Many wonder what differentiates the domain name from the brand, and how they interact.
Let's start with the differences:
- The domain name is not an industrial property right, unlike a trademark. This means that it does not enjoy the same protection, and in particular that it cannot be defended through an infringement action, which is reserved for IP rights.
- Each domain name is unique in each extension: two people cannot reserve the domain name "depot-de-marque.com". Whereas it is possible that two different holders may each have an identical trademark.
- A domain name is reserved, a trademark is registered.
- The reservation of a domain name is not made in connection with goods and services, unlike a trademark. The domain name can be used for any activity, but will only be protected for the activity actually exploited in the website. Whereas a trademark is protected for all goods and services covered by its wording, even for those it does not use (at least for 5 years).
Despite their differences, domain name and trademark often intersect, especially in :
- An exploited domain name constitutes an anteriority that can be invoked against a trademark. For example, if you own the domain name splash.com to offer boat touring services, and someone registers or uses the SPLASH trademark for the same or a very similar activity, you can object to it.
- An earlier trademark can be used as a basis for a UDRP, UDR or SYRELI action to obtain the cancellation or transfer of a later domain name that was registered in bad faith.
Note that reserving a domain name does not exempt you from registering a trademark. This registration is never compulsory, but the protection of the trademark is broader, easier to implement, opens up a much wider range of actions and is more effectively valued. In particular, it should be noted that in France, the opposition procedure before the INPI is not open to domain name holders. Find out more about the opposition procedure.
Finally, from a more practical than legal point of view, if the trademark you are planning to register is not available as a domain name in a common extension such as .com or .fr, this may affect your visibility on the Internet. If the latter is very important to you (which is often the case nowadays), it is better, depending on the case, to change your trademark project.
Our advice In a trademark registration strategy, make sure that your trademark project is also available as a domain name in the extension(s) you are interested in.