Registered Trademark vs. Domain Name

In the context of accelerated digitalization, more businesses are consolidating their presence both offline and online. In this process, brand identity protection becomes essential, and two primary tools used for this purpose are trademark registration with OSIM (Romanian State Office for Inventions and Trademarks) and the acquisition of a domain name. Although seemingly similar, these two procedures are subject to distinct legal frameworks, with different implications for their respective owners.

Definition and Legal Protection

A trademark is a distinctive sign registered with OSIM, used to identify a trader’s goods or services to consumers. According to Law no. 84/1998 on Trademarks and Geographical Indications, a trademark can consist of a word, phrase, logo, slogan, or any combination thereof.

Registering a trademark grants the holder exclusive rights of use and protection against unauthorized use by third parties, in the territory where the trademark is registered and for the product/service classes defined under the Nice International Classification.

A domain name, on the other hand, is a unique web address that allows access to a website. In Romania, domain names can be acquired through RoTLD (the National Register for “.ro” Domains) without conferring exclusive intellectual property rights. The domain name merely grants the holder the right to use that specific domain online, without providing extensive protection against potential unauthorized use of the brand’s elements.

Registration Procedure and Duration of Protection

A trademark is registered through a complex process with OSIM, which involves filing an application, formal and substantive examination, publication of the application, and possible third-party oppositions. If no oppositions are raised, or if they are rejected, OSIM issues the trademark registration certificate. The duration of protection is 10 years from the filing date, with the possibility of unlimited renewals for successive periods of 10 years.

In contrast, a domain name is registered relatively quickly and simply, following the “first come, first served” principle. Acquiring a domain name does not involve checking for similar registered trademarks. The right to use the domain name is time-limited and requires annual renewal or can be registered for up to 10 years, depending on the holder’s preferences.

Rights and Limitations

Registering a trademark grants the owner an exclusive, enforceable right against third parties concerning the use of the trademark in commerce for the product/service class it is registered under. A registered trademark holder can request the prohibition of the use of identical or similar marks by other economic operators if such use causes consumer confusion. The trademark provides protection against unfair competition and enables infringement actions.

For domain names, rights are limited to the use of that domain in the online space, without automatically providing protection against the use of a similar or identical name offline. However, if a domain name conflicts with a registered trademark, the trademark holder may claim infringement, and domain name disputes can be resolved either through the UDRP (Uniform Domain-Name Dispute-Resolution Policy) or through civil litigation.

Disputes and Litigation

A common issue arises when a domain name registered by an individual conflicts with a registered trademark. Trademarks grant exclusive rights to the sign, allowing the trademark holder to reclaim a domain name that infringes their rights, especially in cases where the domain was registered in bad faith (cybersquatting). Domain name disputes are typically resolved in court, but alternative dispute resolution mechanisms, such as the UDRP, are also available internationally.

On the other hand, a domain name does not automatically provide protection for a distinctive sign beyond the online environment. Domain name holders do not have priority over a registered trademark, and mere possession of a domain does not constitute proof of intellectual property rights. In cases of conflict, priority is generally given to the registered trademark.

Recommendations for Brand Protection

For comprehensive brand protection, it is advisable to register both the trademark with OSIM and the corresponding domain name. This helps avoid potential conflicts where a third party acquires a domain name similar to your trademark, or vice versa. Additionally, the protection offered by a registered trademark is far stronger and more extensive than merely owning a domain name.

Registering a trademark and acquiring a domain name are distinct legal procedures with different implications for brand protection and use. A trademark provides extensive legal protection and exclusivity, while a domain name is essential for online presence but does not automatically grant rights over the brand as a whole. For adequate protection, businesses should consider both aspects in their branding and intellectual property strategy.

For more information, please contact us at +40 792 422 919 or email us at contact@irimia-ip.ro.