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

Trademark FAQ

What can I register as a trademark?

There are three types of trademarks:

(i) Word Only – the exact word (or combination of words)

(ii) Logo / device – this can be any pictorial design (e.g. the Ralph Lauren polo-horse or the Microsoft quadrant flag) and even, in certain circumstances, a sound

(iii) Word /Logo combination.

Where should I register my trademark?

If you have a business in the UK or Republic of Ireland that sells goods and services to both a UK and Republic of Ireland market you should file a trademark application (in the registration classes that correspond to your business) at the Trademark Registry with the UK Intellectual Property Office and also with the Irish Patent Office. If your business only markets its goods and services in one of those territories then a single application may be sufficient protection (but bear in mind the possibility of business expansion).

If you want to prevent another business (who could be a competitor) from using your name in any other part of the EU you should consider a Community Trademark (CTM) application. One CTM application triggers separate applications in each member state of the EU. What this means is that you will be protected if you sell products or expand your business into the EU countries. You should also consider protecting your trademarks in your principal markets overseas (i.e. beyond the EU) subject of course to cost considerations. It is possible to cover up to 172 countries by filing one application under the Madrid Protocol.

When will a trademark not be granted trademark protection?

A trademark needs to have distinctive character. Therefore, if your trademark is purely descriptive of the goods or services to which it relates, it will not be granted protection. For example if you are a butcher trading under the name “Quality Meats Butchers” then these words would fail for being too descriptive. However, if the business was trading under the name “Pyramid Quality Meats Butcher”, the word “Pyramid” would probably provide sufficient distinctiveness to an otherwise descriptive statement to enable protection (assuming, of course, that the mark was not the same as or confusingly similar to any other marks for similar goods or services).

When is a mark deemed to be “too similar” to another mark to allow protection?

Trademark applications will be checked to see whether the intended mark is (i) either the same as an existing mark (i.e. an exact match); or (ii) visually similar to another mark (i.e. where there are sufficient similarities between this mark and another mark to give rise to possible consumer confusion); or (iii) phonetic similarities (i.e. where the sound of the intended mark is similar to the sound of another mark that might give rise to possible consumer confusion); or (iv) conceptual similarities (i.e. what is the mark’s meaning).

Why should I bother to register a trademark?

Ask yourself this simple question. Can you afford to lose the name of your company and product names? If not, then why take the risk that you might have to.

How long does it take to register a trademark in the UK?

Typically, an application which is processed without complications will take between 6 to 9 months before registration is granted.

How long does it take to register a trademark as a EU Community trademark?

Typically, an application which is processed without complications will take between 12 to 18 months before registration is granted.

Does a registration in UK offer worldwide protection?

No. A trademark registration is always limited to the territory for which the registration was granted.

I have a word and a logo which I want to register. Do I have to apply for two registrations?

If you ever want to use the word or logo separately from each other, then yes. The question you will need to ask yourself is “how do I intend to use my marks?” Whatever you use on your letterhead or website then this is what you should file as a trademark in your applications.

When can I use the “TM”or “R”designations with my trademarks?

You can use “TM” any time. You can only use the “R” designation if your trademark is registered. Be aware that use of the "R” designation with an unregistered trademark in the UK is against the law.

My company is registered with Companies House. Does this protect my company name as a trademark?

No.

My domain name is registered with a domain name registrar. Does this protect my domain name as a trademark?

No.

If I have registered my trademark for one class of goods or services can someone else register it for a different class of goods or services?

In theory, yes. That is why, when you file your application, you should consider filing as many different classes as are necessary to cover the different products or services you currently provide (and also those which you intend to provide). If you are a manufacturer of various different products you should make sure that all of your products are protected by claiming protection against the appropriate classes.

How long does a UK trademark registration last?

It lasts 10 years and can be renewed for further period of 10 years. If you fail to pay your renewal fee at the next renewal date, your trademark registration will expire. However, you are entitled to an additional six months following the renewal date in which to renew your registration, although you will be required to pay a fee for late renewal. Following this six-month period, you are then allowed a further six-month period, i.e. a total of 12 months after the renewal date, in which you may apply to the Trademark Registry in order to restore your mark.

Can I sell or licence use of my registered trademark?

Yes you can. A trademark constitutes intellectual property (IP) and can be sold or licensed in much the same way as other property you may own. We can provide advice on all matters relating to IP sales, acquisition or licensing.

Once I have registered my trademark, can I increase the classes of goods or services at a later date to match my future business needs?

No. You must make sure your application provides sufficient cover for potential future goods or services. It will not be possible to extend your registration to include additional goods or services after you have applied. However, you can still make a fresh application to cover additional goods or services.

Can I claim a refund of the application fees if my application is rejected?

No. Our fees and the registry fees cover the cost of the processing and the examination of your trademark application.

Visit us for your free trademark search.

Is my Trade Mark too descriptive?

Trademarks which describe the goods or services that they're aiming to promote will not be accepted by the Trademark Registry if they do not offer any distinction.


What does this mean?

It means that you cannot claim the rights to a word or phrase which is commonly used to promote goods or services which are similar to your own.

Some examples of trademarks that would typically be rejected by the registry on distinctive grounds would be:-


24hrsAday - Many traders advertise their goods or services as 24 hours a day. This mark would be instantly rejected as it means that the owner of the mark would be able to claim rights over all traders using this common phrase.


MeatyButchers - If you are trading as a butcher, these two words simply the type of goods that you are selling. Joining the two words together to make a new word would not make this mark acceptable.

PHONES direct - 'Direct' describes goods or services sold directly to the public and is widely used by traders. 'Phones' doesn't add any more distinction to the mark as, again, it's describing what the mark is being used to promote.

The one 4 you - Slogans like this are commonly used in trade and are therefore, not distinctive. Using the number ''4'' instead of the word ''for'' does not add more distinction as it sounds the same as the word it represents.


What can I do to make my mark more distinctive?

If you're already using a descriptive mark to promote your goods/services, ways of adding distinction can include:-

• Using ''Made-Up'' words (i.e. words that don't already exist)
• Adding a logo - A well-conceived logo can give your mark added distinction, although note that this will, of course, limit the scope of your protection (i.e. you will be restricted to using the logo to safely promote your goods/services)
• Picking a word that has no relevance to the goods or services you're selling... i.e. ''Doors'' if you're planning to use the mark to promote watches. Doors is a commonly used word, but it isn't related in any way to 'watches'.

Common Misconceptions

The registry may reject words or logos that are unlikely to be conceived as a trademark by the public because they are:-

• Misspelt words such as 'nite' or 'fone'
• In Colour
• In a different typeface or font
• Displayed as an internet domain with ''.com'' or ''.co.uk'', etc.
• Words which are joined together to create a new word such as PHONESHOP
• A combination of any of the above.

Need to check if your mark is too descriptive? Get some free trademark advice today.

Happy that your mark is distinctive enough? Make sure it isn't already registered with our Free Trademark Search facility.

If you've checked both of the above, then you can proceed straight to Trademark Registration.

What is a Trademark?

A trademark is a sign which enables you to distinguish your goods and services from those of other traders for the purposes of promotion. A sign can include words, logos, drawings (pictures) and even a sound or a combination of these things.

Trademarks differ from copyright (which protects artistic or creative works) or patents (which protects inventions). In contrast to the protection offered by copyright and patents, your trademark registration can last as long as you wish, subject to your renewing it every 10 years.

A trademark can often be one of the most valuable assets your business has, particularly where you trade on a reputation or where your goods are marketed under a particular brand.

There are two types of trademarks:

1. An Unregistered Trademark

You can devise and use a trademark without registering it. You can even claim certain rights of ownership over your unregistered trademark but in the event someone else began to use your mark without your permission you would have a potential problem in protecting your ownership.

This is because one of the the difficulties faced by you as an owner of an unregistered mark is that to prevent unauthorised use you would first need to establish that your mark had been used by your organisation as a bona fide trading entity and that it had accrued sufficient goodwill.

2. A Registered Trademark

As a holder of a registered trademark you don't need to establish any of that to protect your mark. The principal advantages of holding a registered trademark are that:

• you will have the right to take legal action against others who use your trademark (or a confusingly similar mark) in relation to the same or similar goods and services as your trademark without your permission
• you can protect your trademark before your product is even put on the market (although you risk having the mark revoked if it is not used for five years);
• there is a presumption that the registration is valid and therefore it offers you greater protection against a claim of trademark infringement (although you should note that the validity is not guaranteed because the validity of a trademark is always open to challenge); and
• registration reduces the possibility of disputes as it confers on the owner increased certainty, because the registration determines the extent of the goods or services to be protected by that particular trademark.

For more information on trademarks or to speak to a trademark specialist, visit our site.