Trademark registration of a Domain Name in India

At the time of deciding on a brand name we usually check if the domain name is available. Most of the times when a domain name is available in the .com or the .in extension the brand names are positive for a trademark registration, but this might not be the case always. As per the Trademark Act domain names are neither automatically eligible nor are they ineligible for registration as trademarks. This means that while applying for a trademark registration you may use domain name along with its extension only if you are using the entire domain as a Trademark. The domain name should not be a mere representation of the brand online but should be the Trademark in itself used to provide the goods or services under the said brand name.

As per the Act the use of the mark as domain name will not assist unless the evidence shows that the relevant goods or services have been offered for sale under the domain name in question. A wide use of a particular domain name (or at least the distinctive element(s) of the domain name) on web pages offering goods or services for sale may constitute trademark use, but each case must be considered on its own merits taking account the way the domain name has been used.

There may be cases where the brand name is already registered and the domain name is owned and operated by another person or entity. In such cases the person or entity applying for registration of a trademark using the domain name will have to prove its identity and goodwill attached to the domain name along with its use on the internet to gain distinctiveness over the other registered brand names. The Trademark Act does not automatically provide Trademark registration to the owners of the domain names. The key component is whether the brand name or domain name applied for registration has the ability to function not simply as a domain name, but also as a trademark for goods or services as specified by the applicant.

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