Using Your Trademark on Your Own Website Can Constitute Foreign Trademark Infringement
The increased use of the Internet in conducting business transactions has outpaced most of the present-day trademark laws. Although the global community has agreed to set international intellectual property standards, many of the guidelines are murky at best and remain subject to each individual country’s interpretation. As such, many companies navigate the international trademark stage hesitantly and try to avoid registering their trademarks in foreign markets altogether. Although no formal law governs globally, one of the best international trademark guidelines set forth are found in the Joint Recommendation Concerning Provisions on the Marks, and Other Industrial Property Rights in Signs, on the Internet, which was adopted by the World Intellectual Property Organization and the Assembly of the Paris Union for the Protection of Industrial Property in 2001.
The Joint Recommendation’s language refers to a trademark as a “sign” and notes that the Internet is “simultaneously and immediately accessible irrespective of a territorial location.” Thus, the Joint Recommendation provides that a party with trademark rights may bring a claim of trademark infringement or unfair competition against a competing party when use of that sign on the Internet, in connection with similar or identical goods or services, has a commercial effect in their jurisdiction.
What constitutes as commercial effect is left open to the Member State’s interpretation and several elements may factor into that calculus. The factors include, but are not limited to, the degree of the activity the user undertakes in conjunction with use of the sign, the offering of post-sales activities (warranties or servicing), the manner of use, the language the use is offered in, and whether the Internet website that hosts the trademark has actually been visited by Internet visitors in the Member State. Moreover, as always, bad faith on the part of the user is also considered.
Effectively then, the simple offering of goods and services on an Internet website may qualify as having a commercial effect in a foreign jurisdiction, even when the trademark user had no intention of pursuing that market. As long as Internet visitors choose to partake in the goods and services being offered in conjunction with the mark, the transaction can be deemed as having a commercial effect.
As a result, brand owners should carefully consider which markets they are willing to service, and which they are not, when it comes to using their mark on the Internet. Next week’s blog entry will discuss what type of trademark strategy these brand owners should utilize when pursuing global and Internet-based sales.
For more information, please visit our trademark service page.
Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX. The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights. The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. Additional information about the IP law firm and its IP law attorneys may be found at www.klemchuk.com.
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