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Baker & McKenzie
Presented by Gabriela Vendlova3 December 2002
Intellectual Property Rights: Importance of Trademark Protection in the Digital World
Baker & McKenzie
GENERAL ISSUES OF TRADEMARK LAW
• KEY ISSUE: THE GLOBAL REACH OF INTERNET VS. THE PRINCIPLE OF TERRITORIALITY OF TRADEMARK LAWS
• PRACTICAL PROBLEMS OF INTERNET-RELATED TRADEMARK USE
• HOW TO SOLVE PROBLEMS OF INTERNET-RELATED TRADEMARK USE
Baker & McKenzie
KEY ISSUE: THE GLOBAL REACH OF INTERNET VS. THE PRINCIPLE OF TERRITORIALITY OF TRADEMARK LAWS
Use of trademarks on the Internet has cross-border, international and potentially multi-jurisdictional exposure and impact
Trademark law, by contrast, has always been used on the principle of territoriality
- uncertainty for any use of trademarks on the Internet.
Baker & McKenzie
PRACTICAL PROBLEMS OF INTERNET- RELATED TRADEMARK USE
Conflict of Laws country where the server with vendor’s website is located (one country) country for which market is the vendor’s website intended (one or
more countries) any country from which the vendor’s website may be accessed (all
countries worldwide) other (e.g. Country of Origin Rule)
Conflict of Trademarks trademarks from different territories (countries) meet in “cyberspace” uncertainty of trademark use on the Internet monopolization of trademarks on the Internet
Baker & McKenzie
HOW TO SOLVE PROBLEMS OF INTERNET-RELATED TRADEMARK USE
Multinational or global treaties and regulations (to minimize conflict of laws)
Localization of websites by vendors (to minimize conflict of laws and conflict of trademarks)
Trademark searches and investigations (to minimize conflict of trademarks).
Baker & McKenzie
SPECIFIC TRADEMARK INTERNET- RELATED ISSUES
• DOMAIN NAMES AND TRADEMARKS
• TRADEMARK ABUSE OF WEB TECHNOLOGIES
Baker & McKenzie
DOMAIN NAMES AND TRADEMARKS
Registration of Trademarks as Domain Names
• Registration in Bad Faith
- cyber-squatting
- competitors
• Registration in Good Faith
Registration of Domain Names as Trademarks
Baker & McKenzie
TRADEMARK ABUSE OF WEB TECHNOLOGIES
Hyperlinking and Trademark Infringement
• Deep linking (as a specific type of hyperlinking) may constitute confusion by customers about the origin of the trademark used within the deep-linked websites and therefore such deep-linking practices may be regarded as trademark infringement.
Metatags and Trademark Infringement
• Unauthorized use of third party’s trademark in metatags may infringe trademark, given that such use has misleading character concerning the origin of the trademark or goods and/or services associated with such trademark.
Baker & McKenzie
EU LAW (IN RELATION TO TRADEMARK INTERNET-RELATED ISSUES)
• EEC DIRECTIVE TO APPROXIMATE THE LAWS OF THE MEMBER STATES RELATING TO TRADEMARKS (89/104/EEC)
• EC REGULATION ON THE COMMUNITY TRADEMARK (40/1994/EC)
• EC DIRECTIVE ON CERTAIN LEGAL ASPECTS OF INFORMATION SOCIETY SERVICES, IN PARTICULAR ELECTRONIC COMMERCE, IN THE INTERNAL MARKET(“E-COMMERCE DIRECTIVE”) (2000/31/EC)
Baker & McKenzie
EEC DIRECTIVE TO APPROXIMATE THE LAWS OF THE MEMBER STATES RELATING TO TRADEMARKS (89/104/EEC)
• Limited harmonization
• Member States remain free to fix the provisions of procedure concerning the registration, the refusal, the revocation and the invalidity of trademarks
• Does not exclude the applicability to trademarks of the provisions of laws, other than trademark law, of the Member States - such as provisions relating to unfair competition, civil liability or consumer protection
• Lists examples of signs which may constitute a trademark
Baker & McKenzie
EEC DIRECTIVE TO APPROXIMATE THE LAWS OF THE MEMBER STATES RELATING TO TRADEMARKS (89/104/EEC) (cont’d)
• Trademarks must actually be used• Same protection under the legal systems of all the
Member States• No opposition to the use of a trademark subsequent to
another trademark when the use was knowingly tolerated for a substantial length of time
• Consistent with the Paris Convention
Baker & McKenzie
EC REGULATION ON THE COMMUNITY TRADEMARK (40/1994/EC)
• Directly applicable in all Member States without any need for transposition into local law
• Introduces the Community Trademark • Establishes the Office for Harmonization of Internal Market (OHIM)
Although the Regulation does not deal with trademark protection in the Digital World, it introduces “global” Community Trademark, which is globally protected within all Member States of the EU. Such global protection minimizes conflict of trademarks and conflict of laws, at least within the EU.
Baker & McKenzie
EC DIRECTIVE ON CERTAIN LEGAL ASPECTS OF INFORMATION SOCIETY SERVICES - IN PARTICULAR ELECTRONIC COMMERCE, IN THE INTERNAL MARKET (“E-COMMERCE DIRECTIVE”) (2000/31/EC)
• Legal framework for e-commerce and information services in general• Applicable law (“Country of Origin Rule”)• Country of Origin Rule does not apply (inter alia) to copyright, neighboring rights, and
other rights including industrial property rights (i.e. trademarks).
- does not resolve the conflict of law problem withrespect to trademarks
Baker & McKenzie
STATUS OF TRADEMARK LAW IN TRANSITION COUNTRIES (IN RELATION TO TRADEMARK INTERNET- RELATED ISSUES) - IMPLEMENTATION OF EU LAW
• CZECH REPUBLIC• SLOVAK REPUBLIC• POLAND• HUNGARY
Baker & McKenzie
CZECH REPUBLIC
European Union Legislation and Its Implementation• General issues• EEC Directive to approximate the laws of the Member States relating to trademarks (89/104/EEC)
- Implemented- Conflicts between CTM and registered or pending national trademarks- National exhaustion of trademark rights (Czech Republic)
• Regulation on the Community trademark (40/1994/EC)
- Directly effective as of the date of accession to the EU
Baker & McKenzie
CZECH REPUBLIC
• EC Directive on certain legal aspects of information society services - in particular electronic commerce, in the Internal Market(“E-commerce Directive”) (2000/31/EC)
- Not yet implemented
• EC Regulation on the export and re-export of goods infringing certain intellectual property rights (3295/94/EC)
Specific National Legislation
- None
Baker & McKenzie
CZECH REPUBLIC
Domain Names and Internet
- No specific legislation
- Registration of trademarks as domain names: CZ-NIC - special request only
- Registration of domain names as trademarks: Industrial Property Office
- as any other trademark
- has refused to register certain domain names (lack of distinctiveness)
Baker & McKenzie
CZECH REPUBLIC Case Law
- Several court decisions
- Preliminary injunctions in Internet trademark disputes
Jurisdiction and Applicable law
- No specific amendments to national private international law
- No specific guidelines
Emerging Issues
- New Trademark Act (2003)
- Community exhaustion of trademark rights
Baker & McKenzie
SLOVAK REPUBLIC
European Union Legislation and its Implementation – Issues
• EEC Directive to approximate the laws of the Member States relating to trademarks (89/104/EEC)
• Implemented
• Regulation on the CTM (40/1994/EC)
- Directly effective as of the date of accession to the EU
• EC Directive on certain legal aspects of information societyservices - in particular electronic commerce, in the InternalMarket (“E-commerce Directive”) (2000/31/EC)
• EC Regulation on the export and re-export of goodsinfringing certain intellectual property rights (3295/94/EC)
- Implemented
Baker & McKenzie
SLOVAK REPUBLIC
Specific National Legislation
- None
Domain Names and Internet
- No specific legislation- Registration of trademarks as domain names: EuroWeb Slovakia
- rules for domain name registration
- protection of trademark holders- Registration of domain names as trademarks: Industrial
Property Office - as for any other trademark
- has refused to register certain domain names (lack of distinctiveness)
Baker & McKenzie
SLOVAK REPUBLIC
Case Law
- No court decisions
Jurisdiction and Applicable law
- No specific amendments to national private international law
- No specific guidelines
Emerging Issues
- Interested in harmonization of international private and
procedural law
Baker & McKenzie
POLAND European Union Legislation and Its Implementation – Issues• EEC Directive to approximate the laws of the Member States relating to trademarks (89/104/EEC)
- Implemented
- Interim provisions (incompatibility with EU law)
- Regional Exhaustion (Poland + States of free trade Zone)
• Regulation on the CTM (40/1994/EC)
- Directly effective as of the date of accession to the EU
• EC Directive on certain legal aspects of information society services - in particular electronic commerce, in the Internal Market (“E-commerce Directive”) (2000/31/EC)
- Not yet implemented (expected to be implemented in Spring 2003)
Baker & McKenzie
POLAND
Specific National Legislation
- None
Domain Names and Internet
- No specific legislation- Registration of trademarks as domain names: NASK
- no internal rules for trademark protection
- since December 2002: trademark arbitration- Registration of domain names as trademarks: Patent Office
- as for any other trademark
- has refused to register certain domain names (lack of distinctiveness)
Baker & McKenzie
POLAND
Case Law
- No court decisions
Jurisdiction and Applicable law
- No specific amendments to national private international law
- No specific guidelines
Emerging Issues
- Poland has implemented Directive 98/71/EC on the legal protection of designs. This Directive gives a legal basis for registration of computer symbols and typefaces as designs.
Baker & McKenzie
HUNGARY
European Union Legislation and its Implementation – Issues
• EEC Directive to approximate the laws of the Member States relating to trademarks (89/104/EEC)- Implemented- National exhaustion of trademark rights (Hungary)
• Regulation on the CTM (40/1994/EC)
- Directly effective as of the date of accession to the EU
Baker & McKenzie
HUNGARY
• EC Directive on certain legal aspects of information society services - in particular electronic commerce, in the Internal Market(“E-commerce Directive”) (2000/31/EC)
- Partially implemented (Act CVIII of 2001 on Certain Aspects of Electronic Commercial Services and Information Society Services - Country of Origin Rule, Limited Liability of Internet Service Providers)
Specific National Legislation
- None
Baker & McKenzie
HUNGARY
Domain Names and Internet
- No specific legislation
- Registration of trademarks as domain names:Council of Hungarian Internet Service Providers
- internal rules for trademark protection
- active protection of trademarks
- Registration of domain names as trademarks: Patent Office
- as for any other trademark
Case Law
- Several pending litigations
- A few preliminary injunctions
Baker & McKenzie
HUNGARY
Jurisdiction and Applicable law
- No specific amendments to national private international law
- No specific guidelines
Emerging Issues- Registrars' liability for trademark infringement- Relation between pending trademark and domain-name registration (for an identical denomination)
Baker & McKenzie
Questions?