Trademarks and domain names

Trademarks and domain names

 

Trademark law aspects of domain name registration
Conflict of a domain name with a registered trademark
Legal consequences of trademark infringement
Registration of domain names
How to avoid the conflict of a domain name with a trademark
Is it possible to obtain trademark protection for a domain name?
Publications of fundamental importance in the subject matter

 

 

 

Domain names are not registered by the Hungarian Intellectual Property Office but by domain name registrars.

Conflict of a domain name with a registered trademark

The registration of trademarks and the registration of domain names are independent from each other both as to the organization and as to the rules of procedure. However, the two procedures have points where there are overlaps.

The registration of trademarks is executed on the basis of Law no. XI of 1997 (Hungarian only) on the Protection of Trademarks and Geographical Indications, and the procedure is carried out by the Hungarian Intellectual Property Office. The holder of the registered trademark has exclusive rights in respect of the use of the trademark. On the basis of this, he may take legal action against anyone who uses in the framework of his economic activity without his authorization a sign identical to or mistakable with his trademark. The infringement may be realized also by using the sign via the Internet.

Using for business purposes a domain name identical to or mistakable with other's trademark without the authorization of the holder of the trademark may constitute a trademark infringement. Especially if it is used in business correspondence relating to electronic commerce or in advertisements via the Internet without the authorization of the owner of the trademark. As a consequence of the above-mentioned facts, the registration of a domain name does not exclude that by using it the owner of the domain name infringes a trademark!

From the point of view of trademark law, the registrar's act to register a domain name does not mean an act establishing legal protection. Ruling principles relating to the conflict of domain names with registered trademarks from the point of view of domain name registration are laid down by the resolution 7/2000 (V.31.) (Hungarian only) accepted by the Advisory Board of the Council of Internet Service Providers. It is, however, important to mention that this is not a Law.

Legal consequences of trademark infringement

Violation of rights arising from trademark protection has civil law and criminal law consequences.

The owner of the trademark may claim from the infringer - among others - to cease the infringement of the trademark, to surrender the enrichment obtained by infringement and to pay damages according to the rules of civil law liability. In the action of trademark infringement, the court may order provisional measures during the procedure.

Pursuant to Section 329/D of the Hungarian Criminal Code, the person who violates the trademark owner's rights arising from the trademark protection by imitating or taking over the trademark and causes thereby pecuniary loss may be sentenced to up to two years in prison, to public work or to a penalty. In serious cases the punishment can even be an imprisonment of three years by reason of a crime.

Registration of domain names

In Hungary, domain names may be registered through registrars. Any natural or legal person may be a registrar if he meets the conditions of the directive of the Council of Internet Service Providers and joined the franchise system specified also by the Council of Internet Service Providers.

The Council of Internet Service Providers is a non-governmental organization, the franchise contractual conditions and the directives are binding only on its members and contractingl parties, but they cannot modify laws, they do not affect their enforcement and cannot be contrary to them. As a consequence, the following rules are only for information, their content may change according to the decision of the Council of Internet Service Providers.

The following persons may request a domain name - directly under the ".hu" public domain:

  • any Hungarian citizen or any natural person having a residence permit in Hungary,
  • any legal person or organization without legal personality having its seat in Hungary,
  • in the case of the registration of a trade mark registered by the Hungarian Intellectual Property Office as domain name, the owner of the trademark, irrespective of his nationality.

The registrar announces the filed request publicly on the web server, with the indication of the date of the request, before granting it. Objections may be raised until the end of the 14th day from the announcement against the delegation of the announced domain name. If there are no objections, the registrar registers the announced domain name, otherwise the request is not satisfied until the settlement of the legal dispute.

If the owner of the trademark or an authorized person asks the registrar to register a trademark registered by the Hungarian Intellectual Property Office as a domain name, the above-mentioned two weeks of announcement are not required.

Avoiding the conflict of a domain name with a trade mark

The person requesting the domain name may clear voluntarily in advance whether the domain name chosen by him conflicts with the trademark of another person. For this purpose he may carry out a complete search with the help of the Hungarian Intellectual Property Office's customer service and registrations and databases available there.

Is it possible to obtain trademark protection for a domain name?

In theory, there is no obstacle to that a domain name as a sign be registered as a trademark. However, a registered domain name does not mean in itself a legal basis for obtaining trademark protection without any further condition. For this, an application for the registration of the sign as a trademark must be filed with the Hungarian Intellectual Property Office, and the sign must meet the conditions of registration specified in Law XI of 1997 (Hungarian only) on the Protection of Trademarks and Geographical Indications.

Publications of fundamental importance in the subject matter: