STRATEGIES FOR PROTECTING TRADEMARKS AND DOMAIN NAMES AND GUIDANCE FOR DOMAIN NAME OWNER

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2 STRATEGIES FOR PROTECTING TRADEMARKS AND DOMAIN NAMES AND GUIDANCE FOR DOMAIN NAME OWNER CHARLES PUNDO Head of Formality Examination Meikles Hotel, Harare, Zimbabwe May 9-10, 2016

3 Introduction Domain name owners interact with intellectual property, both as creators and users of it. An infringement on the rights of another user may prove to be both costly and destructive to an image you are trying to build

An infringement on the rights of another user may prove

4 What is Intellectual Property Intellectual Property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; symbols, names and images used in commerce. IP includes Patents, Utility Models, Trademarks, Industrial Designs and Copyright

works; designs; symbols, names and images used in commerce.

5 What are trademarks? Trademarks may consist of words, designs, letters, numerals or packaging, slogans, devices, symbols, audible signs etc or a combination of the same Trademarks serve the purpose of distinguishing the goods or services offered by one undertaking from those of another.

6 How Trademarks interact with Domain Names? As tools of commerce, trademarks have increasingly moved to the online world. Since online presence depends on domain names as unique identifiers, there is mutual inseparability between domain names and trademarks.

7 Examples of trademarks registered also as Domain Names

8 Strategies for protecting trademarks Both trademarks and domain names are vulnerable to trolls and infringement. For the domain name owner who intends to use their trademark online, there is a need to develop a strong protection strategy for trademarks The strategies for such protection are almost synonymous

For the domain name owner who intends to use their trademark online, there is

9 Strategies continued! Review your trademark and domain name portfolio Research before committing Register your trademarks and corresponding domain names Claim Priority on filing in other jurisdictions

10 Strategies continued! Always monitor and renew existing registrations Use your trademarks and domain names Take steps to correct possible infringements Evolve!!

11 Trademark Registration Routes National Regional International NB: Given the global nature of domain names and trademarks used on the online sphere, regional and international registrations are increasingly gaining importance!

names and trademarks used on the online sphere, regional

12 Registering Trademarks with ARIPO In ARIPO, Trademarks are registered under the Banjul Protocol on Marks Membership to the Banjul Protocol is currently at 10 states i.e. Botswana, Liberia, Lesotho, Malawi, Namibia, São Tomé and Príncipe, Swaziland, Uganda, Tanzania and Zimbabwe.

13 Banjul Protocol Provisions Receiving applications for registration Classification (Goods and Services) Right of priority Temporary protection of a mark exhibited Later designation Conversion into national applications Examination by designated states Registration and publication Renewal of applications Restoration Registration of licenses and assignments Registration of users

Conversion into national applications Examination by designated states Registration and

14 Benefits of ARIPO system Streamlined and simplified application procedures which are cheap, fast and user friendly; Single application for protection in several designated states; Supplementary route to the existing national routes for international filing;

application for protection in several designated states;

15 Benefits continued! Single representation on all designated states; Centralized renewal fees payment; Cost effective.

16 Important consideration! the holder of a mark that was a registered mark before you obtained your domain may be able to prevent your use of that domain, at least on a temporary basis, until it is decided by a competent authority whether or not you should be allowed to do business under that domain.

domain may be able to prevent your use of that domain, at least on a

17 Conclusion It is crucial to ensure that you are adequately protected for both your trademark and domain name. ARIPO offers you an effective one stop shop for protecting your trademark in at least 10 member states who are part of the Banjul Protocol.

ARIPO offers you an effective one stop shop for protecting

18 } Address:11 Natal Road, Belgravia, Harare, Zimbabwe } Tel: /6/8/54/74 } Fax: } cpundo@aripo.org } mail@aripo.org } Website:

Fax: +263 4 794 072 } Email: cpundo@aripo.

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