By Joy Dong
You might think of a website domain as just an address, like a digital street number, while a trademark is the legally protected "official identity" of a brand.
But what if someone secretly registers your "address" name as a trademark and then tries to sue you for infringement?
A recent ruling by China's Supreme People's Court (SPC) clarifies the situation: A domain name that you have actively used and built recognition around can itself become a legally protected "prior right," allowing you to successfully block such malicious registrations.
This ruling stems from a four-year legal battle. A Hangzhou-based tech company had long used the domain "datafocus.cn" for its data analytics business. Later, another company registered "DataFocus" as a trademark and attempted to stop the Hangzhou company from using it.
The Hangzhou company fought back all the way, but initially lost at every stage, from the National Intellectual Property Administration to the Beijing courts. The reason given was that they couldn't prove their domain name was "well-known." The case took a dramatic turn in late 2024 when the SPC retried it and completely reversed the previous decisions.
What did the Supreme People's Court say?
In essence, the SPC established a new rule: a domain name that you have genuinely operated and that customers associate with your business can constitute a "prior right," which can be used to invalidate a later, maliciously registered identical trademark.
However, to make this work, you need to meet several conditions. Think of it as forging a legal "shield":
You Forged Your Shield Early: Your domain name registration date must be earlier than the application date of the conflicting trademark. This is the basic timeline.
Your Shield is Recognized: You can't just register a domain and leave it idle. You must actually use it to conduct business, promote your services, and build its reputation within your industry so that customers connect the domain name with your company. Evidence can include media coverage, real customers finding you through it, or search engine results primarily pointing to your site.
Someone Copied Your Shield's Design: The trademark registered by the other party must be nearly identical to the core part of your domain name (i.e., the name part before extensions like .com or .cn).
They're Trying to Use the Shield in a Similar Way: The goods or services covered by the other party's trademark registration must be similar to the business you conduct using your domain. This similarity is what could confuse customers.
In the Hangzhou company's case, the SPC found that their evidence, such as registration records from hundreds of corporate users (including employees from well-known companies) and numerous online news reports published beforethe trademark was squatted, was sufficient.
It proved their domain "datafocus.cn" had gained recognizability in the data analytics field and met all the above conditions. Therefore, the later "DataFocus" trademark registration could not be allowed.
Key Takeaways from this Ruling
A Domain is More Than an Address: It's a Brand Asset: Stop thinking of your domain as just an IT matter. A good, brand-aligned domain, when actively developed, can become part of your brand's legal defense. It's not just an entry point; it can be your "shield."
Document Your Use Routinely: The law values evidence. Consciously preserve "traces" that prove you are using the domain. This includes website analytics, user testimonials, promotional articles, partnership emails, etc. It's wise to periodically "package" this evidence and secure it using trusted methods like timestamping or notarization, just in case.
You Have Broader Options When Defending Your Rights: If your brand name gets trademark-squatted, and you have a corresponding domain name that you've used for a long time, you can now confidently assert your "domain name rights" as a defense, not just argue about who used the trademark first. This provides an additional, powerful legal tool.
Play Fair with Competitors: This ruling also serves as a reminder to all businesses to do basic checks when naming themselves or registering trademarks. If you know, or could easily find out, that a name is already being used by a competitor via a domain or otherwise and has gained some recognition, it's best to steer clear. Trying to "free-ride" on their efforts will likely backfire, resulting in the trademark being invalidated.
In a Nutshell
The SPC's ruling is a practical response to the reality of doing business in the internet age: many brands are born online, and their domain name is their first signboard.
This ruling essentially affirms that the signboard you've carefully built online is recognized and protected by law, and it cannot be maliciously taken by a latecomer. For all businesses and individuals building their presence online, this is both an encouragement and a reminder: treat your domain name well, it might be more valuable than you think.
