Trade Marks

On the trade mark front, the nature of the technology has given rise to new methods of using and exploiting trade marks. Trade marks are commonly incorporated in Internet domain names (like pagehargrave.co.uk). The issue of whether that necessarily means domain names should be treated like trade marks has been the subject of extensive comment, judicial decisions and expert analysis. Trade marks have been hidden in meta-tags - the invisible text often included in a web page to help, and to subvert, search engines (services such as Yahoo! and Excite, which enable surfers to locate websites of interest by entering relevant keywords or subjects). There are interesting questions to be considered about whether trade mark use on the Internet is sufficient to meet statutory requirements for maintaining the validity of a trade mark registration, and where such use can actually be considered to take place.

The UK Trade Marks Registry has provided useful guidance on issues relating to the trade marks on the internet and to the registration of internet domain names as trade marks:
- Trade Marks and Domain Names
- Classification of On-line and Internet services and associated goods: UK practice as at February 2000 - PAN 04/00
- E and M prefixed marks - PAN 12/00
- Marks which incorporate domain address details - PAN 14/00

The following presentation provides an introduction to the problems of conflict between trade marks and domain names:

TRADE MARKS & DOMAIN NAMES - An industry perspective
(Edited and updated version of a presentation originally given by Keith Gymer in September 1998 in Brussels at a conference entitled "IP on the Internet & e-Commerce")

Details of a number of UK cases may be found on on our Internet Cases pages.

The WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) has produced a number of relevant reports and proposals (see SCT Documents for latest session versions):
The following are in Adobe Acrobat .pdf format - see Menu Sidebar if you require the free Adobe Acrobat Reader
Use of Trade Marks on the Internet - Issues Paper (.pdf document)
Use of Trade Marks on the Internet - Summary of Responses to Questionnaire (.pdf document)
Joint Recommendation concerning provisions on the protection of well-known marks (.pdf document)
Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet (.pdf document)
Joint Recommendation Concerning the Protection of Marks and Other Industrial Property Rights in Signs, on the Internet Adopted 2001 (Doc. A/36/8 2001 -.pdf)
- Early explanatory Notes (.pdf document)

In view of widespread concern about conflicts between domain name registrations and established trade mark rights, and particularly the problem of cybersquatting, the US Department of Commerce invited WIPO to carry out a study of the issues. The results of this first "WIPO Process" contained in the Final Report of the (First) WIPO Internet Domain Name Process were influential in the development of the Uniform Dispute Resolution Policy (UDRP - see below), which has been applied with considerable success to disputes in the "generic" Top Level Domains (gTLDs) like .com, .net and .org.

In June, 2000 WIPO announced a 2nd consultation process into the issues of bad-faith registration of domain names which conflict with non-trademark IP rights (e.g. geographical indications and personality rights), names and acronyms for IGOs and International Nonproprietary Names (INNs) established by the World Health Organization for pharmaceutical substances, and certain other rights. The interim Report with Annexes on the 2nd Process was published in April 2001. The Final Report on "The Recognition of Rights and the Use of Names in the Internet Domain Name System" was published on September 3, 2001. As noted in the Executive Summary, the Report found that there was "considerable evidence of the registration and use of the identifiers examined in the Report as domain names by persons who might be considered not to be properly entitled to use the identifiers in question". The Report makes a number of recommendations to address concerns about such abuses:

- for INNs, a simple mechanism should be established which would protect INNs against identical domain name registrations;
- for the names and acronyms of IGOs, States, as the constituents of IGOs, should work towards the establishment of an administrative dispute-resolution procedure, akin to the UDRP;
- for personal names, there are no existing international norms dealing with their protection and national legal systems provide for a wide diversity of legal approaches to their protection, so no specific action is proposed;
- for geographical identifiers, norms which presently exist at the international level may require further adaptation to deal with the perceived range of problems with the misuse of geographical indications in the DNS and so States need to decide whether it is desirable to proceed with action in this area;
- for trade names, the situation is similar to that of geographical indications, insofar as certain international norms exist for the protection of trade names, but fundamental problems exist in identifying across differing national approaches what constitutes a protectable trade name, so the report recommends that no action be taken in this area.

The Internet Corporation for Assigned Names and Numbers (ICANN), which took over responsibility for overseeing the administration of the Internet Domain Name System, is also addressing the issues of conflict between trade mark rights (essentially national and for specific goods and/or services) and domain names, particularly in the so-called "generic" Top Level Domains (gTLDs) like .com, .net and .org, where there is no differentiation with respect to either the country where the domain name owner is based or operates or the goods or services they may provide.

A Domain Name Supporting Organisation (DNSO) has been established to advise and make recommendations to ICANN on such issues. The DSNO comprises a number of "constituency" groups, which in turn represent the views and concerns of the various interests likely to be affected by ICANN's decisions on these matters. Presently these are:

ccTLD Registries (National ISO3166 Country Code Registries - eg. Nominet UK for .uk)
Commercial and Business Constituency
gTLD Registries
ISPs and connectivity providers
Non-commercial domain name holders
Registrars (those in the business of selling domain name registrations)
Trademark, intellectual property, anti-counterfeiting interests

The Business Constituency and Intellectual Property Constituency groups are the key groups lobbying for the interests of most commercial enterprises with rights to protect, and businesses with concerns about protection of their established rights on the internet are encouraged to consider joining these groups.