If you intend to register a TM for a domain name or face the need to resolve a domain dispute in Germany, it is worth considering some peculiarities of the legal requirements, which are described in today's blog post.
Domain rights protection in Germany
The question of who has the rights to a domain is broadly a trademark law. It should be borne in mind that a word mark is best suited to protect a domain name. If you intend to register a TM in Germany as a combination of verbal and figurative, it will be better for the domain name if all verbal elements prevail.
When filing a registration application with the GPTO patent office, it is important to ensure that the protected domain has distinctive characteristics by which it can be identified.
IMPORTANT! Only the second level domain is subject to protection under the current legislation, which is responsible for the regulation of TM in Germany. Top-level elements of the domains such as .de, .eu, .com, .org are not protected.
Before applying for the registration of a German TM, it is necessary to search the online database to find out whether the selected domain name has already been protected as a trademark by another company.
It is important to consider that in terms of brand protection in the EU, it is beneficial if the domain name matches or at least contains the name of the company or product. If the name of the company or product is already protected as a TM, this automatically also has a protective effect on the domain name, without the need for additional steps to obtain TM protection in Germany.
The owner of a registered TM can legally challenge identical and similar names in domains if the domain name is confused with a protected TM in the same industry.
For domain disputes in Germany, there are three grounds for filing a claim. This means that the success of the claim will be determined taking into account the proof of each of the three circumstances:
- the domain name is identical or deceptively similar to the mark for goods and services to which the claimant has rights;
- the domain name registrant has no rights or legitimate interests in relation to the domain name (s) being the subject of the claim;
- the domain name (s) has been registered or is being used in bad faith.
A critical element that must be proven is that the disputed domain name must be identical or deceptively similar to the mark for the goods and services to which the claimant is entitled. In support of this circumstance, plaintiffs usually attach copies of registration certificates for marks for goods and services of national and / or international registration authorities to their claims, demonstrating their rights to marks.
The basis for the commencement of the administrative process is filing a claim to delete the domain name or re-delegate its registration to the plaintiff.
As a general rule, a claim for a domain name in Germany is based on the mark (or marks) registered before the date of registration of the disputed domain name for goods and services. It is important that the plaintiff is not required to register the mark in Germany.
Before filing a claim with the court, the plaintiff must conduct his own research in relation to the disputed domain name, its registrant, analyze the conditions for registration and use of such a domain name, and state in detail his arguments and considerations, supported by appropriate evidence, in the claim.
It should be remembered, however, that filing a claim against multiple domains in Germany would result in an increase in the official fee depending on the number of domains.
Comprehensive brand protection should include the registration of the domain name in the EU or the country where the business is planned. If you need advice on IP regulation in Germany, do not hesitate to contact our qualified legal advisors.
Our seasoned professionals provide the full scope of consulting and accompanying services in the process of registering a TM in Germany and other jurisdictions. We also provide assistance in TM dispute resolution in Europe.