Licensed brands in cyber space – some alternative strategies to ponder

You may have a great brand and have used the brand in the United Kingdom for some time.  If you have, then you will have already have registered a UK trade mark to protect that brand.  If not then register it now!

There is not a week that passes in this office when one of our clients sends us an email, usually from some .cn, .tw or .hk domain name, purporting to be a registrar in China, Taiwan or Hong Kong which claims that “someone” is trying to register your brand in one or all of those countries.   Our client is usually in a panic and does not know the implications of the email that has been sent to them.

The first thing to say is ‘do you have any plans to sell your goods or services in any of those countries?’  If you have future plans to sell in any or all of those countries, then you should develop strategy in order to own a domain name relevant to your brand in each of the those countries.  However, you should choose the registrar that you want to use for the registration process.  Never, purchase from an unknown person on the internet.  You may as well give your money to a scam artist!  Make sure that your domain name is similar to your trade mark registration.

If you have discovered the domain name that you need has already been purchased and on further inspection it appears to be held by a ‘cyber squatter’, then, using your trade mark registrations, you can enter into ‘alternate dispute resolution’ to recover the domain name.  This process resembles a dispute in court, and so it pays to be prepared for most arguments.  It pays to have already registered a trade mark in most of the countries of interest, and you should line up your replies to most arguments that the ‘cyber squatter’ will raise.  Many ‘cyber squatters’ do not want to get involved with anything legal, but you should be prepared to deal with the action as quickly as possible and know in advance the procedure involved.

You may have noticed that recently a new set of top level domain (“TLDs”) names are to be made available to the public (such as .music; .law; or .bike).  Some of these TLDs are available now (such as .online; .store; .shop; .bar; or even .pizza).  These new TLDs are available for anyone to register using any of the domain name registrars.  The following domains are just entering their “sunrise period” and if you are quick you can register the domain you need “.computer, .support, .systems, .academy, .management, .center, and .solutions”.   You may want to consider these TLDs as an alternative to the better known “” or “.com” domains to use as part of your cyber presence and brand protection strategy?

If you find that you need some advice on any cyber issue or any issue to do with protecting your brand then just give us a call.  You will find that speak your language.

Call us at Trade Mark Associates on 01869 692888

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