Branding The conflict between trademarks, domain names and brands

Branding Lawyers London

As branding lawyers London we understand the difference between branding and a brand. Branding Lawyers London advise on establishing a brand, branding is an action. Whereas a brand is a noun, a marketing tool. We advise on both branding and brand protection.

Protecting your trading identity

The Internet has increased the difficulty and importance of protecting your trading identity in a global and highly competitive marketplace. The humble trademark still remains the most effective way of protecting your brand online. There are differences and similarities between a brand and a trade mark. A brand is an intangible perception in the mind of a customer. A blogger referred to it as: “brands are things to people“.

Branding Lawyers London

Branding Lawyers London

 

Brand versus Trademark

So a brand takes on its own valuable properties detached from the underlying goods and services. A trademark is something different. It is a legal instrument used to identify the origin of the relevant goods or service. In other words it does not necessarily have the same meaning as that attached to a brand.

Section 1 of the Trade marks act 1994 (TMA) defines a trade mark as:

any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings“.

For more information on UK trademark law refer to the Trade Mark Act 1994 – UK Trade Mark Law.

It is the effect of the sign that is important, namely that it is capable of distinguishing goods or services of one undertaking from the goods and services of another undertaking. Whereas the brand is identifiable by itself without any particular good or services being attached. This is certainly an interpretation.

Another interpretation is that a brand and a trade mark are the same thing. Like a brand a trade mark is intangible, it is distinctive, it is in a fixed form but there remains the complexity between the purpose of a trade mark and that of a brand. It is this complexity that forms the foundation for most litigation and arbitration relating to trade marks.

The legal system’s narrow view of trade marks versus the marketing community’s broader view of trademarks within the context of brand building and protection.

Branding Lawyers London

Branding Lawyers London

Conclusion

As mentioned earlier the introduction of domain names off the back of the Internet has further complicated the relationship between the brand and the trade mark. The invisible use of brands and marks in Google Text ads – see case and domain name marketplaces, offering domain appraisals, brokerage services and domain parking services demonstrate a conflict between the Internet and a traditional trade mark culture.

The extra judicial dispute resolutions procedures for dealing with this clash in cultures, ICANN, UDRP, NOMINET DRS, although imperfect have done a great job in dealing with the tension between domain names and trademarks.

 

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