Protecting Domain Names as Trade Marks

A recent U.K. case has confirmed that the trade mark EASY.COM is registrable and not descriptive.

The Opposition
EasyGroup IP Licensing Limited applied in the U.K. to register the trade mark EASY.COM in association with a wide range of services including advertising, business administration, financial services and electronic mail services. Easynet Group Plc opposed the application on the grounds that the applied for mark was devoid of distinctive character and/or descriptive contrary to the U.K. legislation. The Hearing Officer dismissed the opposition.

The Appeal
Easynet Group Plc appealed to the High Court of Justice. They argued that where a mark is composed of two descriptive components, it cannot be registered without finding that there was something special or unusual concerning the combination.

On appeal, it was assumed that each of the elements of the mark was descriptive and was not registrable. However, the correct approach was to look at the mark as a whole in order to see whether it is descriptive and in particular, to see whether the mark as a whole produces something that is more than the mere sum of its parts. It is the overall assessment that matters. The Court then concluded that the Hearing Officer had adopted the correct approach and correctly found that the
mark was registrable.

The Canadian Position
Under the Canadian Trade-marks Act (the “Act”), a mark is not registrable if it is clearly descriptive of the character or quality of the wares or services in association with which it is used or proposed to be used. In a number of cases it has been decided that merely joining together two descriptive words to form a single word is not sufficient to avoid the prohibition. In each case, the first impression created by the trade mark, whether depicted, written or sounded, must be taken into consideration. A trade mark may be registrable as a whole although it includes words that are clearly descriptive.

Practice Note
A domain name that satisfies the registrability requirements of the Act and is used as a trade mark may be protected as a trade mark. While it can be difficult to obtain a registration for a domain name that is descriptive in nature, the mark as a whole should be considered, not just the components.

The  author can be reached at: prashant.katara@legalserviceindia.com