New dot anythings' are timely reminder to review online trade mark protection

The recent move to permit the use of top-level domains with any ending is a timely reminder for businesses and organisations to review their online trade mark protection.

Last week, the web naming administration organisation, the Internet Corporation for Assigned Names and Numbers (ICANN), decided to relax rules restricting the use of top-level domains (TLDS). Previously, web addresses had to end in one of just 21 permitted TLDs, such as .com, .eu or .org.

Fiona McBride, trade mark attorney at Withers & Rogers, explained:

"This is a significant change to the way the internet works but it changes very little for businesses and organisations concerned about trade mark protection.

"Most companies choose to register a limited number of TLDS, according to where they are doing business and the brand names they trade under. They rely on their registered trade marks as a platform from which to dispute domain name misuses if needed.

"This situation has not changed and companies will still be able to sue those who seek to use their domain name on the grounds that they may be trading on their brand."

Despite there being no need for businesses to panic-buy more TLDs, trade mark experts at Withers & Rogers believe businesses should review their online trade mark protection in the light of the changes.  Fiona McBride concludes:

"Some businesses may not have reviewed their trade mark protection recently, in which case these changes are a timely reminder of the need to do so. For example, they may have recently extended their brand portfolio through acquisition or started trading in new overseas markets. As a result, their trade mark protection may need to be extended."

1 July 2008