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Trade Marks and Domain Names – Domain confusions

The worlds of Trade Marks and Internet Domain Names have been the source of much confusion. Eventually it was decided that, in order to expand the range of names available, and presumably to reduce the dangers of trade mark infringement and passing off disputes, the range of domains would be extended. Gone is the limited choice of .org, or .com. or .net, or .co.uk. Additional domains are now to become available such as .ltd and .info etc. Presumably, the intention was that if you wanted to trade as ‘swizzle’, and swizzle.com’ and ‘swizzle.co.uk’ were already taken, then you could have swizzle.ltd.uk instead.

If that was the intention (and it is difficult to glean what it was if not), then it fails to address a fundamental problem. There are at least two ways of getting into trouble by virtue of the trading name chosen. First, if the name is already a registered Trade Mark, then use will be an infringement of that mark. Second is the tort of passing off. When I trade on the goodwill achieved by somebody else in their name or title, this is a wrong irrespective of the registration of any mark.

Without wishing to seem stupid, I cannot see how trading as ‘swizzle.ltd.uk’ is any less an infringement of somebody’s trade mark of ‘swizzle’ than is ‘swizzle.co.uk’ Nor is the use of one, any less passing off than it would be to use the other. All that has really been achieved, is that the proprietor of ‘swizzle’ must now register his page as ‘swizzle.com’ .net, .co.uk, and .ltd.uk. This helps those whose business it is to register domain names – they now charge half as much per name, but register four names where they previously registered one. It does nothing at all to assist a trader who has seen ‘swizzle.co.uk,’ used by somebody else, and wants to ask if he can become ‘swizzle.ltd.uk’. The answer is he cannot – at least not with any safety.

The English language, when stretched only slightly beyond its normal acceptable limits, will provide an endless wealth of potential names and Trade Marks. When looking for a domain name and/or trade mark, only one or two linguistic steps taken away from what looks like an obvious domain name, increases quickly the chances of having a non-infringing name, whilst reducing to a much lesser degree to which it will be easily remembered or its 'random findability' of the more obvious domain names.

The obvious difficulty is geographical. I can register a trade mark in the UK, or in Europe or in any other jurisdiction in which I want to trade. Any obvious trade mark candidate, the ones worth having, will be registered in one place or another .

When I offer my services on-line, I then must ask in what jurisdiction I am seeking to trade. If I sell exclusively in the UK, it should not matter if my mark is registered to someone else in Australia. Immediately I want to be free to sell to Australia, I would be in conflict with that registration.

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Copyright and Database Rights: David Swarbrick 2012
18 October 2013 http://www.swarb.co.uk/lawb/ipTradeDomain.shtml 114 18 October 2013