Freelancers' Questions: Does a ‘co.uk’ domain have trade mark rights?
Freelancer’s Question: I'm setting up my website and I offer a series of design workshops with various titles. I’m aware that the title I'm using for one already has a ‘.co.uk’ address on the web. Does that mean it is copyrighted? There are other names that I also need to check to see if they are copyrighted; how do I do this to ensure I can use them on my own website?
Expert’s Answer: Having a registered domain name does not of itself give the owner of that domain name any trade mark rights. Assuming they have not registered it as a trade mark they may be able to claim trade mark rights under Common Law if they have been using the name for more than five years, promoted it widely and have built up a reputation in the marketplace.
But these rights only extend to the types of service or goods they offer. If these are unrelated to the workshops to be offered by you, then this should be of little concern, as risk of confusion in the marketplace is low.
If on the other hand the URL was used for pages promoting similar workshops, then the domain owner may have arguments against your use. However the owner would need to establish their rights under Common Law or register the name as a trade mark before being able to prevent your use. From a practical standpoint, it seems you would have time to change your workshop title’s name without needing to pay any sort of compensation, unless it was clear that you had been trying to benefit from any confusion among consumers.
The simplest way for you to establish what trade mark rights
you may be infringing, not just from identical names but those that are confusingly
similar, would be to go through the process of registering the name as a trade
mark, which of course also secures it for your own use.
Like a few other organisations, we offer a service where you only pay if the registration can be expected to succeed, or otherwise there is nothing to pay. So there is little to lose and potentially much to gain.
The expert was Mark Kingsley-Williams, founder and director of Trade Mark Direct.
Editor's Note: Related Reading -
5th August 2015