IN THE UK OFFICE

Practice Points

Domain names as trade marks

The UK Office has recently issued details of the way in which it will now examine applications to register domain names as trade marks. The updating of Office practice primarily concerns how the inherent registrability of domain name trade marks is to be viewed.

Advertisements, publicity materials and packaging have all recently provided a medium for the prominent display of domain names as the main trade marks under which goods and services are promoted and sold. Lastminute.com, Breathe.com and Jamjar.com are but three domain names that have been seen regularly in advertisements by viewers of UK prime time television over the past six months or so. In each case, the trade mark appearing in the advertisements is not the word preceding the ".com" suffix, as one might have expected one or two years ago, but is the complete domain name.

The Office’s practice now takes account of this trade mark usage of domain names and states that, subject to the usual criteria for registrability, domain names are able to be registered as trade marks.

How does the Office view the inherent registrability of domain names? Their starting point is that the domain name suffix itself is considered to be totally non-distinctive. It is regarded as being akin to "Ltd." or "plc", indications of the corporate nature of a company. In the same way, domain name elements such as ".com", ".co.uk" and ".org.uk" serve to indicate the owner’s electronic address and may also indicate the nature of the trade mark owner, for example it may indicate a private company or a non-profit organisation. The extent to which a domain name will be considered registrable as a trade mark will depend primarily upon the nature of the remainder of the domain name and objections can therefore be expected where that remaining part is itself completely non-distinctive.

Having said that, the Office does envisage occasions where a domain name suffix could create sufficient distinctiveness to make a normally non-distinctive word mark registrable in the form of a complete domain name. This is likely to arise in cases where the wording which precedes the ".com" or other domain name suffix is wording to which it would be unusual to add ".com". The example quoted by the Office is canandwill.com where Can and Will alone would be refused by the Office as a slogan merely describing an approach to business but the addition of ".com" would be considered to produce a combination sufficiently unusual to give a trade mark character to the otherwise non-distinctive slogan.

 

Marks prefixed by "E" or "m"

The Office has also recently published details of how it will examine marks with an "e-" or an "m-" prefix denoting "electronic" or "mobile" respectively.

 

Marks with an "e-" prefix

The Office considers that the "electronic" meaning of marks having an "e-" prefix is now common knowledge amongst the public. The enormous increase in electronic transactions taking place across the Internet over the past few years and the number of advertisements now prominently displayed for making electronic purchases have meant that few people can remain unaware of electronic commerce whether or not they avail themselves of these facilities.

As to the registrability of such "e-" marks, the general rule is that if the mark would be considered objectionable if the word "electronic" instead of "e-" were placed in front of the remainder of the mark, then the "e-" prefixed version will also be objectionable. For example, "e-learning" for computerised distance learning courses would be objectionable because it is just as non-distinctive as "electronic learning" would be.

The Office will, however, pay consideration to the nature of the goods or services for which the owner seeks registration of the "e-" prefixed mark and if the goods/services are not directly linked to or provided by telecommunications means, then the mark may be registrable. Presumably a mark such as e-brain for restaurant services should be acceptable on this basis.

 

Marks with an "m-" prefix

The trend for on-line transactions using mobile phones (m-commerce) has already begun with the advent of WAP (wireless application protocol) phones and many of the on-line services offered have been the subject of heavy television advertising by the major mobile phone network providers in this country. The next stage will be the introduction of the UMTS or third generation mobile phones and networks, the licences for which were auctioned in the UK last year by the Government. These phones will offer much faster Internet access than the present WAP phones. By 2003 an estimated 30-40% of on-line purchases will be made using mobile phones rather than personal computer Internet access.

The Office expects numerous applications to register "m-" prefix marks by service providers in this area. They have therefore decided at this early stage that these marks should be treated for examination purposes in the same way as "e-" prefix marks. Thus, if the entire mark would be objectionable if the words "mobile phone" were placed in front of the remainder of the mark instead of

"m-" then the "m-" prefix version of the mark will be objectionable. For example "m-advertising" will be no more registrable for advertising services than would "mobile phone advertising". Although it is not stated in the Office’s practice notice, we assume that the Office will, as with "e-" prefix marks, take into account the nature of the proposed goods and services when examining applications.