Trademark Claims and Domain Names

6 Oct 2017 / Aliesha Ellington

Just like a nifty invention which you have trademarked the name of, domain names can also be trademarked. Imagine if you had created a brand like Zespri, selling kiwifruit. People can go to your website zespri.com and find suppliers, order kiwifruit for their shops, find out product information, contact the company etc.

They have most likely registered the domains for zespri.nz and zespri.biz, however new extensions are created quite often, .kiwi for example is fairly new. Someone else may choose to buy Zespri.kiwi for themselves, and create a fraudulent site, loosing the real Zespri some customers and popularity. Someone might even decide to sell kiwifruit from that site and others would assume it’s the real, reputable company. There have even been cases in the past where a people have purposely bought domain extensions of a company, and then tried to sell them back to that company at very high prices.

There are so many extensions now, it is very unlikely that any company would have bought all of the possibilities realistically, and that could also be an expensive and time consuming endeavour, surely there’s a better way. Withnew extensionscoming out every day it’s very hard to keep on top of things, .bike, .clothing, .guru, .plumbing, the list is ever increasing.

So what can you do to protect your brand?

That’s where trademarking comes in.

There are many benefits to trademarking your company name (which will in turn trademark the use of your company name in your domain name).

The main benefits are:

  • You have exclusive rights for using your trademarked name throughout NZ (or the country you register it in).
  • You can then use the ® trademark symbol with your company and site name.
  • You gain legal protection, deterring others from imitating your brand.
  • You add increasing value over time to your business, as the trademarked name becomes well recognised and established within the market.
  • You can choose to sell your trademark at a later stage to another person or company, or licence the use of it to others. As is done with Franchise businesses.

How to Register a Trademark in New Zealand

First go to The New Zealand Intellectual Property Office’s websitehere.

On this page you can use their search tool to check that your company or domain name is available. You can also use the search bar later to manually check that no one else has a name with your trademark, and it will show if there is a claim under that name pending.

Then once you are ready, go to thispageto apply for a trademark, within the same site.

 

You then have the option of registering with the Trademark Clearing Househere

This is an international site which monitors new trademarks being made, and checks for infringements. If they find a potential infringement they will send a warning notice to both you (as the owner) and the person trying to register or use your trademark, letting you both know that a potentially illegal action is taking place, and warning against it. Should they choose to proceed, you will be informed again, and will then be able to pursue legal action on your own. Alternatively, you can choose to check regularly yourself through a search tool, however the Clearing House is the easiest way.

Domain registration companies such as Freeparking are also legally obligated to notify clients. As well as those attempting a trademark infringement, when someone else using the site tries to register a domain with a trademarked word or name in it. Freeparking has a system in place to monitor and notify you should something like this occur.

If you are in the USA you can use a site such asthisto register your trademark.

What if someone still registers the name after they are warned?

Generally, once people receive a warning that is a sufficient deterrent and the process stops there. However sometimes trademark infringement does happen. You will be able to see the contact details of the person who hasregistered the domain  with your trademark in, you can then email them and ask them to remove it themselves. If they will not, it’s at that point where you would then call your lawyer and take legal action. 


Not sure which plan's best for you? Ask our experts on 0800 373 372


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