Trademark for a domain name

For many people, a trademark is a logo on a package or the brand name of a particular company. However, this is too narrow a view. A trademark can be any designation intended to individualize goods or services, including the name of a website. The main thing is that it meets the requirements of the law and does not violate the rights of others.

Registering a domain name as a trademark is becoming an increasingly common solution. Why the site owner should take care of protecting his interests in advance, and what needs to be done for this – I tell you in the article.

Why register a domain in the trademark registry

Today it is difficult to find a business that is not represented on the Internet. The original name of the site makes it recognizable, evokes associations with a specific brand among consumers and helps its promotion in the market.

If a character set is already registered in the domain name registry, no one will be able to choose the exact same name for their site. But The uniqueness of a domain does not mean a lack of similarity with other people's intellectual property objects. This leads to disputes and litigation.

For example, Keyfood Pro LLC offered delivery of ready-made food on the website sushivostok.ru. As it turned out later, a similar trademark “VOSTOK SUSHI” for the same class of services was registered by another copyright holder – Sushi Vostok LLC, which went to court to protect its rights. All courts supported the plaintiff and declared the defendant’s actions to use someone else’s designation in the domain illegal. Compensation was recovered in favor of the copyright holder.

Registering a domain as a trademark provides important benefits. After this, other persons do not have the right to use the designation without the consent of the copyright holder. Penalties are provided for violations: the owner of the sign can recover compensation of up to 5 million rubles from the culprit, demand the initiation of administrative proceedings and even a criminal case.

Registration of a domain in the domain name register and in the Rospatent trademark register are different procedures, they have different purposes and legal consequences.

To start using the site, registration in the domain name registry is sufficient, but it does not provide reliable legal protection.

Which site name can be registered as a trademark?

According to the Civil Code of the Russian Federation, a trademark can be a unique designation expressed in any objective form: in the form of a picture, a word or phrase, a three-dimensional figure, etc.

A domain name is usually registered as a word mark or included as a word element in a combined designation.

For example, some words that initially denoted the products of a particular manufacturer later began to be used more widely – such as definition for product type (thermos, photocopier, popsicle, tape recorder, linoleum and others). If a domain name consists only of such words or combinations thereof, it will not pass examination as a trademark. The same goes for common terms and symbolsif they relate to the area for which the designation is registered.

When registering a domain, legal protection does not apply to letter combinations “ru”, “com”, “org”, etc.since these are generally accepted designations that cannot belong to one person.

Name of the product type (for example, tea), as well as its characteristics (Ceylon, natural) may be in the name if they do not occupy a dominant position, but they will also be unprotected elements. If there are no other elements, the designation will not be registered.

The site name should not include official names and symbols (for example, names of countries, international organizations).

A complete list of circumstances under which the law prohibits registering a designation as a trademark is listed in Article 1483 of the Civil Code of the Russian Federation.

The key condition for registration is – lack of identity or confusing similarity with other people's trademarks. Designations registered in relation to similar goods (types of activity) that are already included in the state register or submitted for registration earlier are taken into account.

For example, if a company registers a mark for the development of computer programs, the presence in the register of a similar mark for landscaping services will not be an obstacle to the issuance of a certificate. And if a similar designation has already been registered for services in the IT field, the new application will not pass the examination.

How to register a domain name with Rospatent

Registration procedure is the same for all types of trademarks and follows the following algorithm:

• the applicant prepares an application indicating the data listed in the order of the Ministry of Economic Development of Russia, pays the fee and submits documents to Rospatent in paper or electronic form;

• the patent office registers the application and conducts a formal examination (checks the completeness of materials, compliance with the law, payment of fees);

• if the results of the formal examination are positive, a substantive examination begins, during which the protectability of the applied mark is assessed;

• depending on the results of the main examination, Rospatent registers the designation or makes a reasoned decision to refuse (it can be appealed in court);

• After paying the final part of the fees, the copyright holder is issued a certificate for the trademark (in electronic form, and, if desired, on paper).

During the processing of an application, the registration authority often sends requests, the answers to which are best answered promptly so as not to delay the deadline. According to the regulations, the entire procedure may take up to 15 monthsbut if you act through a patent attorney, you can meet 5-8 months.

The amount of fees depends on the number of classes of goods (services) for which legal protection is requested, and the form of submission of documents. If you submit your application online, the standard fee is reduced by 30%.

Cost of registering a mark for one class the ICGS will be minimum 21,700 rubles (with a discount for electronic filing and without receiving a paper certificate). If there are several of them, the fee will increase. At the stages of formal examination and registration of the designation, you will have to pay an additional 1,000 rubles for each additional class over five, and for the main examination – 2,500 rubles for each class over one. A paper certificate will cost another 2,000 rubles.

Information about the registration procedure and samples of filling out the application are posted on the Rospatent website. You can fill out the documents yourself and submit them in a convenient way, for example, through your personal account on the government services portal. If you don’t have the time or desire to do this, there is another way – order registration from a patent organization. The first personal consultation in such companies is usually provided free of charge, so you can discuss the issue with a specialist and then make a decision.

Domain disputes

In judicial practice, domain disputes are called disputes regarding the use of domain names, identical or similar with registered means of individualization. The initiator of legal proceedings is usually the copyright holder. Among the most common demands are a ban on the use of the controversial designation and the recovery of compensation for violation of rights.

Often companies register to attract customers domain names that include the names of famous brands or are similar to them. If the applied name differs from an existing name by at least one character, the registrar has no grounds for refusal. And site visitors most likely won’t even notice this difference. As a result, the violator makes money on the reputation of a well-known trademark without paying the copyright holder a penny.

For example, two companies in the Orenburg region provided diagnostic and repair services for electrical equipment through the website samsung-official.ru. This continued until the site was discovered by the copyright holder of the Samsung trademarks – the foreign company Samsung Semiconductor Co., Ltd. The owner filed a lawsuit to prohibit the use of the specified designation in the name of the defendants’ website and to recover compensation. All demands were satisfied by the court.

The same company on another matter achieved a ban on the use of the domain name sammsung.ru, which the court found to be phonetically similar to the plaintiff’s protected mark.

The actions of violators do not always have such obvious intent. The site owner may simply not check for similar trademarks before registering a domain name. In this case, the copyright holder’s claims may be unpleasant news for him. However, this will not affect the outcome of the legal dispute. If a company uses someone else’s designation for a website with similar goods or services, the decision will definitely not be in its favor.

Another category of disputes, on the contrary, is related to “hijacking” domain names. In this case, unscrupulous entrepreneurs register means of individualization that are identical to other people's domains, and then demand compensation for violation of the exclusive right.

In such cases, it will matter which arose first: the priority date of the trademark or the domain registration. If the site was created much earlier and was used before the registration of the mark, the court will most likely take the side of the defendant.

For example, Kalibr LLC failed to achieve cancellation of the registration of the domain name simpledoc.ru, owned by the entrepreneur. The plaintiff justified his claims by the fact that he owns the SIMPLEDOC trademark, registered for the same services that the defendant provides. However, the court found that this mark was registered by Rospatent only in 2021, while the entrepreneur had been using the site with the disputed domain name since 2014. In addition, the company did not provide evidence of use of the trademark. As a result, the court found an abuse of rights on the part of the plaintiff and rejected the claim.

How to protect a domain name: a reminder for the site administrator

The optimal solution is to think about the legal protection of a domain name at the stage of choosing it. This is simpler from a technical point of view: you can immediately come up with a unique protectable name, which Rospatent will register without any problems.

When a domain has been in use for a long time, it can also be registered as a trademark in order to insure against unfair competition. The algorithm of actions in different situations will be different.

Situation one: you are just planning to create a website and are choosing a domain name

Here it is important to think ahead and select a combination of symbols that will definitely pass the Rospatent examination as a trademark. Such a designation:

• does not coincide with someone else's trademark, trade name or commercial designation;

• does not violate the rights of other intellectual property owners, for example, authors of works;

• meets the other eligibility criteria discussed above.

You can check the designation yourself using the service on the FIPS website or entrust the search to a patent attorney. The second option will give a more accurate result. Firstly, specialists search for matches not only in publicly available databases, but also in paid ones. Secondly, they know what to pay attention to, because they solve such problems every day.

If you find a match with someone else's means of individualization during the check, the designation will need to be improved, for example, by adding symbols to increase uniqueness. But sometimes the similarity is so significant that it is easier to come up with another domain name.

If there are no obstacles to registering a specific website name as a trademark, you can buy a domain and then send documents to Rospatent.

Situation two: you want to register a recognizable domain name that you already use with Rospatent

The first step here is the same: you need to check the protectability of the domain name as a trademark. If no one has yet used a similar means of individualization, we draw up the documents and submit an application for registration.

But if it turns out that the same or very similar designation has already been issued to another owner, difficulties await you. Rospatent will refuse registration if someone else’s trademark is registered for similar goods or services. Moreover, further use of such a domain name is fraught with claims from the copyright holder.

It will not be possible to uniqueize the actual site name, so there are two options left:

• try to cancel a competitor's trademark;

• negotiate with the copyright holder and use the designation legally.

Challenge legal protection a trademark can be granted on specific grounds, which are listed in Articles 1512 and 1514 of the Civil Code of the Russian Federation.

When none of them is there, what remains is negotiate with the copyright holder. You can enter into a licensing agreement with him or buy the trademark under an alienation agreement. In the first case, the scope of your rights will be determined by the terms of the transaction, in the second they will completely transfer to you. Or, on the contrary, you can agree on the sale of your online store to the owner of the trademark, if both parties are interested in this.

There is a third way – To do nothing. But in this case there is a high risk of meeting the copyright holder in court. As a rule, the court takes the side of the legal owner and seeks compensation in his favor for unlawful use. Its size can amount to millions of rubles. The exception is a clear abuse of rights on the part of the copyright holder, but there are few such cases in legal practice.

What conclusion can be drawn? Even if you independently came up with the name of the site and openly used it, it is not a fact that this will protect you in a dispute with the copyright holder of a similar trademark. Therefore, it is necessary to act proactively and formalize the rights before competitors or patent trolls do this. Then, even in the event of a legal dispute, it will be much easier to protect interests.