Very often the question of how does a brand protect its goodwill and reputation on the Internet arises. We can find the answer to this question by explaining the terms: domain names, trademarks and passing off.

Domain names:
The Domain Name System (DNS) helps users to find their way around the Internet. Every computer on the Internet has a unique address called its ‘IP address’ (Internet Protocol address). IP addresses are strings of numbers and therefore hard to remember. For this reason, the DNS allows a familiar string of letters (the ‘domain name’) to be used instead of the IP address.

The general requirement for a domain name is, first, that it must be unique. A domain name, which is similar to another, is problematic. There are no set rules for what makes for a successful domain name. However, a domain name is successful, if it is one that precisely identifies the host, sets forth its general purpose/function and specifies whether it is international or domestic in scope.

Domain names are not necessarily trademarks. However, they are considered in many ways similar to trademarks as they perform the same function on the Internet, which is identifying the maker of the particular goods or the provider of certain services.

Just because an entity has a registered trademark, this does not automatically give this entity the right to use that mark as its domain name. Similarly, because the same mark may be registered by different proprietors for different goods or services, someone else may also have legitimately registered the mark as their domain name. Conversely, if an entity has a registered domain name, it does not automatically entitle that entity to a trademark in the same name.

Trademarks:
A trademark identifies the maker of a particular product or the provider of a particular service and acts as the customer’s kite mark that the product or service he or she is purchasing is of a certain standard or quality.

Trademarks allow the owner of a mark to register them on the Register of Trademarks-a publicly-accessible roll of marks- upon proof of qualification. Once this is done, a greater level of protection can be expected. This property right is not granted without reciprocal responsibilities, meaning the continuing obligation to exploit and use the trademark. Registration is essential for a trademark to be granted. Furthermore a trademark is valid as long as it is being used in commercial activity and it can become worthless if it takes on a generic meaning that no longer distinguishes on product from all others.

Anything that can be used to identify a business-an ‘identifier’-to distinguish one product from another or one service from another can be trademarked. However, this is subject to the proviso that the general public will recognise the identifier as a precise way to differentiate the business from another.

Under the Trademarks Act 1994 (TMA 1994), any or all of the following may constitute a trademark:

• numerals
• musical tones
• designs
• the shape of goods or their packaging
• smells
• letters
• colours
• words (including personal names)

The main qualification for a trademark is that it distinguishes the goods and/or services of one undertaking from those of another. In order for goods or services to be registered, a trademark must:

• be capable of graphical representation
• not be descriptive
• not be excluded under TMA 1994 
• be distinctive

Registration of a trademark lasts for ten years and the renewal period is also for ten years. However, there is no upper limit to the duration of a trademark, which can be renewed perpetually, so long as the mark has not been dormant for a period of five or more years.

A European Community trademark may be registered and be valid in all EU Member States with only one central application being submitted to the Office for Harmonisation in the Internet Market (Trademarks and Designs) based in Alicante, Spain.  The Community trademark operates simultaneously with the national systems in place in Member States.

At the international level, the Madrid Protocol provides for a system of international recognition of trademarks in that recognition in one signatory country will generally be recognised in another. The system is organised by the World Intellectual Property Organisation (WIPO) and offers a trademark owner the possibility to have his trademark protected in several countries by simply filing an application directly with his own national or regional trademark office. An international mark so registered is equivalent to an application or a registration of the same mark effected directly in each of the countries designated by the applicant. If the trademark office of a designated country does not refuse protection within a specified period, the protection of the mark is the same as if it had been registered by that particular office.

Passing off:
A ‘passing off’ action is designed to prevent one party from ‘passing off’ his or her goods or services as those of another. The TMA 1994 as amended still preserves the right of trademark owners to bring a common law ‘passing off’ action. This common law action is in addition to a trademark infringement claim that may be brought pursuant to the TMA 1994. It is particularly useful if one has, for instance, a brand name that is too common for it to be trademarked.

A claim of ‘passing off’ involves a misrepresentation made by a business entity in the course of its business to a potential customer that is designed to injure (or is reasonably foreseeable to injure) the business or goodwill of a competitor resulting in damage (or likely damage) to such a competitor.