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Euro Vision

Shelley Beaumont, IP specialist of Halliwells LLP explains the significance of the introduction of the new .eu top level domains and the steps trade mark owners should take to secure registration in order to expand brands across Europe

7 December 2005 saw the introduction of the new top level .eu domain name. The rationale behind this new domain name is to enable individuals and businesses to create a European Community wide identity. At present companies with activities in various countries throughout the EC have to register national domain names in each member state, (for example halliwells.co.uk in the United Kingdom, halliwells.fr in France and halliwells.es in Spain), if they want an EC wide web presence.

Sunrise period for registered trademark owners (phase 1)
From the launch date of the .eu domain on 7 December 2005 there will be a period of 4 months during which registered trademark owners and public bodies may register the relevant .eu domain before the domains are made available for general sale. This period is known as the "sunrise period".
The sunrise period provides some protection to owners of national trademark registrations against bad faith registrations by unscrupulous individuals seeking to hold brand owners to ransom. This does not, however, mean that trademark owners can delay in seeking to register a .eu domain. There may be a number of third parties with a legitimate interest in registering the same name on account of them owning a national trademark registration in respect of that name in another country within the EC. Owners of Community trademarks are less vulnerable to such third parties registering the .eu domain as a location for a website offering the same goods and services. It should not be forgotten that identical trademarks can be registered in respect of different classes of goods and services and the same mark may therefore be registered to a number of different owners in different classes. As a result, all registered trade mark owners will have a legitimate interest in registering the .eu domain. Where more than one valid application is made for the same name applications will be dealt with on a first-come first served basis.
Following receipt of an application for a .eu domain during the sunrise period, the relevant registrar will send the applicant a form to complete together with a request for evidence of the right relied upon by the applicant. The form must be returned together with the requested evidence within the stipulated time scale of 40 days. A failure to return the form and evidence will result in the application being rejected in which case the next application received in respect of that name will be considered.

Unregistered trade marks, trade names and business names (phase 2)
The sunrise period is split into two phases. The second phase, due to commence on 7th February 2006, allows those without registered trademark rights but which have other rights protected under the national law of the member state where they are held (such as company names, business names, unregistered trademarks and trade names) to make an application for registration of a corresponding .eu doman before general public release on 7 April 2006.
The same procedures apply to phase 2 sunrise period applicants but it is thought that the evidence that will need to be submitted to show a right in the name in question may be more complex. Clearly, evidence of a registered trademark is all that is likely to be required in respect of the majority of phase 1 sunrise period applications.
During the second phase of the sunrise period those eligible to apply for a .eu domain during phase 1 will continue to remain eligible.

Choose an accredited .eu registrar and don't forget to renew!
Although EURid, is the organisation selected by the European Commission to operate the new .eu domain names, it will not accept applications for .eu domains directly and you will need to make your application via an accredited .eu registrar. A list of accredited .eu registrars can be found at http://list.eurid.eu/registrars/ListRegistrars.htm?lang=en
.eu domains will be registered for renewable one year periods. Renewals will take place automatically unless your registrar has notified EURid that automatic renewal ought not to take place. Please check the terms and conditions of your registrar to see if this is its proposed standard practice.

Further Information
Shelley Beaumont is a lawyer specialising in Intellectual Property with law firm Halliwells. She can be contacted at the firm’s Manchester office on 0161 835 3003.

September/October 2010
issue 61
available now