Recently Legal Week (11February), included yet another article warning about doom and gloom for internet domain name and web site owners. The dangers posed by failing to clear domain name and web site content for advertising issues, copyright conflicts, defamation and, of course, trademark infringement are clearly very serious. We are rightly warned that because of the international exposure posed by the operation of a single web site in one country, we are at risk of being sued in another.
Take the Prince Sports case in which the well-known US sports equipment company, with a registered US trademark, looked to attack the use of the 'Prince' name by a small UK computer company in its domain name registration. The US outfit wanted action simply because the UK firm's domain name could be found by a US Internet user.
But apart from the obvious commercial value of promoting a company's products and services instantaneously to the world through this amazing medium, the ownership of domain names and web pages in different jurisdictions around the world can help support the global trademark portfolio of a brand-led company.
Trademark registrations in all countries only survive for a limited period of time unless they are supported by use of the trademark by its owner or licensee, through sales or promotion of the branded goods in question. In the UK, a trademark can be cancelled if it has not been used for a continuous period of five years. In the US it is three years and the period is seven years in Hong Kong. As a result, many brand owners are vulnerable to cancellation of their trademarks in countries where they hold trademark registrations, but do not trade.
But the Internet may be their salvation. In a recent US decision – Re Metriplex – the Trademark Trial and Appeal Board reversed the Trade Mark Examiner's decision and accepted that a trademark displayed on a computer screen in connection with the supply of services is sufficient to prevent cancellation of the registered trademark in question. Similar decisions are beginning to come from other jurisdictions, such as Canada.
International brand owners may now wish to consider registering their registered trademarks as domain names in those countries where they do not have a market presence, or, even better, operating web sites in those countries, which promotes the trademark in question.
Mark Engelman is a barrister at New Court,
the chambers of John Fitzgerald.
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