Through this questionnaire, I asked Gurpreet Singh Monga several very important along with common legal queries we come across every day from Domain Name investors. Gurpreet is a practising Intellectual Property Lawyer. Read more about him at www.domainconsultant.tel
Without wasting much of your time, here are some of the most common legal questions and their answers:
Q: Can I register a Domain Name subject matter of earlier Trademark?
A: “It Depends”.
Now when I say it depends it means both yes and no. To understand more, lets dig little more on the issue.
Q: The foremost question is what is Trademark and what does trademark registration confer on the owner of the mark?
A: Trademark as we all are familiar with, in a lay man language is a source identifier. It identifies a product or service to a particular person or entity.
For instance, Apple for computers, mobile devices. Amazon for marketplace. Target for Retail Stores and so on.
Trademark Rights are based on ‘use’ of the mark and not merely having a registration of the mark.
Q: Next issue is what constitutes “use”?
A: ‘Use’ in simple terms is providing goods or service for commercial use of others.
‘Use’ can be established by providing evidence of commercial activities provided by the owner of the mark in commerce such as manufacturing, advertising, sales etc.
Q: So what does Trademark registration confers?
A: Goods and services are divided into 45 classes under NICE classification and majority of countries including India refer to NICE classification for registering a trademark. You can view the complete list of goods and services by visiting the link here.
When an applicant applies for a Trademark, he identifies goods or services of his manufacture. For example, Mercedes Benz for cars, OLX for online marketplace etc.
The protection of the trademark is provided for specific goods or services applied for and not for all the goods or services in 45 classes unless the applicant has applied for the mark in all the classes. The mark however, is liable to be removed from the register for the goods or services in which there is no use of the mark by the applicant.
Trademark Registration is a prima facie evidence of use of mark by the owner for the goods and services applied for. It confers a right on the owner of the mark to commercially sell goods or services for which the mark is applied and stop the infringers from using the mark in commerce.
As described, Trade mark registration is a prima facie evidence but not conclusive. That means, a person or entity may hold a Trademark registration but do not use the same in commerce.
Some countries provide registration of mark on the basis of use. Applicant is required to file Statement of use before the Registration is granted and also periodically file the statement to keep the registration active in some jurisdictions such as United States.
However, some countries provide registration on the basis of proposed to use claim where no Statement of use is required to be filed to maintain the registration such as India.
In this scenario, an applicant can apply and granted registration on the basis of proposed to be use claim. The registration so provided may be challenged on the grounds of non use by the third party and the mark may also be liable for rectification.
Q: So, How can I know whether the Trademark is used in commerce or not?
A: The knowledge can be obtained from common law searches like Internet, business directories etc. Here, professionals can help you to do market research and provide you with detailed analysis in the matter.
Q: What if I come to know that Trademark is registered but is not used?
A: If the mark is not used, party can initiate cancellation proceedings against the Registered proprietor of the mark.
Rectification proceedings can be initiated by the aggrieved party on the grounds as provided under the law. Non use is one of the grounds under which the Trademark Registration can be challenged.
Therefore, to conclude, a trademark is a right conferred by law to the owner of the mark to use the same in respect of the goods or services in commerce. However, if the mark is not used for the statutory period of the mark, the same can be challenged and is subject to rectification.
Q: If the trademark is registered in United Kingdom or United States but I bonafidely adopted the Domain Name incorporating the mark subject matter thereof, Can I defend myself?
A: Again the answer is it depends. The matter is subject to the evidence available with you to show the bonafide adoption and use of the mark in commerce.
Further, the trademark rights are jurisdictional and the rights conferred by the registration in one country cannot spill over other country simply by virtue of local registration.
However, the spill over reputation can be establish by the owner of the mark by providing an evidence of use thereof in foreign jurisdiction and the burden is high on the owner.
The trademark rights are conferred on first to use rather first to register.
I would strongly recommend to contact your attorney to understand the situation.
Q: So, Can I register a Domain Name to provide goods or services not subject matter of Trademark Registration or prior use by third party?
A: Yes You can. If your intention is not to infringe upon the rights of the Trademark owner and to use the Domain name in a legitimate manner, you can use the Domain Name and defend your rights. As described earlier, the trademark rights are based upon first to use and not first to register.
Whether a use is legitimate or not is also dependent upon various factors. You can contact your attorney to evaluate the matter in light of your particular facts and circumstances.
I hope the queries are answered effectively and in case you have any further queries, please feel free to contact Gurpreet Singh Monga for scheduling an appointment and he shall be glad to address your particular concerns. He can be reached at firstname.lastname@example.org or you can connect with me on Facebook at “iplawattorney”.
Good luck and Happy Domain Name Investing!!!!
Disclaimer: Nothing in the article constitutes legal advice by the author. Reader are advised to contact an attorney to discuss the matter before relying on the general advise provided in the above article.
© 2016, Gurpreet Singh Monga, www.domainconsultant.tel