INTERNET LAW

Internet Law

Internet Law

a) Case Analysis

The proprietor of a registered trademark has the right to prevent the use in the course of trade of a sign that is identical to or similar to that mark in relation to identical or similar goods or services. Where there is not complete identity of the sign or the goods or services, a likelihood of confusion on the part of the public must be shown. Furthermore, infringement may come about where a sign that is identical to or similar to a registered trademark of repute is used in the course of trade in relation to non-similar goods or services. The right conferred by a Community trademark is equivalent though it extends to the entire territory of the European Community.

Generally, trademark rights are restricted in line with the basic function of a trademark which is to indicate the origin of goods or services that is to act as a badge of origin. Furthermore, the Court of Justice has confirmed that use that is purely descriptive and is not use as a trademark does not infringe. Although trademark law has undergone harmonization in Europe, it is fair to say that, in jurisdictions outside Europe, the law is broadly similar to European trademark law, at least sufficiently so for the purposes of the following discussion.

The main issue to be explored is whether placing a sign on a page on a website where that sign is identical to or similar to a registered trademark infringes that trademark, and if so, under what circumstances. Except in a case of trademark “dilution” or “tarnishing”, the sign in question must be used in relation to identical or similar goods or services for which the trademark is registered and that use must be in the course of trade. In such circumstances, the central question is whether the use of the sign on a website is use in a trademark sense within the relevant jurisdiction. This depends on the meaning of use of a sign as a trademark, that is, as an indicator of origin of the goods or services.

This was opposed by a company in the business of acquiring alphanumeric telephone numbers and licensing their use.10 At first instance, Maggie May rejected the submission that simply placing a sign on a website could potentially infringe trademarks anywhere in the world on the basis that this was use in an “omnipresent cyberspace”, and was “putting a tentacle” into the computer of every person who accessed the website. He gave an example why this was not the case, in the form of a fishmonger from Bootle, Lancashire who advertised on his own website for local delivery. As everyone who has “surfed the web” knows only too well, a great many irrelevant hits will be retrieved which are of no interest whatsoever to the person carrying out a search.

A good working test, as formulated in the United States trademark case, is the audience to whom the website carrying the trademark is ...