The EU trade mark office (EUIPO) and the domain registry for EU domain names (EURid), have recently launched a new notification service, which aims to minimise bad faith domain registrations for ‘.eu’ / ‘.ею’ extensions for European Union trade marks (EUTMs). This is part of a wider collaboration agreement between the two organisations signed in June 2016, which was recently committed to further at INTA 2019.

EUTM applicants will have the opportunity to opt-in to an alert system, which will warn them if a ‘.eu’ or ‘.ею’ extension is registered by a third party that includes their EUTM. At this point, only identical variations of the applicants’ trade mark can be detected. The notification system does not apply to pending registrations or International Registrations, meaning applicants will need to file an EUTM directly.

For those familiar with domain watching systems, the new EUIPO notification process operates in a similar way to the Trade Mark Clearinghouse (TMCH), which detects registrations of new Top Level Domains (nTLDs). However, unlike the TMCH system, it is interesting to see that the EUIPO system only detects registrations, rather than providing brand owners with a space of time in which to secure the domain before anyone else has the chance to register it. This raises the question of whether the new opt-in mechanism is merely a reactive measure, rather than a pre-emptive one.

The spirit of the announcement by the EUIPO and EURid is welcome. However, it is questionable whether these well-intended measures are in sync with modern e-commerce and the shift towards the sale of counterfeit product on online marketplaces and social media platforms. Similar questions can be asked of the EUIPO’s Comparative Case Study on Alternative Resolution Systems for Domain Name Disputes from 2018 involving country-code domains.

This tool alone is also no substitute for putting in place effective domain monitoring and online content watching programmes, which will pick up brand misspellings or ‘brand+additional terms’.

Domain names and online brand enforcement form a key part of Stobbs’ Intangible Asset Management offering. If you have any questions about the new EUIPO domain notification service or online brand enforcement generally, please feel free to contact us.