With the Increase in penetration of online market and visibility has led a serious issue about protection of domain name as a trademark. But let us understand do we really apply for trademark registration for a domain name.
As we know when we acquire a domain, the same or similar domain name in form of other extensions such as .in, .co.in, .net are available these extensions are called top level domain name. Which in turn can lead to confusion among the target customers who might look forward for a particular service or product online. Even a competitor might float similar service or brand with different top level domain.
So is there a way we can save our domain identity in all manner?
Do we really need to file a separate trademark application in India for Domain name?
Let us proceed by understanding this topic according Trademark law and court’s point of view in recent past.
We all understand that Trademark registration protects the brand name AS IT IS in the manner it is applied, also helps you monopolizing the same by excluding the protection to any similar mark on record. Generally we see that people tend to file only for word mark registration for their brand. But is this sufficient to safeguard your brand and company?
Let us understand this with an example suppose your company name is company360, you have applied for trademark on the name of brand company360 and has also secured domain name in form of company360.in So your applied trademark and domain name are completely similar to your applied brand name, hence the protection is extended to the domain name as well and this protection is extended to all the combination of domain, be it .in, .com or .net etc.
But in case suppose you applied for a trademark for a fictious brand name such Indian legal academy but your domain name is www.ila.in an abbreviated form which is not directly derived from the trademark you applied, there exist a chance that such protection will not be extended to your domain name.
To understand this scenario lets take into account few prominent and famous cases over domain name dispute.
Starbucks.in and starbucks.co.in
The court upheld that Starbucks has the right to stop any other person from using startbucks.co.in even when the domain name was available, as the prominent part of the domain is Starbucks which is the registered mark of the Starbucks Corporation, and .in and .co.in do not give any differentiation to the mark in question, therefore, the defendant even though the owner of domain name starbucks.co.in cannot be allowed to use it.
Further, the same verdict was pronounced in case of in case of google vs googlee.in (notice the extra e) wherein the court asked the domain directory to cancel the domain registration of googlee.in which was confusingly similar to the domain name google.in
There are many similar cases on record, it is clear that courts are favorable in extending trademark protection to domain names as well wherein the trademark is absolutely in sync with the domain name. Hence, one can safely say that in case you have your brand name used as domain name, the protection to your domain name is also provided under the common law as well as trademark laws as courts do considers domain name registrations also as integral part of business equitable to trademark registration. Its beneficial to connect with an expert attorney at the time of setting up your company who can guide you in such matters – good news is many online company registration firms do have in-house lawyers to guide you through such legal matters which could become migraine for your company in later years.
About the Author
Is a qualified Patent attorney. Founder & Director at Company360.in experts in Company Registration, Trademark Registration & Patent Services. A IIT KGP Alum, Beyond being a legal eagle she is an adventurous cook and loves exploring new cuisines.