TRADE mark legislation should be able to protect Internet domain names in just the same way as up to now it has protected names used in relation to products," an intellectual property expert told a recent meeting of the Trinity Institute in Dublin.
Amendment to our trade mark law in Ireland is long overdue," Carol Plunkett of solicitors A&L Goodbody told the meeting in Trinity College. "But by Easter it is expected that we will have an almost state of the art legislation." The Trade Marks Bill currently going through the Oireachtas protects names in respect of services, she said. From April 1st it will also be possible to apply to the new Trade Marks Office in Alicante in Spain for registration of one's trade mark throughout the EU.
On the Internet, she said, "many companies have discovered that their most valuable trade marks and service marks have been reserved by third parties. The most famous of these have been in the USA and include Coke.com, McDonalds.Com and Hertz. Com. Apparently in the US, fewer than 30 per cent of the largest companies have claimed their names as Internet addresses, leaving over 70 per cent of them exposed to Internet sharks taking over their names. Although the concept of a domain name is of course relatively new, the idea of third parties using famous names is anything but".
Ms Plunkett, who is director of A & L Goodbody's Intellectual Property Law Unit, said that since the 1960s many Irish companies had been incorporated with names and registered trade marks to go with them before multinationals had opened branches in Ireland, and then succeeded in obtaining payment to change their names. "History is repeating itself on the Internet, and companies should be careful not to be caught out," she said.