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

Why register your trademark?

Defending your castle

American investor, Warren Buffett famously spoke of successful businesses as, “economic castles with unbreachable moats”. While the castle refers to the product or service being offered, the moat signifies a business’s ability to create a sustainable commercial advantage in a competitive market. Securing your intellectual property is key to defending your product from rival businesses. In a rapidly expanding global market, propelled by the internet, awash with counterfeit products, a company’s trademark is its primary fortification.

A trademark is a logo, image or symbol (or more unusually, a shape, colour or sound) that distinguishes your goods or services from those of your competitors. It not only defines the origin of the goods, denoting quality and accountability, but it creates an image, attracting consumers through its presentation, marketing and advertising. A company is not required to register its trademark, however it is through registration that maximum protection can be effected.

(i) Extending your protection
It is a common misconception that registering your company or domain name prevents others from using that name as a trademark. The only way to guarantee legal exclusivity is to register your trademark. Although it is possible to take action at common-law to prevent a competitor from passing off your unregistered mark as their own, this can be a costly and difficult process. Not only must you prove that good will - in the shape of a strong reputation - is attached to your mark, but you must also show that the misrepresentation is likely to deceive the public.

By registering a trademark the presumption of valid ownership is raised, and all that must be proved is that an identical mark was used without consent for the same goods or services. The unlicensed use of similar marks for similar goods or services will also constitute infringement where it can be shown that there exists a likelihood of confusion on the part of the public. Further protection is afforded where a good reputation can be said to have attached to the RTM (registered trademark). In this case an infringement occurs when a trader takes unfair advantage of the mark, or uses it in a way that is detrimental to its distinctive character.

(ii) Securing your stronghold
Registering your trademark will also minimise the risk of being sued for trademark infringement by a competitor. Under trademark law, registration is a defence to an action for infringement. In the absence of any innocent use defence, using a trademark that has been registered by another business could lead to expensive litigation, forcing you to rebrand your goods or services, thereby losing any associated goodwill amassed to date. RTMs are identifiable by the ® symbol. Since it is an offence to use this symbol for unregistered marks, its presence is likely to act as a strong deterrent for would-be infringers. Moreover having registered your trademark, you will receive notification from the registering office, of applications for similar or identical marks targeting similar market areas. This allows you the opportunity to oppose those applications that, if successful, would threaten the exclusivity of your mark.

(iii) Financial incentives
There are also significant financial incentives to register your trademark. An RTM is a quantifiable asset with a monetary value. It is treated at law as a form of property, and can therefore be bought, sold or licensed for exploitation. By demanding royalties for usage of the RTM under a license, it can serve as a revenue base for the registered owner. RTMs can also be used as a security interest in financial agreements.

Looking at the bigger picture, a business with an RTM, shielded from the risks of lengthy infringement disputes, and confident of the ownership and parameters of its intellectual property, is a business fortified against competitors, and therefore attractive to potential investors and buyers. Registering your trademark is therefore not only a way to safeguard your immediate concerns, but is also a means of protecting your future interests, should you wish to exploit your success through licence agreements, or sell your assets for the value they are truly worth.

Contact us for a trademark registration quote.

UK Trademark Registration - Step by Step Guide

We make trademark registration simple and affordable.

Step 1

You submit your details to us together with a description of your intended trademark via the Register Your Trademark link

Step 2

One of our IP team will contact you usually within 3 to 24 (working) hours to discuss your application and provide the necessary advice and cost estimate.

Step 3

In most cases we would advise you to undertake a thorough search against your intended trademark. If you decide to use our Premium Search services for these purposes, then as soon as we have received and confirmed your instructions as correct we will ask you to submit a payment on account to cover our search fees. Once the payment has been received your instructions will be forwarded to one of our IP team for processing. Once we have completed a full and detailed search against your intended mark we will forward a report of our findings to you. This usually takes about 10 working days.

Step 4

Depending upon the outcome of any search report, if you then decide to proceed with our Trademark Registration services, then following receipt of your instructions we will contact you to:

• check and confirm your instructions;
• supply you with a copy of the terms and conditions which will govern our supply of services (and we will ask you to confirm your acceptance of these);
• we will request a payment on account to cover our fees and the registry fees.

Step 5

Upon confirmation of your initial instructions and receipt of your acceptance of our terms and conditions, together with receipt of the payment on account your instructions we will:

• send you a trademark specification sheet setting out the particular classes of goods / services against which you have chosen to register your trademark; and
• once you have confirmed your agreement to the wording of the application the IP team will then prepare and file your application together with the relevant fee at the Trademark Registry.

Step 6

You should expect the Trademark Registry to issue its examination report within approximately 2 months following submission of your application form. We will notify you as soon as we receive this report. The examiner can refuse registration if he considers that your mark is not sufficiently distinctive. However, he will not refuse your mark simply because of an earlier conflicting mark, unless the owner of that mark has successfully opposed your application. If the examiner considers that there may be potential earlier conflicting marks already on the register, you will then have the choice of:

• either continuing with your application as it stands; or
• trying to avoid the potential conflict by restricting the list of goods and services to which your application relates (i.e. limiting the classes); or
• agreeing to withdraw your application.

If you choose to proceed with an application where the examiner has raised the potential of conflicts with earlier marks then the examiner will notify the holders of the earlier marks of this fact and it will be left to the discretion of those notified mark holders (or other third party objectors) as to whether they will oppose your application. This is why undertaking a Premium Search service can be so important.

Step 7

If your mark has not been rejected by the Trademark Registry you can expect it to be published in the Trademark Journal approximately 3 weeks after the examination report has been issued. If the Trademark Registry receives no opposition to your mark within 3 months of the date of publication they will then issue you with a trademark certificate. We will notify you as soon as the certificate is issued.

Trademarks: Identifying your Business Classes

Trademarks are always registered against particular classes of goods (classes 1 - 34) and services (classes 35 - 45), which comprise the commercial areas of business to which your trademark relates (i.e. which your mark will be used to promote).

Note that a trademark can be registered against more than one class of goods or services. This is important since registration against a single class only protects the registered trademark's use in relation to that class of goods or services. For example, if you wanted to register a brand name for a particular type of leather suitcase then this would be registered under class 18. You would then be protected against a competitor marketing a suitcase using that same or a similar brand name. However, you would not be protected against a tractor manufacturer using the same or similar mark to market one of their tractors (under class 12).

Your registered trademark will only protect you in relation to (and be limited to) the particular classes of goods and services that you chose for your trademark on registration. It is therefore extremely important that you correctly identify the particular goods and services which you intend to use with your trademark. You will also need to bear in mind the costs implications when you come to selecting your classes. In the UK the Trademark Registry will charge an additional fee of £50 for each additional class of goods and services you include with your application in excess of a single class. For EU Community trademarks the OHIM charges an additional fee of €150 for each class of goods and services you include with your application in excess of 3 classes.There is also a similar fee to be paid on registration.

The relevant classes are set out below:

Class 1	Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry. Also in this class are chemicals for the making of products belonging to other classes. Does not include fungicides, herbicides, insecticides or preparations for destroying vermin which are in Class 5.
Class 2	Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists. Does not include paint boxes for children which are in Class 16 or insulating paints and varnishes which are in Class 17.
Class 3	Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. Also in this class are deodorants for personal use. Does not include air deodorising preparations which are in Class 5 or scented candles which are in Class 4.
Class 4	Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting. Also in this class are combustible fuels, electricity and scented candles.
Class 5	Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides. Also in this class are foods and beverages which are adapted for medical purposes. Does not include supportive bandages which are in Class 10.
Class 6	Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores. Also in this class are unwrought and partly wrought common metals as well as simple products made of them; metallic windows and doors and also metallic framed conservatories.
Class 7	Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs. Also in this class are parts of engines and motors; some parts for vehicles, (for example exhausts for vehicles); vacuum cleaners. Does not include engines or motors for land vehicles which are in Class 12 or specialist machines (for example, weighing machines are in Class 9).
Class 8	Hand tools and implements (hand operated); cutlery; side arms; razors. Also in this class are electric razors and hair cutters; cutlery made of precious metal. Does not include surgical cutlery which is in Class 10 or hand held and electrically powered tools, (for example, electric drills are in Class 7).
Class 9	Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers; calculating machines, data processing equipment and computers; fire-extinguishing apparatus. Also in this class are computer hardware and firmware; computer software (including software downloadable from the Internet); compact discs; digital music (downloadable from the Internet); telecommunications apparatus; computer games equipment adapted for use with an external display screen or monitor; mouse mats; mobile phone accessories; contact lenses, spectacles and sunglasses; clothing for protection against accident, irradiation or fire. Does not include printed computer manuals which are in Class 16, self contained computer games equipment which is in Class 28, various electrical items (for example, electric screwdrivers are in Class 7 and electric toothbrushes are in Class 21).
Class 10	Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials. Also in this class are electro-medical or surgical apparatus; massage apparatus. Does not include contact lenses, spectacles or sunglasses which are in Class 9 or wheelchairs which are in Class 12.
Class 11	Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes. Also in this class are air conditioning apparatus; electric kettles; gas and electric cookers; vehicle lights.
Class 12	Vehicles; apparatus for locomotion by land, air or water. Also in this class are motors and engines for land vehicles and certain other parts and fittings, (for example, vehicle body parts and transmissions). Does not include certain parts or fittings for vehicles, (for example, exhausts and starters are in Class 7, lights and air conditioning units are in Class 11) or children's toy bicycles which are in Class 28.
Class 13	Firearms; ammunition and projectiles, explosives; fireworks. Does not include apparatus for use in playing paint ball combat games which are in Class 28.
Class 14	Class 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments. Also in this class are clocks and watches; costume jewellery. Does not include certain precious metal items, (for example, cutlery is in Class 8, pens are in Class 16).
Class 15	Musical instruments. Also in this class are stands and cases adapted for musical instruments.
Class 16	Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks. Also in this class are disposable nappies of paper for babies; printed publications. Does not include adhesives for industrial purposes which are in Class 1, electronic publications (downloadable) which are in Class 9, providing electronic publications (not downloadable) which are in Class 41 or wallpaper which is in Class 27.
Class 17	Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal. Also in this class are semi-finished plastics materials for use in further manufacture. Does not include unprocessed plastics in the form of liquids, chips, granules etc which are in Class 1.
Class 18	Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery. Also in this class are handbags, rucksacks, purses; clothing for animals. Does not include leather clothing which is in Class 9 (for protection against injury) or in Class 25 (ordinary apparel); certain specialist leather articles, (for example cheque book holders are in Class 16).
Class 19	Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal. Also in this class are non-metallic framed conservatories, doors and windows.
Class 20	Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics. Also in this class are both metallic and non-metallic furniture including garden furniture; pillows and cushions. Does not include duvets or covers for pillows, cushions or duvets which are in Class 24, furniture adapted for medical use which is in Class 10 or furniture adapted for laboratory use which is in Class 9.
Class 21	Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool; un-worked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes. Also in this class are both electric and non-electric toothbrushes. Does not include electric kitchen appliances, (for example electric food processors are in Class 7, electric kettles are in Class 11) or kitchen and table cutlery which is in Class 8.
Class 22	Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials. Also in this class are bags and sacks for transporting bulk materials.
Class 23	Yarns and threads, for textile use.
Class 24	Textiles and textile goods, not included in other classes; bed and table covers. Also in this class are textile piece goods; textiles for making articles of clothing. Does not include table linen of paper which is in Class 16 or electric blankets (not for medical use) which are in Class 11.
Class 25	Clothing, footwear, headgear. Does not include clothing for the prevention of accident and injury which is in Class 9, surgeons' clothing which is in Class 10 or clothing for animals which is in Class 18.
Class 26	Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers. Also in this class are dressmakers' articles; badges for wear (other than precious metal badges).
Class 27	Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile). Also in this class are wallpaper. Does not include mouse mats which are in Class 9, mats specifically shaped/adapted for vehicles which are in Class 12 or travellers' rugs which are in Class 24.
Class 28	Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees. Also in this class are hand-held computer games equipment which is self contained (not adapted for an external display screen or monitor). Does not include computer games equipment adapted for use with an external display screen or monitor or software for all types of electronic games which are in Class 9.
Class 29	Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats. Also in this class are prepared meals and snacks whose main ingredients are proper to this class, (for example, soups and potato crisps). Does not include sandwiches which are in Class 30 or foodstuffs for animals which are in Class 31.
Class 30	Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice. Also in this class are prepared meals and snacks whose main ingredients are proper to this class, (for example, pizzas, pies and pasta dishes). Does not include foodstuffs for animals which are in Class 31.
Class 31	Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables, seeds, natural plants and flowers; foodstuffs for animals; malt. Also in this class are all food and beverages for animals. Does not include tea, coffee or chocolate-based beverages which are in Class 30.
Class 32	Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages. Also in this class are shandy, de-alcoholised drinks, non-alcoholic beers and wines.
Class 33	Class 33 Alcoholic beverages (except beers). Also in this class are wines, spirits and liqueurs; alcopops. Does not include beers which are in Class 32.
Class 34	Tobacco; smokers' articles; matches. Also in this class are lighters for smokers.
SERVICES
Class 35	Advertising; business management; business administration; office functions. Also in this class are the organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; auctioneering; trade fairs; opinion polling; data processing; provision of business information; certain specific services provided by retailers. Does not include computer programming which is in Class 42 or raising finance for business which is in Class 36.
Class 36	Insurance; financial affairs; monetary affairs; real estate affairs. Also in this class are building society services; banking (including home banking); stockbroking; financial services provided via the Internet; issuing of tokens of value in relation to bonus and loyalty schemes; provision of financial information. Does not include accountancy which is in Class 35, lottery services which are in Class 41 or conveyancing services which are in Class 45.
Class 37	Building construction; repair; installation services. Also in this class are installation, maintenance and repair of computer hardware; painting and decorating. Does not include installation, maintenance and repair of computer software which is in Class 42.
Class 38	Telecommunications. Also in this class are all telecommunications services, (for example, e-mail services and those provided for the Internet); providing user access to the Internet (service providers); operating of search engines. Does not include creating, maintaining or hosting web sites which are in Class 42.
Class 39	Transport; packaging and storage of goods; travel arrangement. Also in this class are distribution of electricity; travel information. Does not include travel insurance which is in Class 36 or booking holiday accommodation which is in Class 43.
Class 40	Treatment of materials. Also in this class are the development, duplicating and printing of photographs; generation of electricity.
Class 41	Education; providing of training; entertainment; sporting and cultural activities. Also in this class are electronic games services provided by means of the Internet; the provision of on-line electronic publications and digital music (not downloadable) from the Internet. Does not include downloadable on-line electronic publications or digital music which are in Class 9 or educational materials in printed form which are in Class 16.
Class 42	Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software. Also in this class are installation, maintenance and repair of computer software; computer consultancy services; the following Internet related services are also proper to this class: design, drawing and commissioned writing for the compilation of web sites; creating, maintaining and hosting the web sites of others. Does not include providing access to the Internet or portal services which are in Class 38, or garden design services which are in Class 44.
Class 43	Services for providing food and drink; temporary accommodation. Also in this class are restaurant, bar and catering services; provision of holiday accommodation; booking/reservation services for restaurants and holiday accommodation. Does not include provision of permanent accommodation which is in Class 36 or the arranging of travel by tourist agencies which is in Class 39.
Class 44	Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services. Also in this class are dentistry services; medical analysis for the diagnosis and treatment of persons (such as x-ray examinations and taking of blood samples); pharmacy advice; garden design services. Does not include scientific research for medical purposes (such as research into cures for terminal diseases which is in Class 42), ambulance transportation which is in Class 39, health clubs for physical exercise which are in Class 41 or retirement homes which are in Class 43.
Class 45	Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals. Also in this class are dating services; funeral services and undertaking services; fire-fighting services; detective agency services; compilation, creation and maintenance of a register of domain names. Does not include beauty care services for human beings or animals which are in Class 44 or educational services which are in Class 41.