Copyright Aid

Hi, I was hoping to get some advice on a domain name that I'm currently wanting to register. I don't want to name the website in question but hopefully I'll explain it well enough using a fictional example!

I currently have a website that sells a specific type of item (let's say cups) out of a material that for this example I'll say is 'plastic'. The website is called 'plasticcups.co.uk'. To be consistent, for my other item line I would like to follow the same naming, so my new website (selling plastic chairs) would be called 'plasticchairs.co.uk'. When I was going through the process of registering the domain name I thought I would look to see who owns the .com domain and found a German company that has a "R" symbol next to the name in their logo, so in this example 'Plastic Chairs (with the registered symbol)'.

This now has me confused as to whether I am allowed to register the same domain name in the .co.uk? As the website name is such a broad product type (Plastic Chairs as opposed to a brand like Nike) it has me wondering how they've registered the name and what rights they have over the use of the word(s). I obviously don't want to go ahead and register plasticchairs.co.uk, only to find I need to close it down, but I don't really have a clue what I can/can't do when it comes to registered names, what is covered by the trademark and whether it applies in different countries?

Could anyone provide any help on what I need to do/find out before going ahead and registering the domain?

Thanks for any advice.

Justin

Hi Justin,

The ® symbol means that the words so marked have been registered as a trade mark. However trade mark registrations are territorail and given that this is a German company it may well be a trade mark which is just valid within the EU and, unless it has also been registered in the UK, it may not have any particular legal status here. It's all been complicated by our withdrawal from the EU as there are certain legacy rights to trade marks. You would need to check that current status of the mark in the UK by visiting the UK Intellectual Property Office and doing a trade mark search for the words you are interested in.

However just because some words are registered as a trade doesn't automatically mean they can't be used used in URL or domain name. To prevent the practice of cyber-squatting and other abuses like phishing attacks using near similar names to offical sites like that of a bank for instance, there is a a Domain Name Dispute Resolution procedure which allows a trade mark owner to seek the revocation of a domain name which is alleged to infringe their registered mark. You can read about the process on this site: Nominet Domain Dispute Resolution Service. That's the one run by Nominet for .uk domains. There's a separate service which follows near identical procedures, run by the World Intellectual Property Organsiation (WIPO - a UN sponsored NGO) for URLs in other domains such as .com

Thanks very much for the reply Andy, I appreciate it.

I've taken a look on the UK Intellectual Property Office website and ran a search using the words with a space inbetween, as one long word, and also with the .com extension on the end to check every variation and there are no results that match. Does this mean that I would be safe to use the words in a .co.uk domain or could there be other restrictions that I need to be aware of, or other checks I should do before being sure I'm safe to use them?

Thanks again, your help is really appreciated.

Hi Justin,

The fact that there are no registered trade names which might clash with the word/words you want use in you URL certainly strengthens your position. As I tried to indicate previously, even if you had found a matching trade mark it wouldn't necessarily have been fatal to your domain name registration. A pre-existing trade mark would be just one of the grounds for raising an objection with the Dispute Resolution Service, but so too could similarity with another company or a pre-existing domain name. On that basis, it might well also be an idea to check the Companies House Register to see if there are any UK companies trading under something fairly close to your proposed name. Apart from that, I can't think of anything else you would need to check before going ahead and registering the domain name you wish to use.

Thanks again Andy, you've been more than helpful. Certainly puts my mind at ease somewhat, and pretty confident in using the domain having also searched the Companies House Register. Really had my heart set on using the domain as it fell "on brand" with my other website so that's great!

Thanks you for your advice.