A trademark (eg, GEVERS) is an IP right which can be defined as a sign that is used to identify the origin of products or services from one undertaking as opposed to the products or services of another undertaking (‘origin function’). Essential conditions for trademark protection include distinctiveness (ie, a mark’s capacity to fulfil this origin function) and non-descriptive character in relation to (for example) the nature, characteristics and main purpose of the relevant goods or services, as well as the trademark’s availability on the market. Rights holders have the exclusive right to object to any infringement by a third party.
Unlike a trademark, a domain name (eg, ‘gevers.eu’) is a contractual right which is primarily used to identify a website. In most jurisdictions, it cannot serve as a basis to oppose the commercial use of a sign or the registration as a trademark of a sign that is contained in a domain name (eg, GEVERS). In short, the exclusive character of a domain name holder relates and is limited to the domain name as such.
Typically, the fact that different products or services are offered under identical or similar trademarks by different companies excludes a risk of likelihood of confusion as to the origin of the products or services (eg, GEVERS for legal services and GEVERS for food products). Therefore, it is perfectly conceivable that two (or more) companies could use identical or similar trademarks (ie, co-existence) and that they have mutual interest in one or more identical domain names (eg, ‘gevers.eu’, ‘gevers.com’ and ‘gevers.be’).
In addition, things are even more complicated if a third party registers a domain name of interest (anonymously) with the sole intention of selling it expensively to persons of interest (so-called ‘domain name squatting’). In the worst case scenario, a trademark holder faces the fait accompli that a domain name of interest has already been registered by a third party. Indeed, the ‘first come, first-served’ principle for domain names prevents a trademark holder – despite its (older) trademark registration – from claiming domain names of interest, save for cases of bad faith or the infringing use of a domain name.
Aside from registering the distinctive signs used in commerce as a trademark, it is also strongly advisable to register all domain names of interest in order to secure internet visibility.
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