Did you know that adding “.com” to a generic trademark can make it registrable both in the EU and the US?
The US Court of Appeals ruled that adding a generic word “.com” to a generic word “BOOKING” may result in a registrable trade mark, if proved that the sign as a whole acquired non-generic meaning for the relevant public. Under US law the fact that a sign is generic is an absolute ground for refusal of trade mark registration. But according to the ruling the sign might be registerable upon showing primary significance of a sign as a whole to the relevant public. Such protection, however, cannot prevent other parties from using or registering word “BOOKING” for goods and services described by this words.
The same already applies in the European Union or the Czech Republic where it is common to register a sign which, even though consisting of generic terms, becomes distinctive for public prior registration (e.g. European word mark booking.com is registered since 15 March 2010).
Read the full decision here.
Comment prepared: Mgr. Michal Nulíček, LL.M., CIPP/E, Mgr. Bohuslav Lichnovský, CIPP/E and Mgr. Klára Hrdličková, LLM
