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Presented by Gabriela Vendlova3 December 2002

Intellectual Property Rights: Importance of Trademark Protection in the Digital World

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GENERAL ISSUES OF TRADEMARK LAW

• KEY ISSUE: THE GLOBAL REACH OF INTERNET VS. THE PRINCIPLE OF TERRITORIALITY OF TRADEMARK LAWS

• PRACTICAL PROBLEMS OF INTERNET-RELATED TRADEMARK USE

• HOW TO SOLVE PROBLEMS OF INTERNET-RELATED TRADEMARK USE

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KEY ISSUE: THE GLOBAL REACH OF INTERNET VS. THE PRINCIPLE OF TERRITORIALITY OF TRADEMARK LAWS

Use of trademarks on the Internet has cross-border, international and potentially multi-jurisdictional exposure and impact

Trademark law, by contrast, has always been used on the principle of territoriality

- uncertainty for any use of trademarks on the Internet.

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PRACTICAL PROBLEMS OF INTERNET- RELATED TRADEMARK USE

Conflict of Laws country where the server with vendor’s website is located (one country) country for which market is the vendor’s website intended (one or

more countries) any country from which the vendor’s website may be accessed (all

countries worldwide) other (e.g. Country of Origin Rule)

Conflict of Trademarks trademarks from different territories (countries) meet in “cyberspace” uncertainty of trademark use on the Internet monopolization of trademarks on the Internet

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HOW TO SOLVE PROBLEMS OF INTERNET-RELATED TRADEMARK USE

Multinational or global treaties and regulations (to minimize conflict of laws)

Localization of websites by vendors (to minimize conflict of laws and conflict of trademarks)

Trademark searches and investigations (to minimize conflict of trademarks).

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SPECIFIC TRADEMARK INTERNET- RELATED ISSUES

• DOMAIN NAMES AND TRADEMARKS

• TRADEMARK ABUSE OF WEB TECHNOLOGIES

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DOMAIN NAMES AND TRADEMARKS

Registration of Trademarks as Domain Names

• Registration in Bad Faith

- cyber-squatting

- competitors  

• Registration in Good Faith 

Registration of Domain Names as Trademarks

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TRADEMARK ABUSE OF WEB TECHNOLOGIES

Hyperlinking and Trademark Infringement

• Deep linking (as a specific type of hyperlinking) may constitute confusion by customers about the origin of the trademark used within the deep-linked websites and therefore such deep-linking practices may be regarded as trademark infringement.

 

Metatags and Trademark Infringement

• Unauthorized use of third party’s trademark in metatags may infringe trademark, given that such use has misleading character concerning the origin of the trademark or goods and/or services associated with such trademark.

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EU LAW (IN RELATION TO TRADEMARK INTERNET-RELATED ISSUES)

• EEC DIRECTIVE TO APPROXIMATE THE LAWS OF THE MEMBER STATES RELATING TO TRADEMARKS (89/104/EEC)

 

• EC REGULATION ON THE COMMUNITY TRADEMARK (40/1994/EC)

 

• EC DIRECTIVE ON CERTAIN LEGAL ASPECTS OF INFORMATION SOCIETY SERVICES, IN PARTICULAR ELECTRONIC COMMERCE, IN THE INTERNAL MARKET(“E-COMMERCE DIRECTIVE”) (2000/31/EC)

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EEC DIRECTIVE TO APPROXIMATE THE LAWS OF THE MEMBER STATES RELATING TO TRADEMARKS (89/104/EEC)

• Limited harmonization

• Member States remain free to fix the provisions of procedure concerning the registration, the refusal, the revocation and the invalidity of trademarks

• Does not exclude the applicability to trademarks of the provisions of laws, other than trademark law, of the Member States - such as provisions relating to unfair competition, civil liability or consumer protection

• Lists examples of signs which may constitute a trademark

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EEC DIRECTIVE TO APPROXIMATE THE LAWS OF THE MEMBER STATES RELATING TO TRADEMARKS (89/104/EEC) (cont’d)

• Trademarks must actually be used• Same protection under the legal systems of all the

Member States• No opposition to the use of a trademark subsequent to

another trademark when the use was knowingly tolerated for a substantial length of time

• Consistent with the Paris Convention

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EC REGULATION ON THE COMMUNITY TRADEMARK (40/1994/EC)

• Directly applicable in all Member States without any need for transposition into local law

• Introduces the Community Trademark • Establishes the Office for Harmonization of Internal Market (OHIM)

Although the Regulation does not deal with trademark protection in the Digital World, it introduces “global” Community Trademark, which is globally protected within all Member States of the EU. Such global protection minimizes conflict of trademarks and conflict of laws, at least within the EU.

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EC DIRECTIVE ON CERTAIN LEGAL ASPECTS OF INFORMATION SOCIETY SERVICES - IN PARTICULAR ELECTRONIC COMMERCE, IN THE INTERNAL MARKET (“E-COMMERCE DIRECTIVE”) (2000/31/EC)

• Legal framework for e-commerce and information services in general• Applicable law (“Country of Origin Rule”)• Country of Origin Rule does not apply (inter alia) to copyright, neighboring rights, and

other rights including industrial property rights (i.e. trademarks).

- does not resolve the conflict of law problem withrespect to trademarks

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STATUS OF TRADEMARK LAW IN TRANSITION COUNTRIES (IN RELATION TO TRADEMARK INTERNET- RELATED ISSUES) - IMPLEMENTATION OF EU LAW

• CZECH REPUBLIC• SLOVAK REPUBLIC• POLAND• HUNGARY

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CZECH REPUBLIC

European Union Legislation and Its Implementation• General issues• EEC Directive to approximate the laws of the Member States relating to trademarks (89/104/EEC)

- Implemented- Conflicts between CTM and registered or pending national trademarks- National exhaustion of trademark rights (Czech Republic)

• Regulation on the Community trademark (40/1994/EC)

- Directly effective as of the date of accession to the EU

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CZECH REPUBLIC

• EC Directive on certain legal aspects of information society services - in particular electronic commerce, in the Internal Market(“E-commerce Directive”) (2000/31/EC)

- Not yet implemented

• EC Regulation on the export and re-export of goods infringing certain intellectual property rights (3295/94/EC)

Specific National Legislation

- None

 

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CZECH REPUBLIC

Domain Names and Internet

- No specific legislation

- Registration of trademarks as domain names: CZ-NIC - special request only

- Registration of domain names as trademarks: Industrial Property Office

- as any other trademark

- has refused to register certain domain names (lack of distinctiveness)

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CZECH REPUBLIC Case Law

- Several court decisions

- Preliminary injunctions in Internet trademark disputes

 

Jurisdiction and Applicable law

- No specific amendments to national private international law

- No specific guidelines

 

Emerging Issues

- New Trademark Act (2003)

- Community exhaustion of trademark rights

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SLOVAK REPUBLIC

European Union Legislation and its Implementation – Issues

• EEC Directive to approximate the laws of the Member States relating to trademarks (89/104/EEC)

• Implemented

• Regulation on the CTM (40/1994/EC)

- Directly effective as of the date of accession to the EU

• EC Directive on certain legal aspects of information societyservices - in particular electronic commerce, in the InternalMarket (“E-commerce Directive”) (2000/31/EC)

• EC Regulation on the export and re-export of goodsinfringing certain intellectual property rights (3295/94/EC)

- Implemented

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SLOVAK REPUBLIC

Specific National Legislation

- None

 Domain Names and Internet

- No specific legislation- Registration of trademarks as domain names: EuroWeb Slovakia

- rules for domain name registration

- protection of trademark holders- Registration of domain names as trademarks: Industrial

Property Office - as for any other trademark

- has refused to register certain domain names (lack of distinctiveness)

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SLOVAK REPUBLIC

Case Law

- No court decisions

 

Jurisdiction and Applicable law

- No specific amendments to national private international law

- No specific guidelines

 

Emerging Issues

- Interested in harmonization of international private and

procedural law

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POLAND European Union Legislation and Its Implementation – Issues• EEC Directive to approximate the laws of the Member States relating to trademarks (89/104/EEC)

- Implemented

- Interim provisions (incompatibility with EU law)

- Regional Exhaustion (Poland + States of free trade Zone)

•  Regulation on the CTM (40/1994/EC)

- Directly effective as of the date of accession to the EU

 

• EC Directive on certain legal aspects of information society services - in particular electronic commerce, in the Internal Market (“E-commerce Directive”) (2000/31/EC)

- Not yet implemented (expected to be implemented in Spring 2003)

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POLAND

Specific National Legislation

- None

 Domain Names and Internet

- No specific legislation- Registration of trademarks as domain names: NASK

- no internal rules for trademark protection

- since December 2002: trademark arbitration- Registration of domain names as trademarks: Patent Office

- as for any other trademark

- has refused to register certain domain names (lack of distinctiveness)

 

 

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POLAND

Case Law

- No court decisions

 

Jurisdiction and Applicable law

- No specific amendments to national private international law

- No specific guidelines

 

Emerging Issues

- Poland has implemented Directive 98/71/EC on the legal protection of designs. This Directive gives a legal basis for registration of computer symbols and typefaces as designs.  

 

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HUNGARY

European Union Legislation and its Implementation – Issues

• EEC Directive to approximate the laws of the Member States relating to trademarks (89/104/EEC)- Implemented- National exhaustion of trademark rights (Hungary)

 • Regulation on the CTM (40/1994/EC)

- Directly effective as of the date of accession to the EU

 

 

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HUNGARY

• EC Directive on certain legal aspects of information society services - in particular electronic commerce, in the Internal Market(“E-commerce Directive”) (2000/31/EC)

- Partially implemented (Act CVIII of 2001 on Certain Aspects of Electronic Commercial Services and Information Society Services - Country of Origin Rule, Limited Liability of Internet Service Providers)

Specific National Legislation

- None

 

 

 

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HUNGARY

Domain Names and Internet

- No specific legislation

- Registration of trademarks as domain names:Council of Hungarian Internet Service Providers

- internal rules for trademark protection

- active protection of trademarks

- Registration of domain names as trademarks: Patent Office

- as for any other trademark 

Case Law

- Several pending litigations

- A few preliminary injunctions

 

 

 

 

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HUNGARY

Jurisdiction and Applicable law

- No specific amendments to national private international law

- No specific guidelines

 

Emerging Issues- Registrars' liability for trademark infringement- Relation between pending trademark and domain-name registration (for an identical denomination)

 

 

 

 

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Questions?