New trade marks filed in the last few years were quite often identical either with a domain name or with part of one, or with a general part of a website.

In the last five years about 150 such denominations were filed in the Czech Republic as trade mark applications. About 40 of them were registered, 20 rejected (or lapsed), 15 published and the remaining are still pending. Considering that the increasing number of trade mark applications collided with domain names, special attention is given to the objection proceedings of such trade marks.

In this respect objections against registration of such trade marks are usually filed by:

• Owners or applicants of confusingly similar trade marks with earlier priority claims, if their trade marks are filed or already registered for the same or similar goods or services.
• Owners of generally known trade marks.
• Owners of identical or confusingly similar denominations which became distinctive in the Czech Republic for identical or similar goods of the same owner in the two years immediately preceding the filing of the trade mark in question.
• Entrepreneurs, whose trade name or a substantial part thereof is identical or confusingly similar to a published denomination, provided it has been registered in the Commercial (or similar) Register prior to the filing of the application and provided the entrepreneur produces identical or similar goods or services or they are the object of his activities.

It has to be said that the decision procedure of the Czech Industrial Property Office is in compliance with OHIM. Therefore denominations containing elements such as www, com, org, gov, edu, net and of course cz are considered to lack distinctiveness and therefore are not capable of being registered, even if no objections are filed.

Compared to a trade mark registration, a domain registration is much simpler and easier. An applicant can register as a domain practically any word marking, as the registering institutions do not examine if the domain is the subject of some existing right (as is in the case of a trade mark proceeding) or if the applicant of a domain is a person qualified to file a trade mark application. Responsibility as to whether the registration of a domain does not infringe the rights of a third person lies entirely on the applicant of a domain registration.

With regard to the registration of domain names the authorized institution in the Czech Republic is the association CZ.NIC. According to the Regulations issued by the said association, domains are registered according to the order of delivered applications only. Excluded are only domains consisting of two letters corresponding to ISO codes of individual states and domains of the highest ranks cannot be used as domains of second rank (for example com.cz or uk.cz).

At present the main problem lies in the solution of disputes connected with domain names. For the time being disputes can be solved on the ground of arbitration law or by a lawsuit based upon unfair competition. Law suits are lengthy and very expensive. A prospective plaintiff, ie the owner of an infringed domain, usually does not want to spend money and time on a court proceeding – except in extraordinary cases. In compliance with letters of arbitration law, an arbitration proceeding is led by the association CZ.NIC and can be opened only if it is agreed by both parties. It is evident that the infringer usually refuses to take a part in an arbitration proceeding. He is well aware that the infringed party knows very well complications connected with a lawsuit and speculates with a possibility that the rightful owner will prefer to buy a domain, which contains for example his trade mark, trade name, name of the town, district etc.

The professional public feels that loopholes in the resolution of disputes concerning domain names and trade marks should be solved in the near future. Compared to the cases proceeding in the Arbitration and Mediation Centre in Geneva, the frequency of lawsuits (or disputes) concerning domains of the highest grade of Czech parties is not high. However, their increase is to be expected in the near future. It is our opinion that one of the routes to be followed for effective out-of-court settlement of disputes concerning domains might be proceedings similar to those which have already been adopted by ICANN and WIPO. A fundamental condition for this route would be an obligatory clause in the application for the registration of a domain, where the applicant should agree to arbitration proceedings in case of any dispute.