Trade Marks – Introduction

 
(Photo credits: Pattista)

Trade marks (spelt trademarks in the US) are the most visible form of intellectual property to regular consumers on daily basis. They are argued to be the oldest form of intellectual property known to man as it was used from the oldest of ages by people to identify the source of goods.

The functions of Trade mark is considered to include:

  1. A method for identifying the source of a good or service.
  2. A method to distinguish the goods of a merchant from those of others.
  3. A guarantee of quality (good and bad quality).
  4. And a branding/advertising medium

Trade marks differ from other intellectual property in that they primarily protect a consumer interested (not to have consumers misled by products using the trade marks of others) as well as the interests of businesses (the right to distinguish one’s goods from those of others). Almost all other intellectual property subjects are concerned about protecting the creative and inventive products of businesses and are not concerned with the interests of consumers. This makes trade mark law the least controversial intellectual property as it has the society benefits to all parties almost adequetly balanced.

Generally speaking, a trade mark is a sign registered by a business in a country to have the exclusive right to use that sign in a specific business type or industry. A trade mark must be registered in each jurisdiction to acquire protection in that specific area. The protection of a trade mark can be renewed forever as long as this trade mark remains distinctive and is used by the business. (Unlike patents which can only last for a maximum of years and unlike copyright which does not require registration but is also protected for a limited time period only).Once someone registers a trade mark, he will be able to stop others from using a similar mark on similar goods or service for which he regsitered the mark as long as he can prove that others will confuse the source of the goods to which the infringing sign was attached. 

Certain powerful trade marks can also be protected against the use of goods and services which are not similar if they can establish that this will dilute their trade mark. Certain jurisdictions also grant trade marks the right not to be tarnished.

Trade mark law is very much related to unfair competition law in many jurisdiction because taking an advantage someone else’s goodwill can be considered as an unfair competition practice. It is also directly related to the law of passing off in common law jurisdictions which grants protection to unregistered marks as well as the goodwill of a business.

I have already made a post about the issue of trade marks and domain names. I will talk in future posts about the technical differences between trade mark law in the US, Japan, and Europe.

Domain Names and Trademarks

There is an ever increasing number of domain name disputes relating to trademask, mostly because of incompatibility of these two systems.

What are Domain Names and Who Regulates Them?

Domain names are friendly shortcuts to web addresses, each website is actually located at an IP address made up of a string of numbers. The domain name system makes it easier to remember website addresses so that we can visit them later. There are two main types of domain names, those that end up with generic Top Level Domains (gTLDs) such as .com, .net, and .org, and those that end up with country code Top Level Domains (ccTLDs) such as .uk, .jp, and .ca.

gTLDs are regulated by an entity called ICANN (the Internet  Corporation for Assigned Names and Numbers). This is a non-profit corporation that has a contract with the Department of Commerce of the USA to regulate gTLDs. It’s supposed to *achieve global representation* of the internet community, but in practice the US government has a strong influence in it. ICANN has the ultimate control over gTLDs, it does not deal with the public directly in regard to domain names, but instead signs up registerars who them sell domain names to the public.

ccTLDs on the other hard are each regualted in a different manner depending on the country that owns the ccTLD, in the UK for example, a non-profit company named Nominet – which again, does not sell domain names directly, but instead signs up registrars who sell them. However, not all ccTLDs are handled the same way, some countries regulate and sell them through the same entity. In Oman, OmanTel used to regulate and sell them, however, the TRA is now responsible for regulating the .OM ccTLD and will soon start accepting registrars to sell domain names to the public.

What are Trademarks and What is Their Problem with Domain Names?

A registered trademark gives the right to its owner to stop people from using the same trademark on their goods. This is a state given right maid in essence to help consumers identify goods made by a certain seller.

A domain name is not a trademark, but it is a sign and a label which can be used as a trademark and its usage can in certain circumstances quailfy as a trademark infringement.

The link between the domain names and trademarks are obvious, but there is a conflict that makes this difficult, and that is the fact that trademarks are not absolute monopolies for the use of the term as the sytem allows different people to register the same trademark for two different business.  For example, the trademakr Vista might be registered by Microsoft for computer equipment and computer software, and registered at the same time by someone else as Vista for selling eye health products. This is legal in most jursdictions around the world, but has some restrictions where the use of a similar sign on an unconnected product might confuse the public to the source, or where the use of a trademark might harm or dilute the reputation or power of the trademark.

The fact that more than one person may be legally allowed to use the same trademark does not work well with domain names because only one person can register the same domain name all over the world. There is only one Vista.com, so who has the right to it?

If two people own the same trademark, usually the first person to register the domain name has the right to use it. However, there are cases when people who do not have the right to the domain name buy it, several of these incidents are described by the term below:

  1. Domain Name Squatting – This happens when someone buys a domain name in bad faith to take advantage of a trademark, either by attempting to sell it to the rightful owner later or to gain profit by advertising or attracting misled constumers to his website.
  2. Domain Name Typo Squatting – This happens when someone buys a domain name that contains a commonly mispelt version of a trademark (For example: Gooogle.com instead of Google) and then uses it in bad faith.
ICANN has a procedure called “Uniform Domain Name Dispute Resolution Policy” (UDRP)  which all of its registrars are forced by contract to submit to in the following case:
  1. A domain name is identical or confusingly similar to a trademark in which a complainant has rights.
  2. the current registrant has no rights or legitimate interests in respect of the domain name; and
  3. the domain name has been registered and is being used in bad faith.
If all of these conditions are satisfied then the domain may be transferred to the complainant. This procedure is supposed to be a quicker and cheaper that traditional litigation. Most ccTLD registries follow a very similar procedure to the UDRP.