Domain Names & Trade Marks

It used to be the case that a .com website address was the premier form of online presence. The world of eCommerce is developing, and the adoption of the new Generic Top-Level Domains (gTLD) program will result in the launch of approximately 1,900 new gTLDs over the next few years.

Each new gTLD will launch with a "Sunrise Period". The Sunrise Period will allow trademark owners to secure domain names, matching their registered trademarks, before the gTLD is made available to the general public. This gives trademark owners a distinct advantage and, generally speaking, you may pick-and-choose any combination(s) of trademark and gTLD that appeal to you.

This provides tremendous opportunity to trademark owners, who will now also be able to record domain name variations of their trade marks. For example: Royal Flush Plumbers (Pty) Limited may now be able to host their web site at www.royal-flush.plumbing

The vast number of TLDs also poses a degree of risk for trademark owners, as domain names could later be registered by a "cyber-squatter" or even a third party with a legitimate right to the domain name.

There are also, literally, hundreds of new domains that are now available for your registration and use, and which do not require you to hold any trade mark for this.

It is very important to be aware that domain name registries operate entirely independently of trade mark registries. The mere fact that you might hold a trade mark does not automatically guarantee you the right to obtain a corresponding domain name.


Domain Names & Business Names

Unfortunately, it is also the case that domain name registries operate entirely independently of company name registries. The mere fact that you have a particular company name does not automatically guarantee you the right to obtain a corresponding domain name. This often comes as a terrible shock to many clients!

We always like to suggest taking your destiny in your own hands, and that the best course of action will always be to act preemptively and defensively. As far as it is possible, we suggest filing an application for your company's name, corresponding to the trade mark application. The same goes for Domain Names – it is always advisable to register domain name corresponding to your trade mark application.

Also bear in mind that, just like a telephone number, Domain Name applications, typically, are dealt with on a first-to-file basis and, generally speaking, it is possible for any person to register any desired Domain Name, and there is always a real danger of a third party acquiring domains that are confusing similar to your company name or your trade mark. So the message is clear: be aware that a single trade mark registration / company name registration / domain name will not, automatically, permit you to stop others from acquiring any other. Do yourself a favour, and do not leave matters to chance. Or to your competition.

Finally, if identical, or confusingly similar, trade mark / domain name / company name issues are threatening your business, relief may be at hand. The Companies Act and the Trade Marks Act both provide a series of remedies, for example, to compel another person to change their company name. In addition, the various Domain Authorities have a series of rules and remedies that may be relied on to assist you.