Re: [ICANN-EU] TM vs. DN -

[Jeff Williams <jwkckid1@ix.netcom.com>]

Alf and all,

Alf Hansen wrote:

> Andreas,
>
> Andreas Fügner wrote:
> >
> > Dear Jefsey:
> >
> > >=> Has anyone proven that domain names fall under TM laws?
> > >No.
> >
> > "A Mark is a sign, or a combination of signs, capable of distinguishing the
> > goods or services of one undertaking from those of other undertakings. The
> > sign may particularly consist of one or more distinctive words, letters,
> > numbers, drawings or pictures, emblems, colors or combinations of colors, or
> > may be three-dimensional, such as the form of containers or packages for the
> > product (provided they are not solely dictated by their function). The sign
> > may also consist of combinations of any of the foregoing."
> > (WIPO, go to http://www.wipo.org/eng/newindex/madrid.htm)
> > France is a member of the Madrid Union as well.
> >
> > "What Is a Trade Mark?
> > A trade mark is a sign which is capable of
> > distinguishing the goods and services of one
> > undertaking from the goods and services of another
> > undertaking. Not only words, letters, numerals and
> > designs may be protected as signs of this type, but
> > also sound marks and three-dimensional
> > configurations or other packaging."
> > (German office for patents and marks)
> >
> > Still any doubts, that a Domain Name, under which an undertaking
> > distinguishably offers goods or services, falls under the definition above?
> >
> > Andreas Fuegner
>
> When registering a domain name, you know that the DN can be used as a
> label for goods or services, so it is obvious that it falls under the
> definition.

  This is of course not true in all cases.

> It is also obvious that if you register a DN which is
> already protected by the TM law, you must be prepared for a law suit.

 Again not necessarily.  If the DN is not for the sale or use of goods and
services, than one should not be expecting a law suit.

> It is therefore in the interest of the registrant to check the TM status of
> the DN before the application is sent.

  This is also incorrect in the US and in accordance with most international
treaties that cover this area.  Most are no specific with respect to DN's
or the internet yet.  However, it is still incorrect as before you can file a
TM on a given name, ect. you must first show a use in commerce.  Hence
you have this exactly backwards...

>
>
> Best regards,
> --
> Alf Hansen                     Mail address:
>                                  UNINETT FAS A/S
> aha@uninett.no                   N-7465 Trondheim, Norway
> Home page:                     Phone: +47 73 55 79 00
> http://domen.uninett.no/~alf/  Fax:   +47 73 55 79 01

Regards,
--
Jeffrey A. Williams
Spokesman INEGroup (Over 112k members strong!)
CEO/DIR. Internet Network Eng/SR. Java/CORBA Development Eng.
Information Network Eng. Group. INEG. INC.
E-Mail jwkckid1@ix.netcom.com
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