Trade Marks and the Internet
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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 jurisdiction.
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:
1. advertising directed specifically at that country,
2. the website itself being specifically directed to customers in that
3. 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
a. to include the evidence showing that consumers have contacted one
business/ person believing it to be the other business/ person or believing that
the two business/people are associated.
3. that damage has been suffered as a result.
Christina King specialises in Intellectual Property advising in particular on
trade mark registration and trade mark infringement.
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 2007-07-13 00:01:02 in Legal Articles