Trade Marks

1
Trade Marks Domain Names

• Chapter 8, Forder Quirk

2

• 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

3

• 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

4

• 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

5

• 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

6

• 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

7

• 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 URLs
• Domain names have no geographic constraints
• One name can cover all goods and services
• Domain name can only be used by one person

8

• 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

9

• Generic Top Level Domains

com edu net org gov mil int biz info name museum coop aero pro Asn Id
10

• 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

11

• Domain Names (cont.)
• Applicants must state that
• Registration does not infringe third party rights
• Courts of applicants domicile will adjudicate
  disputes
• Disputes
• Originally settled by courts
• Now, applicants submit to ICANNs Uniform Domain
  Names Dispute Resolution Policy

12

• 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
  applicants name

13

• Domain Names (Australia)
• Licence to use domain name can be revoked
• Disputes are heard by
• auDA at first
• WIPO under ICANNs Uniform Domain Names Dispute
  Resolution Policy

14

• 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

15

• Infringement of Trademarks
• Infringement 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

16

• 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

17

• Infringement of Trademarks (cont.)
• Cybersquatting
• Marks Spencer v One in a Million (FQ p230)
• Panavision v Toeppen (FQ p231)
• Courts focused on commercial use evidenced by the
  intention to resell
• Misleading names
• Hasbro v Internet Entertainment Group (FQ p231)
• Involves dilution of trademark

18

• Infringement of Trademarks (cont.)
• Preventing Competitor using its own name
• Playboy v Calvin Designer Label (FQ p231)
• Inconsistent Appraoch
• Amazon v Ibazar (FQ p231)

19

• 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 purchasers country
• Re Trade Marks Act (Stuttgart Court of Appeal
  13/10/97) (FQ p232)

20

• Infringement of Trademarks (cont.)
• Meta tags may not infringe a trademark
• Brookfield Communications v West Coast
  Entertainment (FQ 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

21

• 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 (FQ p232)

22

• Dispute Resolution
• Condition of registration that applicant
• Submits to ICANN dispute resolution process
• Submits to jurisdiction of courts in applicants
  territory
• Submits to jurisdiction of courts in registrars
  territory
• Over 4,000 disputes adjudicated

23

• 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

24

• Dispute Resolution (cont.)
• Procedure (FQ 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

25

• Dispute Resolution (cont.)
• May decline registration pending court decision
• Adaptive Molecular Technologies v Woodward (FQ
  p239)
• Domain can prevail over Trade Mark
• Gateway v Pixelera.com (FQ p239)
• Cybersquatting
• Telstra v Joen (FQ p240)
• Bad Faith
• Kraft v The Pez Kiosk (FQ p240)

26

• Dispute Resolution (cont.)
• Alcoholics Anonymous v Friends of Bill W (FQ
  p240)
• No bad faith
• Respondent had a legitimate business activity not
  in competition with applicant
• Geographical Names
• Brisbane City Council v Warren Bolton Consulting
  (FQ p247-248)

27

• 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
  plaintiffs trade mark

28

• 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
  plaintiffs personal name
• Allows for transfer, damages and costs
• Slower than UDRP

29

• Alternative Protection (cont.)
• Courts are not bound by UDRP decisions
• Can be used to, in effect, review UDRP decisions
• Barcelona.com (FQ p243)
• Corinthians (FQ p243)
• Does this make the US Courts de facto Internet
  Courts of Appeal?

30

• Passing Off
• Passing 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

31

• 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

32

• Passing Off (cont.)
• Factors negating misrepresentation
• Name has obtained a secondary meaning and is
  descriptive of goods and services provided
• Use of a persons own name
• Re Krupp (FQ p249)
• Actions outside the traders country
• Internet World Case (FQ p250)

33

• Passing Off (cont.)
• Factors negating misrepresentation (cont.)
• Use of distinguishing material
• Yahoo v Akash Arora (FQ p250)
• The products do not share a common field of
  activity

34

• 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 (FQ p251)

35

• 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 defendants behavior