A full service law firm specializing in Litigation, Legal Advice, Arbitration, Conciliation & Mediation.


Trademarks Online

Posted by TeamAdmin2022 on Mar, 17, 2015

The concept of protecting the commercial identity online rests its basis on the protection of trademarks and the means to protect trademarks falls under the branch of Intellectual Property. Trademark is a creation of intellectual mind and that is why referred to as Intellectual Property. An intellectual property comprises different fields of law, trademark is one of them

Because of the territoriality of trademark rights, identical or confusingly similar trademarks can be held in different countries by different owners who are completely unrelated to one another. The user of a trademark on the Internet might become involved in a dispute in a foreign jurisdiction, under a law that does not recognize the user’s right to the disputed trademark, but which accords rights in it to another person. What had been coexistence of rights in the physical world becomes a conflict between rights on the Internet.

One approach might be the adoption of a general principle according to which every holder of a right in a distinctive sign may use that sign on the Internet concurrently with any other right holder, subject to certain limitations. Such a principle might be regarded as an expression of the independence of national trademark rights provided for by Article 6(3) of the Paris Convention.

Such a principle for the coexistence of legitimate rights could have to be limited in two respects in order to safeguard the interests of trademark owners. First, the risk of confusion should be reduced to a minimum. To this effect, it could be required that the user of the sign clearly indicate where the trademark is protected, and that other users of the sign have no relationship with it. However, it may be outweighed by the fact that, in cases of conflicts between legitimate (national or regional) rights, the principle enables each right holder to use its right on the Internet.

Second, coexistence would not be appropriate if one of the users had registered or used its trademark in bad faith. Only good faith use should profit from the limitation of infringement claims. In determining bad faith, it might be possible to draw on Article 4(5)(c) of the WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks.

An appropriate provision should be made for the grant of an exclusion for famous and well known trademarks whereby the owner of such trademarks that have an international reputation of being associated with certain types of goods, are able to exclude any person from registering a domain name using such a trademark or even a domain name that can be shown to have been derived from such a trademark, and requiring such persons to give such domain names.