1
Trademark Forum / Register domain name as trademark (non Canadian entity)
« on: 07-13-11 at 01:31 am »
Hello,
I would like to register a .ca domain but since i'm not Canadian, and so is the company I work for, we are looking for a legal way that will enable us to be owners of both the trademark and the domain.
After talking to CIRA it looks that I have to register a trademark in order to register a .ca domain - that is the only way for a non-Canadian entity to register a .ca domain.
The problem is that from what I understand from the trademark act, we need to declare that the trademark is in use - in my case it mean that we have registered the doamin.
This is of course is not possible since we have to get the trademark number in order to register the .ca domain to begin with. That is quite a loop.
In other words: I need to use the domain to finalize the TM registration, but I cannot register a domain without a registered TM.
1. It there something in the trademark act that can solve this problem? maybe there's away to register a trademark even though is has not been in use yet?
maybe some special circumstances under which I could finalize the registration of the trademark even though it is still not in use, so I could register the domain and then show the trademark registrar prove of usage.
2. If a Canadian citizen (like a business associate of mine) will buy the domain and register a trademark, could he then sell me the trademark and then sell me the domain?
I could not find the place where the act speaks about change of ownership in such a case.
I would first have to buy the trademark (since I need to own a trademark before I can be the owner of a .ca domain),
and then buy the domain.
I assume that my business associate will act in good faith and will sell me the trademark and domain after a while.
The question is - can I buy a TM (which is the domain name) if someone else is using it (he will still be the owner of the domain at this point).
Any other thoughts or solutions are welcome!
I would like to register a .ca domain but since i'm not Canadian, and so is the company I work for, we are looking for a legal way that will enable us to be owners of both the trademark and the domain.
After talking to CIRA it looks that I have to register a trademark in order to register a .ca domain - that is the only way for a non-Canadian entity to register a .ca domain.
The problem is that from what I understand from the trademark act, we need to declare that the trademark is in use - in my case it mean that we have registered the doamin.
This is of course is not possible since we have to get the trademark number in order to register the .ca domain to begin with. That is quite a loop.
In other words: I need to use the domain to finalize the TM registration, but I cannot register a domain without a registered TM.
1. It there something in the trademark act that can solve this problem? maybe there's away to register a trademark even though is has not been in use yet?
maybe some special circumstances under which I could finalize the registration of the trademark even though it is still not in use, so I could register the domain and then show the trademark registrar prove of usage.
2. If a Canadian citizen (like a business associate of mine) will buy the domain and register a trademark, could he then sell me the trademark and then sell me the domain?
I could not find the place where the act speaks about change of ownership in such a case.
I would first have to buy the trademark (since I need to own a trademark before I can be the owner of a .ca domain),
and then buy the domain.
I assume that my business associate will act in good faith and will sell me the trademark and domain after a while.
The question is - can I buy a TM (which is the domain name) if someone else is using it (he will still be the owner of the domain at this point).
Any other thoughts or solutions are welcome!
