Trademarks and Domain Names

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CONFLICTS

TRADEMARKS AND DOMAINS. CONFLICTS: KEY ISSUES Free information
1. CONCEPT OF DOMAIN NAMES AND TRADEMARKS
2. TYPES OF DOMAINS NAMES AND TRADEMARKS
3. DIFFERENCES BETWEEN DOMAIN NAMES AND TRADEMARKS
4. WHAT SHOULD I DO TO PROTECT MY DOMAIN NAME/ TRADEMARK ON THE INTERNET?
5. I HAVE MY DOMAIN NAME REGISTERED ONLINE, HOW CAN I REGISTER MY TRADEMARK?
6. I HAVE REGISTERED MY TRADEMARK BUT THE DOMAIN NAME IS ALREADY REGISTERED BY A THIRD PARTY
7. OPERATING ONLINE MEANS OPERATING, ACROSS BORDERS, ADVANTAGES?
8. MY TRADEMARK MATCHES A DOMAIN NAME REGISTERED BY A THIRD PARTY IN MY SPHERE OF ACTIVITY
DOCUMENTS FOR TRADEMARKS REGISTRATION Payment required
9. NATIONAL TRADEMARK REGISTRATION PROCESS AND EXAMPLES
10. COMMUNITY TRADEMARK REGISTRATION PROCESS AND EXAMPLES

TRADEMARKS AND DOMAIN NAMES
Free information

1. CONCEPT OF DOMAIN NAME AND TRADEMARKS
Concept of Trademarks
Art. 4 Trademarks Act 17/2001: "Any sign capable of graphic representation which serves to distinguish in the market
products and services of one company from those of others"
Concept of Domain Name
Names that serve to identify companies, people and organisations online.
The domain name allows users to visit web pages, have email accounts...
Currently if a company or individual wishes to offer any type of product or service online they must have a domain name
A domain name uniquely identifies an Internet Procol (IP) resource such as web site on the Internet. Domains are based on
the Domain Name Systems (DNS) (Wikipedia)

2. TYPES OF DOMAIN NAMES AND TRADEMARKS
Types of
trade-
marks
Types of
domain
names
Top levelTop level
Second levelSecond level
Third levelThird level
Generic: TOP Level Domain (TLD): the generics domain names include: .com,
.net, .org, .edu, .tv, .mobi, .info, etc..
Territorial: country code Top Level Domain (ccTLD): territorial domain names
include: .es, (Spain).ar, (Argentina) .fr, (France), European .eu,
Regionals .cat.
Second Level Domain: name/ trademark, myname.com, mycompany.com
(my name or my company is classified as second level).
Name/trademark: (.com.es, .org.es) , according to regulations published by Esnic:
•Request com.es: "Any natural or artificial persons and unincorporated businesses that are interested in or
have connections with Spain", ;
•Request.org.es, "Any incorporated or unincorporated entities, institutions or groups that are interested in
or have connections with Spain“.
-By the nature of the chosen sign: name marks, graphs and mixed
.
-For the purpose of its protection: product or services trademark
-For the scope of its protection: national, EU and international
- Because of its ownership: individuals and groups.

3. DIFFERENCES BETWEEN DOMAIN NAMES AND TRADEMARKS
TRADEMARKS DOMAIN NAMES

4. WHAT SHOULD I DO TO PROTECT MY DOMAIN NAME/ TRADEMARK ON INTERNET?
1. Identify the domain name and register it as soon as you have checked that it is available to prevent a third party from
registering it.
2. Protect the trademark at a national level taking into consideration where the activity is going to be carried out, expansion
and development possibilities.
3. Identify the goods and services to be protected that will be incorporated online.
4. Prevent the risk of association or confusion with other current and future competitors.
5. Protect the content of the webpage through Intellectual Property: author rights and copyright.
6. Bookmark the words in social networks coinciding with the domain name.
7. Establish the general conditions for contracting and using the webpage understanding the importance of the commitment
that it involves.
8. Protect databases and source code if applicable.

5. I HAVE MY DOMAIN NAME REGISTERED ONLINE, HOW CAN I REGISTER MY TRADEMARK
1. Check availability: Carry out prior research of the word/s associated with the logo
2. Request the domain name as a trademark before the:
- Spanish Patent and Trademark Office (OEPM); Spanish trademark
- Office for Harmonization in the Internal Market (OHIM) Community trademark
- World Intellectual Property Organization (WIPO); International trademarK
3. The application must identify:
- Goods to be protected: Products or Services
- The sphere of activity (Consultancy etc...)
- Territory
- Prior viability report (availability)
4. There maybe similar trademarks for different spheres of use excluding the assumption of a well-known trademark
5. The registration of a company name identical to another company already registered in the mercantile registration is not
possible

6. I HAVE A REGISTERED TRADEMARK BUT THE DOMAIN NAME IS ALREADY REGISTERED
In this case, the trademark concedes an earlier right and constitutes a prior right, nevertheless to vindicate the domain name
there will be 4 processes:
Negotiation of a price
Legal procedure
In Spain, using experts who are official agents (ECEM, OMPI, registration agents..)
World Intellectual Property Organization (WIPO) in the Arbitration and Mediation centre
Requirements:
1. Accreditation of a prior right, in this case, a previously registered trademark
2. Non-existence of rights or legitimate interest
3. Bad Faith in the registration and/or use of the domain name

7. OPERATING ONLINE MEANS OPERATING ACROSS BORDERS, ADVANTAGES?
It will depend on its use in the national, international, EU or international sphere and the expansion prospects
- If operating in Spain, the trademark protection will be registered as a Spanish trademark: Effective in Spain.
- If operating at least in one or two countries in the European Union : register on a community level:
Effective: Across the European Union.
Obligation: effective use in at least one of the Member States.
- If operating with foreing countries, take into account whether or not:
The country is part of the WIPO- the trademark will be registered on an international level
The country is not part of the WIPO- the trademark will be foreign national
For example if operating in the USA, the registration can be carried out:
In the WIPO (as a member state) or
Registration request in the national country (USA)
The WIPO recommends this when through a Spanish or community trademark you want to extend the scope of protection
abroad.

7. OPERATING ONLINE MEANS OPERATING ACROSS BORDERS, ADVANTAGES?
Advantages of a foreign trademark (National Offices of each country):
Economics:
If you only operates in one country without expecting to operate in other countries
Foreign trademarks can extend the protection in designated countries. (In the United States and/or European
Union or any of the 80 countries in the WIPU)
Procedure:
The international trademark is a single application submitted to the WIPU where the protection can be extended to
interested countries.
If operating in Spain, Italy and US, register as a community trademark

8. MY TRADEMARK MATCHES WITH A DOMAIN NAME REGISTERED BY A THIRD PARTY
1. Check whether the domain name or the trademark was registered first
2. Check if the scope of application or activity sector coincides
3. If it doesn't, both of them can operate
4. If it coincides, you must consider that the trademark is neither well-known nor reputable, in this case it will be very easy to
establish the bad faith of the domain name owner in relation to the well-known trademark: Misuse
5. If trademark and sector coincides with the domain, you can initiate the recovery proceedings for the domain name or
dispute resolution procedures with the appropriate entities
Show that:
1. The domain owner has no legitimate interest or right and accreditation of bad faith in the use and registration of the domain
name.
2. Bad faith in the registration: Desire to obtain financial gain through the sale of the domain name
3. Provoked coincidence: Abuse of trust and brand awareness
4. Use of content, consumer confusion, passive holding, preventing online presence.

TRADEMAK REGISTRATION DOCUMENTS
Payment required

9. DOWNLOADABLE DOCUMENTS
Registration process of a national trademark
European trademark registration process and examples
National trademark registration process and examples
Registration process of a community trademark

Thank you for your interest
domainsandtrademarks@yourlegalconsultants.com
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Trademarks and Domain Names

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Trademarks and Domain Names