When filing your trade mark applications, beware someone is watching you!

March 2018

HGF have recently become aware that third parties are scanning the online trade mark registers from the United Kingdom Intellectual Property Office, the European Union Intellectual Property Office and potentially other trade mark registers and proceeding to register domain names for, or including, those trade marks.

The domains are being registered for the identical trade mark or for variations of the trade mark, often with the intention of selling the domain back to the trade mark owner for a profit. Conflicting domain name applications are often filed within a few days of the original trade mark application filings, sometimes in a matter of a few hours. This is a particular problem as often the trade marks concerned have not yet been used.

Although, it is possible to retrieve a domain name registered by a third party in bad faith, and HGF has considerable experience of filing domain name complaints under the Uniform Dispute Resolution Policy (‘UDRP’) before the World Intellectual Property Office (‘WIPO’) and under the Dispute Resolution Service (‘DRS’) of Nominet and other domain name organisations, with the case law generally in the favour of the complainant in these circumstances, filing a domain name complaint does involve a cost and a time investment.  

The firm is therefore recommending to clients that if they wish to register any domains including a new trade mark or brand, these domains should be registered prior to filing the trade mark application to ensure a third party does not get there first.

HGF also offer a domain name watching service which will alert us to identical or similar domains which have been registered. These can be set up for country code gTLDs and/or new gTLDs which are released. The watching service is charged on an annual basis and is a fixed cost, regardless of the number of domain notifications received.

If you would like any further information regarding the above, please speak to a member of the Trade Marks team or your usual HGF contact.

This update was prepared by HGF Partner Lee Curtis. If you would like further advice on this or any other matter please contact Lee or your usual HGF representative, alternatively visit our Contact Page to get in touch with your nearest HGF office.