Only European Trademarks Able To Register .EU Domains, Says ECJ Advisor

Posted in: Domain Names at 07/05/2012 19:05

Businesses must be established within the European Union to enable them to register their trademarks as .EU domain names, a legal advisor to the European Court of Justice (ECJ) said.

The case came about after an American eyewear company, that uses the domain name lensworld.com, wanted to register a .EU domain name, but their trademark was not established in EU. The company, Walsh Optical, hired the Belgian intellectual property consulting firm Bureau Gevers to register the domain lensworld.eu.

However the Belgian eyewear maker Pie Optik, who uses the domain name lensworld.be, complained, after attempting to register lensworld.eu in January 2006, around a month after Bureau Gevers applied for the .EU domain on the day .EU domains became available.

"Only undertakings and organisations which are themselves established in the EU may request a .eu domain name," the Advocate General Verica Trstenjak said, according to a statement from the Court as reported by Out-Law. "The .EU Top Level Domain is intended to provide a clearly identified link with the EU, the associated legal framework, and the European market place. It should enable undertakings, organisations and natural persons within the EU to register in a specific domain which will make this link obvious."

"Against that background, a non-resident undertaking cannot be allowed to circumvent the rules on eligibility by obtaining registration of a .eu domain name by means of a legal construction such as the commissioning of a third party organisation that is established in the European Union and thus an eligible party," the advisor said.

Out-Law goes on to report "Advocate General Trstenjak said that Walsh Optical's so-called 'licence agreement' with Bureau Gevers was in reality 'a contract for the provision of services'. Therefore the Belgian consultancy could not be considered a 'licencee eligible' to benefit from the priority rights given to it when it had applied, and been granted, rights for 'lensworld.eu' on behalf of Walsh Optical, she said."


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