MANAGEMENT & LEGAL IMPLICATIONS OF eCOMMERCE Trade Marks & Domain Names Chapter 8, Forder & Quirk.

MANAGEMENT & LEGAL IMPLICATIONS OF eCOMMERCE

Trade Marks & Domain Names

Chapter 8, Forder & Quirk


Trade Name Protection The right to use a name to seel goods is

protected by: Trade Marks Act Law of passing off

These have geographic limits


Trademark A sign used to distinguish goods of one trader

from goods of another trader Sign is any combination of “any letter, word,

name, signature, numeral, device, heading, label, ticket, aspect of packaging, shape colour, sound or scent”.

Must be distinctive Supported by national laws e.g. Trade Marks Act Has a geographic limit


Registration Must register trademark with government Registrar checks application for compliance Others can object Procedure set out in F & Q p 222 Registration is restricted to specified classes of

goods (34) and services (8) as nominated by applicant

Application must describe specific goods\services in each class


Registration Applicant is granted monopoly rights during

period of registration Rights are limited to Australia Registered for 10 years Registration can be extended Owner must continue to use trademark

otherwise can lose right to trademark


Global Trade Marks Madrid Agreement 1891 Common Regulations of Madrid Protocol 1996 Establishes international system of trade mark

registration 70 countries have signed including UK,

European Union, China, Japan and Australia Single application & renewals in one country Must be available in all selected foreign

countries


Domain Names Every server on the web has a Uniform

Resource Locator (URL) Consists of 4 octets e.g. 125.125.125.17 Domains names are used as numbers are

difficult to remember Domain names are mapped to URL’s Domain names have no geographic constraints One name can cover all goods and services Domain name can only be used by one person


Domain Names (cont.) Consist of

Country code top level domain name (ccTLD) Generic top level domain name (gTLD) Second level domain name Can be prefixed by server name

E.g. www.microsoft.com scaleplus.law.gov.au


Generic Top Level Domains com edu net org gov mil int biz

info name museum coop aero pro Asn Id


Domain Names (cont.) In USA, Administered by ICANN Names registered on a “first come first served”

basis No proprietary rights in domain name Domain name can be suspended, cancelled or

transferred pursuant to ICANN Dispute Resolution Policy


Domain Names (cont.) Applicants must state that

Registration does not infringe third party rights Courts of applicant’s domicile will adjudicate

disputes Disputes

Originally settled by courts Now, applicants submit to ICANN’s Uniform

Domain Names Dispute Resolution Policy


Domain Names (Australia) Some countries have adopted a restricted

approach In Australia

Administered by auDA since 2001 Originally, domain name had to be directly

derived from the legal name of the commercial entity applying to register name

Now, some generic names (e.g. computers.com.au) allowed provided that there is a connection to applicant’s name


Domain Names (Australia) Licence to use domain name can be revoked Disputes are heard by

auDA at first WIPO under ICANN’s Uniform Domain

Names Dispute Resolution Policy


Trademarks & Domain Names Problems No two domain names can be identical but two

trademarks can be identical if used for different goods\services

More than one person can use the same trade mark in different territories but domain names have a global reach

No need for a domain name to have a matching trademark

Competing claims Cybersquatting


Infringement of TrademarksInfringement occurs when A person uses a trademark that is

substantially identical or deceptively similar

to the registered trademark In connection with the sale of the specified

goods or services


Infringement of Trademarks (cont.) Assessment of the similarity between the 2

marks and the possible level of confusion Use of Domain name can infringe trademark

Attempting to sell it to rightful owner is a use of the trademark in connection with trade

Highjacking by sex sites Use of trademark by licensee to sell goods in

another territory is an infringement


Infringement of Trademarks (cont.) Cybersquatting

Marks & Spencer v One in a Million (F&Q p230)

Panavision v Toeppen (F&Q p231) Courts focused on commercial use evidenced

by the intention to resell Misleading names

Hasbro v Internet Entertainment Group (F&Q p231)

Involves “dilution” of trademark


Infringement of Trademarks (cont.) Preventing Competitor using its own name

Playboy v Calvin Designer Label (F&Q p231) Inconsistent Appraoch

Amazon v Ibazar (F&Q p231)


Infringement of Trademarks (cont.) Person must be licensed to sell trademarked

goods in the territory This prohibits importation where seller does not

have license for purchaser’s country Re: Trade Marks Act (Stuttgart Court of Appeal

13/10/97) (F&Q p232)


Infringement of Trademarks (cont.) Meta tags may not infringe a trademark

Brookfield Communications v West Coast Entertainment (F&Q p232) Can use descriptive terms that infringe a

trademark as there is no likelihood of confusion There is confusion when user goes to wrong site

but this is acceptable as it is no different from normal search engine problems

Law may change


Infringement of Trademarks (cont.) Tacking

A trademark owner can claim priority based on the date it first used a similar mark

This may be a date before registration of the mark

Consumers must consider them to both be the same mark

See Brookfield Communications v West Coast Entertainment (F&Q p232)


Dispute Resolution Condition of registration that applicant:

Submits to ICANN dispute resolution process Submits to jurisdiction of courts in applicant’s

territory Submits to jurisdiction of courts in registrar’s

territory Over 4,000 disputes adjudicated


Dispute Resolution (cont.) Arbitration in 3 situations:

The domain name is identical or confusingly similar to a trade mark to which the complainant has rights

The applicant has no legitimate interest in the domain name

The domain name is being used in bad faith Cannot deal with disputes outside those listed

e.g. competing valid claims to domain name


Dispute Resolution (cont.) Procedure (F&Q p235)

Online complaint To one of 4 nominated dispute resolution

providers Provider forwards complaint to owner within 3

days Owner responds within 20 days Provider nominates arbitrators (1 or 3) Arbitrators have 14 days to make a decision


Dispute Resolution (cont.) May decline registration pending court decision

Adaptive Molecular Technologies v Woodward (F&Q p239)

Domain can prevail over Trade Mark Gateway v Pixelera.com (F&Q p239)

Cybersquatting Telstra v Joen (F&Q p240)

Bad Faith Kraft v The Pez Kiosk (F&Q p240)


Dispute Resolution (cont.) Alcoholics Anonymous v Friends of Bill W (F&Q

p240) No bad faith Respondent had a legitimate business activity

not in competition with applicant Geographical Names

Brisbane City Council v Warren Bolton Consulting (F&Q p247-248)


Alternative Protection Anticybersquatting Consumer Protection Act,

1999 (USA) Plaintiff must show

It is owner of trade mark Defendant registered, trafficked or used in

domain name identical or confusingly similar to trade mark

Domain name has bad faith intent to profit from plaintiff’s trade mark


Alternative Protection (cont.) Alternatively, plaintiff must show

It is a personal name Defendant registered the personal name as a

domain name without consent Domain name has bad faith intent to profit

from plaintiff’s personal name Allows for transfer, damages and costs Slower than UDRP


Alternative Protection (cont.) Courts are not bound by UDRP decisions Can be used to, in effect, review UDRP

decisions Barcelona.com (F&Q p243) Corinthians (F&Q p243)

Does this make the US Courts de facto Internet Courts of Appeal?


Passing OffPassing off will occur where there has been A misrepresentation Made in the course of trade To prospective customers Which is calculated to injure the business or

goodwill of another trader Which causes, or is likely to cause, actual or

probable damage to the business or goodwill of another trader


Passing Off Cont.) Passing off only protects the reputation that a

trader can prove May be restricted by

Geography (e.g. Prince PLC) type of goods (e.g. Spice Girls) or section of the community (e.g. AIM)

Mere registration of a domain name without trade is not enough

Representation can occur when domain name is offered for sale


Passing Off (cont.) Factors negating misrepresentation

Name has obtained a secondary meaning and is descriptive of goods and services provided

Use of a person’s own name Re Krupp (F&Q p249)

Actions outside the trader’s country Internet World Case (F&Q p250)


Passing Off (cont.) Factors negating misrepresentation (cont.)

Use of distinguishing material Yahoo v Akash Arora (F&Q p250)

The products do not share a common field of activity


Passing Off (cont.) Courts look for a “Common field of activity” to

assess if there is a representation to a traders actual or prospective customers Stringfellow v McCain (F&Q p251)


Section 52 Trade Practices Act “A corporation shall not, in trade or commerce,

engage in conduct that is misleading or deceptive or is likely to mislead or deceive.”

Requires Identification of a section of the public that is likely to

be misled Assessment of the abilities of the people in this

section Objective assessment of whether these people will be

misled A causal connection between the representation and

the defendant’s behavior

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MANAGEMENT & LEGAL IMPLICATIONS OF eCOMMERCE Trade Marks & Domain Names Chapter 8, Forder & Quirk.

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