logos, walmart