Lost In Space

Protecting your brand name. The Vast abyss of the digital universe is largely unexplored by most, and as such an opportunity exists for cyber squatters, scaremongers and the general unknown to illicit money from quality practicing UK brands. Brand Protect's Bernard Whyatt advises on steps worth taking to ensure your brand name does not get lost in cyber space.

If you are in the situation where you have a great brand which you have franchised in the United Kingdom for some time, then you will have already have registered a UK trade mark to protect it. However, with regard to international brand registration, every week, without exception, our offices receive at least one email from a worried client reporting that they have been contacted by a .cn, .tw or .hk domain name, purporting to be a registrar in China, Taiwan or Hong Kong. The email in question usually claims that a ‘Mr Wong’, for example, is trying to register the franchised brand in one or all of those countries.

Upon reading this, the client is usually in a panic and does not know the implications of the email that has been sent to them. If you ever find yourself in this situation, the first thing to question is: ‘do you have any plans to sell your goods or services in any of those countries?’ If the client has future plans to sell in any or all of those countries, then their strategy is to own the relevant domain names in each of the target countries. However, the client should choose the registrar that it wants 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.

If you discover the domain name you need has already been purchased and appears to be held by a ‘cyber squatter’, i.e. someone who registers a domain relating to your business, 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. In this case, it pays to have already registered a trademark 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.

If you find yourself in the position where you miss out on a targetted domain for whatever reason, it is worth remembering 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 domain name registrars. You may want to consider these TLDs as an alternative to the better known .co.uk or .com domain to use as part of your cyber presence.

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 we speak your language.