‘Reclaiming’ Domain Names – What you need to know

Twice in the past year, this writer has dealt with queries from clients who, in the course of rebranding, have found that the .com/co.uk domain name they would like to use, has been registered to someone else.  In both instances, their IT specialists advised them to get in touch with their trade mark attorney to ‘reclaim’ the domain name through the ‘legal’ route.  Unfortunately, in both cases, there was absolutely no basis for making any application to ‘reclaim’ the domain name, which was a severe disappointment to the clients concerned. It would appear that a lot of IT professionals do not have a great deal of experience of the way the ‘legal’ route works, so we would strongly recommend clients don’t expect too much, should this avenue be suggested to them.

While use/registration of domain names can constitute trade mark infringement, and be dealt with via an application to the Courts, most domain name disputes are sorted out at a more administrative level, using the dispute resolution service provided by the registration authority concerned.  In the UK, with respect to .uk domains, the internationally respected Nominet dispute resolution system applies. In other jurisdictions, slightly different systems will be in place, but the underlying principles are often very similar to those applying in the UK.

Looking at recent Nominet data reveals that Nominet experts issued decisions on 24 domain name disputes in October 2017. In most of these cases, transfer of the domain name was ordered, but no action was taken in 4 of the cases looked at by the experts.  In order to convince the Nominet authorities to make a transfer of a domain name, rights in the name need to be shown, but it also has to be demonstrated that the domain name, in the hands of the registrant, is in some way abusive.  This is the hurdle where most complainants fall; owning a trade mark registration does not automatically mean that your case succeeds.

The decisions which issue in domain name disputes are often very lengthy, reflecting the complex factual matrix the experts have to sift through, but we can highly recommend, in terms of readability, the decision in the glasgowgin.co.uk case.  This decision was issued on 12 October 2017 and relates to Case No. D0019268.  In this case, although the complainant had acquired a trade mark registration for a mark incorporating the words Glasgow Gin, and was a Scottish company incorporated under the name Glasgow Gin Company Ltd, they couldn’t show that the complained-of domain name was abusive in any way. This was unsurprising, given that the registrant of the domain name had registered the domain name four and a half years before the complainant acquired any potentially relevant rights.

We can appreciate that it is frustrating to pour energy into a rebranding project, only to find that the desired domain name is unobtainable.  However, the new gTLDs offer many more options in terms of domain name registration than previously and the selection of one of these options could well work even better for your business than the .co.uk or .com address.

For more information on domain name dispute issues, please do not hesitate to get in touch with your usual trade mark attorney contact.

Authored by Cathy Ayers[:]

Leading intellectual property law firm takes on intern from top US university

A leading UK-based firm of intellectual property law specialists has taken on an intern from one of the top universities in the United States.

Hayden Carroll has joined Cleveland Scott York as part of Notre Dame Law School’s London internship programme.

Notre Dame is a prestigious US university based in South Bend, Indiana, and which has a London centre in Suffolk Street, near Trafalgar Square.

Hayden is a New York native, who received his BA from SUNY New Paltz, where he studied English and American Literature.

He is currently in his third and final year of law school, where he has focused on intellectual property, transactions and speech restrictions, as he works towards gaining his Juris Doctor degree.

His internship with Cleveland Scott York will contribute towards the credits required to graduate from Notre Dame Law School.

Hayden said: “Intellectual property is an area of law in which an international perspective is particularly valuable, with clients frequently seeking protection for their intellectual property across multiple jurisdictions.

“For me personally, this is an exciting opportunity to broaden my knowledge of everything from the UK and EU legal and judicial systems through to typical working arrangements in professional firms in this country.”

Adrian Bradley, a Partner at Cleveland Scott York, added: “Hayden brings with him an entirely fresh perspective on UK and EU intellectual property matters as well as excellent knowledge of the US legal system, which is why we were keen to get involved with Notre Dame’s internship programme.

“Ultimately, it is our clients who will benefit from Hayden’s input during his time with us.”

Cleveland Scott York has offices in the City of London, St Albans, Reading and Brussels.[:]

Divergence in scope of UK patents for purposes of Infringement and Validity?

We reported in July on Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48, the most significant UK court decision on patents for decades. This introduced equivalents firmly into UK law for the determination of patent infringement. That decision left unclear whether equivalents should also be considered when assessing the validity of patents; is the new test for determining the scope of a patent claim for use in assessing both infringement and validity or is it only a test for assessing infringement?

Based on another recent decision, Mylan v Yeda and Teva [2017] EWHC 2629 (Pat), and opinions given by commentators (for example at the recent debate “K = Na. Is the genie out of the bottle?“ held by UCL Institute of Brand and Innovation Law on 1 November), it seems it is the latter. Thus for now, at least, in the UK we have a situation where a claim will be considered to be broader for the purposes of assessing infringement than it is for assessing validity. This could potentially lead to absurd results, such as a patent covering something that was in the public domain before the patent was filed, and there is no existing UK law to cope with and deal with such issues. In due course UK case law will evolve to address these issues, but exactly how is more difficult to predict. In the meantime there is scope for considerable uncertainty.

A significant number of other countries (e.g. the USA, Germany, the Netherlands) have established law on the subject of equivalents and how to deal with some of these potentially absurd results; however the approaches are all different. One common theme seems to be that the availability and effects of equivalents are being diminished in those countries. It has been suggested by some that equivalents, i.e. the Actavis decision, may rarely have a practical effect in the UK. If that proves to be true it would be rather unfortunate given that the decision will introduce considerable additional complexity and uncertainty, and hence possibly extra costs for businesses, into the assessment of patent disputes in the UK.

Authored by Tom Faulkner[:]

UK-IPO proposes new fee for patent applications – Claims and Pages Fees to be introduced

The UK Intellectual Property Office has recently published its proposals for new fees for UK patent applications, following a consultation earlier this year.  The new fees are expected to come into force on 6 April 2018.

For the first time ever, the UK will charge excess claims fees and excess pages fees, similar to the fees already charged in other patent offices such as the EPO and the US Patent and Trademark Office.

The rules for the fees are more generous and the fee levels are set lower than at the EPO and the USPTO.  However, the consequences of failing to pay the fees appear to be exceptionally harsh in the UK.

Claims fees

The UK-IPO proposes to introduce a fee of £20 per claim for each claim over 25 in a patent application.  By comparison, the EPO charges €235 for each claim over 15 up to the 50th claim, and €585 for each claim over 50.  The USPTO charges $80 for each claim over 20.

It can be seen that the fee level set for the UK is modest, especially when compared with the fees charged by the EPO, and the number of claims allowed without a fee is more generous in the UK than at the EPO or in the USA.

The UK-IPO proposes that the excess claims fee will be required as part of the search fee.  If the number of claims increases during the examination process, fees for any additional excess claims, beyond the excess claims paid for in the search fee, will become due as a grant fee.

Because the initial excess claims fee will be part of the search fee, a failure to pay the full amount of excess claims fees due will have the consequence that the entire patent application will be deemed to be withdrawn (this was explicitly recognised in the UK-IPO’s original consultation document).  In our view, it is unreasonably harsh that the entire application should be lost through failure to pay the initial claims fees.

By contrast, if an initial excess claims fee is not paid when it is due at the EPO (within one month of filing the first set of claims) the relevant claim is deemed not to have been filed but the application is otherwise unaffected.  Only if excess claims fees are also due at the time of grant, and are not paid, does this lead to loss of the entire application.

Alasdair Kennington (Senior Associate at Cleveland Scott York) filed a response to the original UK-IPO consultation pointing out this discrepancy and suggesting alternative, less drastic, consequences for failure to pay the full excess claims fee in the search fee.  This concern is mentioned by the UK-IPO in the current proposal document, but no reply has been made and it seems that no account has been taken of it.

Pages fees

The UK-IPO proposes to introduce a fee of £10 per page of the description of a patent application over 35 pages.  By comparison, the EPO charges €15 for each page of the application as a whole (description plus drawings and claims) over 35 pages.  The USPTO charges $400 for each block of 50 sheets after the first 100 sheets.  For a PCT application filed via the UK-IPO, £12 is charged for each page over 30 in the entire application including the pages of the official form.

The amount of the fee set by the UK-IPO is generally similar the amount elsewhere.  However the UK only counts the number of pages in the description, whereas the EPO and the PCT also count the pages of the claims and drawings (and the PCT counts the number of pages in the official form).  This difference is welcome, especially the exclusion of the pages of the drawings from the calculation.  In many cases, a description of an application is improved by including a large number of drawings, for example showing a moving part in various positions so that its movement can be understood more easily, but this can lead to a large number of drawings sheets.  We are glad that, at least in the UK, applicants will not be encouraged to reduce the number of drawings, or to cram them close together on a few sheets, in order to avoid a pages fee.

The excess pages fee in the UK will be part of the examination fee, and so it will not be payable at all for an application that is withdrawn before the examination fee is paid.  If the number of pages increases during the examination process, fees for any additional excess pages, beyond the excess pages paid for in the examination fee, will become due as a grant fee.

Because the initial excess pages fee will be part of the examination fee, a failure to pay the full amount of excess pages fees due will have the consequence that the entire patent application will be deemed to be withdrawn.  As with the new excess claims fee, this seems to be a very harsh penalty.

Alasdair Kennington’s response to the original UK-IPO consultation commented on this and suggested that there should at least be a procedure to allow a period for an underpayment to be corrected.  This concern is mentioned by the UK-IPO in the current proposal document, but no reply has been made and it seems that no account has been taken of it.

Other changes

The basic application fee will be increased to £90 for applications filed on paper and £60 for applications filed electronically.  There will also be a 25% surcharge if the application fee is not paid at the time of filing the application.

The basic amount of the search fee will be increased to £180 (£150 for an ex-PCT application) for search requests filed on paper and £150 (£120 for an ex-PCT application) for search requests filed electronically.

The basic amount of the examination fee will be increased to £130 for examination requests filed on paper and £100 for examination requests filed electronically.

Renewal fees for granted patents will be increased by £10 per year in respect of the 12th and subsequent years.

These fees remain modest compared with many other jurisdictions.


The UK-IPO’s proposals are available in full at:


The original UK-IPO consultation document is available at:


Click here to see Alasdair Kennington’s response to the consultation

Demo content


Authored by Alasdair Kennington