Can I get a domain name trademark?

If you’re wondering whether it’s necessary or advisable to register a domain as a trademark, the answer is a definitive “Yes”!

Although you might have already registered your business name and your domain name, neither of these prevents somebody else from trading under the same or a similar name. With the multiplicity of domain name extensions that are possible, someone could easily use a confusingly similar name and just change the domain ending - leaving your customers none the wiser.

Why should you trademark your domain name?

Imagine impact on your business if yourname.co.nz was registered by somebody else as yourname.kiwi or yourname.shop, yourname.guru, yourname.online or any of the other 200 plus options that are possible!

A copycat could piggyback on your success and siphon off a considerable portion of your customers with a look-alike website and domain name.

Only a trademark registration gives you the exclusive right to use your domain name for the products and services that you offer.

If your business is specifically an e-business, then your domain name is the main address where you conduct your trade. You need to make sure that no one can hijack your customers and sell them a knock-off product or service.

So besides registering the domain of your website with an internet registrar, you must also apply for a trademark registration at the Trademark Office. 

How to get a domain name trademark

To qualify for registration as a trademark, your domain name must meet the Trademark Office’s normal criteria for a word.
It should not be a generic term that is widely used by all traders in your industry. The strongest trademarks are original and distinct from all other competitors.

Our article What makes a trademark distinctive? explains how to come up with a strong trademark.

You might succeed at registering a domain name that is generic if you can show that you have established a considerable reputation in that name. BOOKING.COM is an example. After a 12 year battle, the company finally convinced the Supreme Court in the US that consumers recognise this domain as their distinctive brand.

It can sometimes be a challenge to register “generic.com” words as trademarks: you generally need to show that you have built up a significant reputation in your brand name before it can be registered. For example, BOOKING.COM was only registered in the US after a 12-year legal battle in which the company finally convinced the US Supreme Court that consumers recognise this domain name as their distinctive brand.

In New Zealand a number of generic names are registered as trademarks, such as HEAR.COM for online hearing aid sales and services, MATCH.COM for dating services, PAGE3.COM for news publications.

If your name is descriptive or generic in your industry and you don’t have a longstanding reputation, you could apply to register a logo trademark that includes a stylised version of your domain name, such as these examples:

While a logo trademark is not quite as powerful as a word trademark, it will still act as a strong deterrent against copycats.

With the growing international problem of brandjacking, it would be a good move to trademark  both your brand name and your domain in all the countries where you trade, so that you have legal protection against this scourge.

We are committed to helping all New Zealand businesses to own their brands - brand names, domain names, social media handles, business names, logos and slogans. You should protect all the assets that make up your brand reputation.

DIY Trademarks uses smart technology to streamline the application process so that you can get it done in about 5 minutes.