Trademark infringement and the internet

One of the biggest challenges to the territorial nature of trademark protection is the use of trademarks on the internet. What is the situation, for instance, if a French website uses a trademark registered in the UK to promote the same goods or services? If the website is accessible to users in the UK, does use of the trademark constitute infringement?

“omnipresent cyberspace”
An indication of how this situation might be dealt with in the UK, can be gleaned from the court’s approach in 1-800 Flowers Inc v Phonenames Ltd [2000] ETMR 369. The case concerned opposition proceedings in a trademark application to register the alphanumeric mark ‘800-FLOWERS’. The court was asked to consider whether use of the proposed mark on a website proved that the mark was intended for use in the UK. The Applicant argued that since his website could be accessed by users in the UK, this showed a clear intention to use the mark in that territory.

Justice Jacob roundly rejected this idea, arguing that the mere fact that a website can be accessed anywhere in the world, does not mean that it should be regarded as being used everywhere in the world. Instead, the website owner’s intentions should be assessed based on the site content and the impression a user would be likely to gain when entering the site. Taking the alternative view would lead to the untenable situation whereby any use of a trademark on any website, wherever the owner of the site is located, could amount to a trademark infringement anywhere in the world, since a website exists in an “omnipresent cyberspace”. His Lordship concluded:

...[f]or trade mark laws to intrude where a website owner is not intending to address the world but only a local clientele and where anyone seeing the site would so understand him, would be absurd.

Intention of the website owner
Returning to our initial example, Justice Jacob’s reasoning suggests that a French website using a UK trademark in the course of business, will not constitute an infringement if the site’s activities are not directed towards the UK. The website owner might, for example, point to the fact that the content is written mainly in French, or that the prices are only listed in Euro, as evidence that his website is not targeting UK consumers. What would be the case, however, if his website used a ‘co.uk’ domain name? Could this alter the impression given by the content? The recent judgment by the European Court of Justice in the joint cases of Peter Pammer v Reederei Karl Shlüter GmbH (C-585/08) and Hotel Alpenhof GesmbH v Oliver Heller (C-144/09) suggests that this could be the case. In this instance, the Court held that where a website uses a top-level domain name other than that of the member state in which the trader is established, this would amount to strong evidence that the website’s activities were targeting nationals of other member states.

Local trading
These rulings indicate that there are a number of steps an online trader could take to protect their unregistered trademarks from the risk of litigation. Using a local domain name, for instance, rather than opting for territorially-neutral domain names such as ‘.com’ or ‘.eu’, could be a vital way to indicating a website’s intended recipients. Doing so could also have implications for a trader using an unregistered trademark, who wished to rely on the localised nature of his business as a defence to allegations of trademark infringement where he can demonstrate prior use of his mark. Section 11(3) of the Trade Marks Act 1994 provides that a registered trademark will not be infringed by an unregistered mark used in the course of trade, if the mark has an earlier right and applies within a particular locality. The purpose of the provision is to protect local businesses that may have accumulated good will in a brand used within a restricted geographical area. The courts’ sensible approach to trading on the internet means that local businesses can still find a degree of protection if they can demonstrate, through the architecture of their website, that their intention was to target a localised or regional market.



By Katey Dixon