Does Having a Website Protect my Brand
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Issued on 11th October 2010
Does Having a Website Protect my Brand?
Trade marks are essentially territorial
and as such the associated rights in relation to preventing
infringement are to a certain extent limited according to the
jurisdictions in which a trade mark is registered and or used.
Therefore generally a trade mark owner from one jurisdiction would not
necessarily be able to stop someone from using its mark in another
This basic position has arguably been
complicated by e-commerce.
The internet and wide spread use of
e-commerce mean that a trade mark has a wider reach than was previously
the case, given that a website can potentially be viewed by anyone,
anywhere in the world. Therefore at a basic level it would appear that
if a company displays its goods or services on a website, its trade
marks are potentially being used on a global scale given that customers
in any country may be able to access the website.
However this is an over simplification. In
order to bring an infringement action it is likely that the trade mark
owner would need to be able to show more than just a theoretical
availability of the website within the jurisdiction in which
infringement is alleged.
A trade mark owner would need to able show
that he has actually had dealings with customers within that
jurisdiction. This may be achieved either through: advertising directed
specifically at that country,the website itself being specifically
directed to customers in that country, or through evidence of a
significant number of sales within the country.
In addition in the absence of any
registered rights within that jurisdiction the trade mark owner will
have to rely on the law relating to unregistered trade marks in the
country in question. This is likely to impose a heavier burden of proof
than is required in respect of a registered trade mark. For example in
the UK in the absence of any registered rights it would be necessary to
show that:1. the sign was recognised by the relevant consumers as
identifying the goods of the business or person in question, 2. that
consumers are likely to be confused by use of the alleged infringing
sign, 3. that damage has been suffered as a result.
specialise in commercial
and intellectual property law. email@example.com
About the Author
Lawdit Solicitors offer services and
advice for litigation, commercial contracts, Intellectual Property and IT legal
agreements. We are experts in commercial law with a heavy emphasis on
Intellectual Property, Internet and e-commerce law. Lawdit is a member of the
International Trademark Association, the Solicitors' Association of Higher Court
Advocates and we are the appointed Solicitors to the largest webdesign
association in the world, the United Kingdom Website Designers Association.
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Article Published/Sorted/Amended on Scopulus 2010-11-02 12:08:27 in Legal Articles