Trademarks and domains

In recent times, it has become increasingly difficult to find a domain name which suitably represents a product or service. This is because the courts have affirmed the position in case law that the proprietor of a domain name, which enjoys trademark protection under German law, has exclusive rights to that name.

This raises the question of how two proprietors of trademarks are to conduct themselves where there possess fundamentally different products but make use of the trademark name.

What happens if one person owns the original trademark rights and second person has registered the domain name?

Generally, a trademark infringement does not occur where a domain name is registered by another person. Indeed, an infringement scenario arises only once that person begins to offer products or services which are similar to those which are already protected by a trademark.

Exceptions to this rule include high profile cases such as “Apple” or “Coca Cola”, where the registration of a similar domain name would amount to a trademark infringement.

Where there is a risk that a domain name could be confused with a trademark, the proprietor of that trademark may be able to assert his rights.

It is important to note that the differentiating use of capital and lower case letters does not exclude a possible claim, as a risk of confusion still exists.

However, the general position is that the person who registers a domain first, has exclusive rights to use it.

A further problem which arises in the area of domains is misuse. An example of domain name misuse would be where a well-known trademark is used by a third person in order to sell cheap imitation goods. This would be the case where a person uses the domain name www.armani.org to sell an imitation Armani collection.

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Do you need to register a trademark or do you have questions about an already registered trademark? We are happy to help! Our expert German lawyer Kilian Kost is available to answer your questions. Call us on +49 (0) 221 / 951 563 0.
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Christian Solmecke is a partner at the law firm WILDE BEUGER SOLMECKE. He is the author of numerous legal publications in the area of internet and IT law. He is also an associate lecturer for social media law at the Cologne University of Applied Sciences.

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