Paul Ancejo Clotilde Piednoel February 27 2023 Trademarks versus domain names: French perspective MIIP MADE IN IP | Intellectual Property - France Paul Ancejo, Clotilde Piednoel Intellectual Property Advantages and disadvantages of trademarks and domain namesEvidencing effective use of domain namesIs registering a domain name worth the risk?Since the implementation of the Action Plan for Business Growth and Transformation Law in France, rights holders seem to be showing a preference for registering domain names rather than trademarks. However, are domain names really a serious competitor to trademarks?Advantages and disadvantages of trademarks and domain namesArticle L 711-3 of the French Intellectual Property Code states that trademarks may not be registered – or, if registered, may be cancelled – if:they infringe on a prior domain name that has a scope which is not solely local; andthere is a risk of confusion on the part of the public.However, domain names are only protected when used effectively during trade, regardless of their registration date. In other words, not only must the domain name have been registered earlier than the trademark application, it must also have been in use prior to the trademark application as well.Evidencing effective use of domain namesIt is not sufficient to provide evidence of an entry on the WHOIS database showing the date of a website's creation or its availability to consumers. It is advisable to present dated screenshots that prove the real and effective use of a domain name. The National Institute of Industrial Property (INPI) has specified that the website must be in French and prices indicated in euros to prove use in France.The law specifies that, in order to prevent the registration of a trademark, the scope of a domain name's use must be "not only local". Relevant case law reveals that domain names must be used in a "sufficiently significant manner in the course of trade". The INPI has provided an even stricter interpretation, whereby "not only local" is interpreted as "national" – it does not take regional use into consideration.To evidence a large economical and geographical scope, domain name owners should collect, to as great an extent as possible, information on:potential clients, partners and/or competitors' visits to their website; andthe geographical location of such entities.Domain name owners should aim to show that many people, spread throughout France, have visited their website and ordered products or requested services through the site.Is registering a domain name worth the risk?In theory, companies can block the registration of a trademark with an earlier domain name. In practice, an earlier trademark is more likely to beat a later trademark application. Domain names offer a minimum level of protection but are not a guarantee of exclusivity.Registering a domain name may be the preferable option for companies if:they intend to use a non-distinctive sign that would not be registrable as a trademark;they already have national presence; ortheir activities make it easy to prove a "not only local" scope. This might be the case, for example, for an e-commerce website (as opposed to a local catering provider).If a company chooses to register a domain name rather than a trademark, it should be prepared to object to trademark applications on the grounds of unfair competition. Any initial savings made in not having to file a trademark application will be quickly lost when preparing proofs of use and acting before a judicial court. It thus seems that domain names are only the better option under specific conditions, which may be reassuring for trademark owners.For further information on this topic please contact Paul Ancejo or Clotilde Piednoel at INLEX IP Expertise by telephone (+33 1 56 59 70 90) or email ([email protected] or [email protected]). The INLEX IP Expertise website can be accessed at inlex.com.