Strategy with new gTlds

Every week since January of this year new top level domain names are launched. For companies this is very relevant. At the conception of a new trademark or product the domain name is frequently already taken. In this case a clothing store wanted to start under the name ALEX. However, the url ALEX.NL was no longer available, since it was owned by a bank. ALEXFASHION.NL was available, but for obvious reasons this domain name is not optimal.

In cases like this the new gTlds may provide an outcome. More extensions are available and some are very relevant for businesses, for example: .ACCOUNTANTS, .FINANCE, .FITNESS, .GIFTS, .MARKETING, .MEDIA, .PRESS, .RESTAURANT and .WEBSITE.


Apart from the registration of the name of the company it is advisable to register the url for the most important trademarks and search words as well. Names that consist of only a few letters, such as ING or KLM are usually gone first.

We therefore advise to register the most important names during the Sunrise phase. It is important to have a strategy on what should and what should not be registered, though. The number of top level domain names is very large which means a choice need to be made.

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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?