（３）台湾
財団法人知的財産研究所委託
台湾の商標制度に関する調査
著名商標の保護
2007 年 11 月
－147－
目
次
Ⅰ 著名商標の保護
(1)
著名性の認定
(2)
著名性の判断
(3)
第 62 条の解釈
(4)
権利行使の調整
(5)
未登録著名商標に対する保護
(6)
第 23 条 1 項 12 号関連の統計資料等
Ⅱ 著名商標の保護の沿革と現状
(1) 商標法及び公平交易法の競合
(2) 周知著名商標の稀釈化関連規定の制度改正の背景・趣旨
（商標法第 23 条・第 62 条）
(3) WTO への加盟後の商標を巡る情況の変化及び侵害事件の統計資料
Ⅲ 防護標章登録制度
(1) 代表的な防護標章の登録例
(2) 2003 年防護標章制度廃止経緯・廃止関連議論及び廃止によるユーザーへの影
響
(3) 防護標章における訴訟事例
(4) 防護標章登録の経過措置について
－148－
著名商標の保護について
I 著名商標の保護
台湾商標法は、2003 年商標法改正以前、周知著名商標に対する保護として、
「著名商標と同一又
は類似するもので公衆に混同誤認を生じさせる虞がある商標は登録することができないという
規定しか定められていなかった。周知著名商標保護の強化を図るため、台湾は、世界知的財産
権組織が 1999 年に公布した「著名商標保護規定に関する共同決議事項」を参考にして、2003
年法改正では、それまで規定していた「周知著名商標と混同誤認の虞」という登録阻却事由の
ほか、
「周知著名商標の識別力又は信用を毀損（希釈）する虞」も登録阻却事由とし、他人によ
る周知著名商標又はその類似のものの登録を防止するための第 23 条１項 12 号を定めた。これ
に加え、積極的に他人による周知著名商標又は類似のものの使用を排除するために、第 62 条 1
号に、みなし侵害行為の規定が追加された。前記第 23 条 1 項 12 号の登録阻却事由の追加によ
り、周知著名商標に対する保護は「希釈」の概念にも及んだため、
「防護標章制度の機能は前記
登録阻却事由の追加により果たされた」と考えられ、商標制度を単純化にするとの理由で、防
護標章制度が排除されるようになった。
(1) 著名性の認定
2007 年 11 月 8 日まで、著名性の認定にあたっては、主に「著名商標又は著名標章の認定要点」
に従い、判断を行なっていた。2007 年 11 月 14 日付台湾商標主務官庁の公告によると、2000 年
8 月 10 日付にて公告された「著名商標又は標章の認定要点」は 2007 年 11 月 9 日付にて廃止さ
れたと同時に、代替規則の「商標法第 23 条 1 項 12 号の著名商標保護審査基準」は、台湾経済
部命令によって同日より発効されている。「商標法第 23 条 1 項 12 号の著名商標保護審査基準」
は、
「台湾商標法第 23 条 1 項 12 号前段の『混同誤認』及び後段の『識別力又は信用の希釈』に
分けて適用要件を論じること」、及び「『混同誤認』及び『識別力又は信用の希釈』に関する知
名度のレベルの認定」等につき、「著名商標又は標章の認定要点」とは差異が見られる。一方、
「著名商標又は標章の認定要点」に定められていた著名商標の認定要素（「著名商標又は標章の
認定要点」の五）及び証拠資料（「著名商標又は標章の認定要点」の六）の規定は、「商標法第
23 条 1 項 12 号の著名商標保護審査基準」でも見られる。
まずは「著名商標又は著名標章の認定要点」の内容を以下に説明する。
A「著名商標又は著名標章の認定要点」
一、商標法(以下「本法」という)第 23 条第 1 項 12 号にいう著名商標又は標章の認定のため、
本要点を定める。
二、本法にいう著名商標又は標章とは、当該商標又は標章が既にそれに係る事業者或いは消費
者に普遍的に認識されていることを証明するに足る客観的証拠を有するものをいう。
三、本要点により関連事業者又は消費者を判断する際は、商標又は標章が使用される商品又は
役務の取引範囲に準じる。これは以下の三つの範囲を含むが、これらに限らない。
(一) 商標又は標章が使用される商品又は役務の実際又は可能な消費者。
(二) 商標又は標章が使用される商品又は役務の販売経路に係る人。
－149－
(三) 標又は標章が使用される商品又は役務を経営する関連業者。
四、商標又は標章が既に要点三に取上げられている関連事業者又は消費者のいずれかに普遍的
に認知されている場合は、著名商標又は標章と認定しなければならない。
五、著名商標又は標章の認定に当たっては、個別案件の情況につき、次に掲げる著名を認定す
るに足る要素を考慮しなければならない。
(一) 関連事業者又は消費者の商標又は標章に対する認知又は認識の程度。
(二) 商標又は標章の使用期間、範囲及び地域。
(三) 商標又は標章の販売推進期間、範囲及び地域。商標又は標章の販売推進とは、商品又は役
務の商標又は標章を使用する広告又は宣伝、及びビジネスショー又は展示会における展示を含
む。
(四) 商標又は標章の登録、登録出願の期間、範囲及び地域。ただし、これら資料により商標又
は標章の使用事実又は商標、標章に対する認識を十分に反映する程度に達しなければならない。
(五) 商標又は標章がその権利行使に成功した記録。特に行政又は司法機関により周知であると
認定された情況を言う。
(六) 商標又は標章の価値。
(七) その他著名商標又は標章を認定するに足る要素。
六、本要点五に掲げる各要素は次の証拠によってこれを証明することができる。
(一) 商品又は役務に係る販売インボイス、販売伝票、輸出入伝票及びその販売量・売上高に関
する統計の明細書等の資料。
(二) 國内外の新聞、雑誌又はテレビ等のマスコミによる広告資料。
(三) 商品又は役務の販売拠点及びその販売経路、場所の配置状況。
(四) 商標又は標章の市場における評価、価値鑑定、売上高の順位、広告費用の順位、又はその
営業状況等の資料。
(五) 商標の使用開始時期及び使用継続を示す資料。
(六) 商標又は標章の国内外における登録の書類。その関連企業が行なった商標又は標章登録の
資料を含む。
(七) 信用ある機関により発行された関連証明又は市場調査報告等の資料。
(八) 行政又は司法機関が行なった関連認定の書類。
(九) 商標又は標章の周知性を立証できるその他の資料。商標の使用はその所有者によるものに
限定されない。同所有者の関連企業又は第三者による当該商標の使用行為が当該商標の著名化
の促進に役立つものである場合、本要点四に取り入れて考慮することができる。
七、本要点にいう著名商標又は標章の認定は、中華民国において登録を受けていること、登録
を出願すること又は使用することを前提としない。
八、商標又は標章は、商標又は標章の所有者が自ら使用したものに限らず、その関連企業又は
第三者により行なわれた当該商標又は標章に係る使用資料も本要点五の各要素に取り入れて考
慮することができる。
九、商標又は標章の使用を示す証拠には、その図案及び日付の表示を有するか、又はその使用
図案及び日付を識別できる証明資料を添付しなければならない。なお、当該証拠は国内のもの
に限らない。但し、外国の証拠資料については、国内の関連事業者又は消費者がそれを知り得
－150－
るか否かによって証拠性を判断する。
十、著名商標又は標章の認定に当たって、商標主務官庁は本要点六に掲げられる証拠を基に、
要点五の要素を総合的に勘案して判断しなければならない。ただし、周知されている事実につ
いてはこの限りではない。
十一、具体的な証拠の提出により周知商標又は標章と認定されたものについては、商標又は標
章の所有者は同一証拠を新たに提出する必要はない。但し、必要と認めるときは、商標又は標
章の所有者に関連証拠の提出を命じることができる。
十二、標章、団体標章及び団体商標を証明する際にも、それらの性質に応じて、本認定要点を
準用することができる。
B「著名性の認定」に関する訴願決定例
【決定機関】
：経済部訴願委員会
【決定日時】
：2006 年 9 月 4 日
【決定番号】
：経訴字第 09506177390 号
【事実】：
甲社所有の「HARTFORD」商標は、金属製工具箱等の国際分類第 6 類の商品を指定商品として出
願し、登録第 1155831 号商標（以下「係争商標」という）として登録された。この登録商標に
対し、
「加工機器、オートバイ及びその部品」に係わる「哈佛 Hartford」商標（以下「引用商標」
という）を有する乙社は、台湾商標法第 23 条 1 項 12 号（「著名商標との混同誤認」
、
「著名商標
の識別力及び信用の希釈」）及び同 13 号（同一又は類似の商品を指定している先登録の存在）
の規定に基づき、異議を申立てた。台湾商標主務官庁は「係争商標の指定商品は引用商標のそ
れと類似しないこと」
、並びに「引用商標の知名度は『加工機器、オートバイ及びその部品』の
関連業者又は消費者の間では著名商標の程度に達しているものの、その著名性は『加工機器、
オートバイ及びその部品』と競争関係にない『金属製工具箱等』の業者又は消費者にまで及ば
ないこと」を理由に、本件には異議申立人が主張する不登録事由がないと判断し、異議申立て
は不成立との審決を下した。この審決を不服として、異議申立人は台湾経済部に訴願を提起し
た。
【訴願決定】
：訴願が棄却される。
【理由】：
学者の見解によると、商標の希釈論は、著名商標が全く競争関係又は類似関係にない商品又は
役務に使用されたような、伝統的な「混同誤認の虞」の理論が有効に保護を与えられない事例
から発展してできた概念であり、補充の救済手段として位置付けられる。よって、適用条件に
関し、商標の識別力又は信用の希釈は「混同誤認の虞」と区別がある。
商標類似の程度及び商品類似の関係については、商標希釈の場合は商標類似の程度が混同誤認
の虞の場合より高く要求され、且つ著名商標と係争商標の商品・役務が類似関係、競合関係に
ないことも要求される。
希釈規定により保護を受ける商標は、著名性の程度が高く要求され、その要求は「混同誤認の
虞」のような「関係商品又は役務の範囲内の消費者に熟知されている程度」よりも高い。即ち、
当該関係商品・役務以外の領域の消費者にも熟知されている著名商標だけが、商標希釈の対象
に該当する。
訴願人（異議申立人の乙社）により提出された証拠資料には、ジープレース又は商品展覧等の
－151－
特定の活動の写真が多く、当該活動に参加するメンバーはジープレースを好む者又は加工機
器、オートバイ及びその部品に係わるメーカー又は消費者である。これに加え、メディアによ
る紹介資料は多くなかったため、加工機器、オートバイ及びその部品以外の領域の消費者又は
一般の消費者の間で引用商標が熟知されていることが認定できない。
係争商標と引用商標に係わる商品は、販売ルートが異なり、性能もはっきりと区別できるほか、
互いに組み合わせることにより需要を満足するようなこともないので、類似関係又は競合関係
にある商品に属しない。
よって、本件係争商標は第 23 条 1 項 12 号前段及び後段のいずれも適用されない。
C. 007 年 11 月 9 日に発効の「商標法第 23 条 1 項 12 号著名商標保護審査基準」
2003 年の法制度改正後、著名商標と同一又は類似するもので登録できない不登録事由には、二
つの態様、すなわち、
「著名商標との混同誤認」及び「著名商標の識別力又は信用の減損（希釈）」
が含まれている。「混同誤認」及び「識別力又は信用の減損（希釈）」はそれぞれの理論根拠及
び適用要件が異なるものの、これまで実施してきた「著名商標又は著名標章の認定要点」は、
「混
同誤認」及び「識別力又は信用の減損」の態様に分けてそれぞれの適用要件を論じていないた
め、適用要件を明確にした上で事件を審理する必要があると台湾知的財産局が判断した。この
判断のもとで、「著名商標又は著名標章の認定要点」の改正案として、「商標法第 23 条 1 項 12
号著名商標保護審査基準（案）」が起案された。台湾知的財産局の説明によると、同基準は、
「出
願、異議申立て手続き及び無効審判に関わる商標に、台湾商標法第 23 条 1 項 12 号に定める不
登録事由があるか否か」を判断するための基準であり、著名商標の権利の侵害を定める台湾商
標法第 62 条に関連する侵害要件の認定基準を定めるものではない。よって、将来、本審査基準
案が実施された場合、商標法第 62 条の侵害要件該当有無の認定は、裁判所の判断に委ねられる。
同審査基準案の内容を検討するために、2007 年 9 月 4 日から二回の公聴会が行なわれた。台湾
知的財産局に提出された草案に対し、第 23 条 1 項 12 号前段に定める「混同誤認」の態様につ
いては、
「商品が同一又は類似する」との要件、また、同条後段に定める「識別力又は信用の減
損（希釈）」の態様については、「商品の非類似」及び「著名の程度」との要件を巡って、学者
及び実務者から数多くの意見が寄せられ、数回の改正を行なった。以下に、「商標法第 23 条 1
項 12 号著名商標保護審査基準（案）
」（以下「保護審査基準（案）」と略する）の内容を紹介す
る。
「保護審査基準（案）」も、「著名商標又は著名標章の認定要点」（以下「認定要点」と略する）
と同様に、
「著名性の認定要素」及び「著名性の認定に関わる証拠資料」を定めており、その内
容は「認定要点」のそれと大体同一である。よって、ここでは重複して説明しないので、前記
「認定要点」五及び六の箇所を参照されたい。
「認定要点」ともっとも大きな差異が見られるのは、「保護審査基準（案）」は台湾商標法第 23
条 1 項 12 号前段（混同誤認）及び同 12 号後段（識別力又は信用の希釈）に分けて適用要件を
定めるという点にある。
2007 年 9 月 13 日付草案
台湾商標法第 23 条 1 項 12 号前段（混同誤認）を適用するには、
「商標の同一又は類似」
、
「著名
商標に該当すること」及び「関連消費者に混同誤認を生じさせる虞があること」のほか、
「商品
又は役務の同一又は類似」も要件とされる。著名性の程度は、
「関連公衆」に普遍的に認識され
ているレベルが要求される。
－152－
また、同 12 号後段（識別力又は信用の希釈）を適用するには、「商標の同一又は類似」、「著名
商標に該当すること」及び「著名商標の識別力又は信用を希釈する虞があること」のほか、
「商
品又は役務の非類似」及び「一般公衆に普遍的に認識されているレベルの知名度」も要件とさ
れる。商標類似の程度は「混同誤認」の態様より高く要求され、
「同一」又は「非常に類似」の
レベルが要求される。
2007 年 9 月 29 日付草案
台湾商標法第 23 条 1 項 12 号前段（混同誤認）を適用するには、
「商標の同一又は類似」
、
「著名
商標に該当すること」及び「関連消費者に混同誤認を生じさせる虞があること」の要件を満た
さなければならない。「商品又は役務の同一又は類似」という要件は今回の草案から削除され
た。著名性の程度は「関連公衆」に普遍的に認識されているレベルが要求される。
また、同 12 号後段（識別力又は信用の希釈）を適用するには、「商標の同一又は類似」、「著名
商標に該当すること」及び「著名商標の識別力又は信用を希釈する虞があること」が要件とさ
れる。
「商品又は役務の非類似」及び「一般公衆に普遍的に認識されているレベルの知名度」の
要件は、今回の草案から削除された。著名性の程度について、今回の草案では、
「一般公衆に普
遍的に認識されているレベルの知名度」を要件とせず、第 23 条 1 項 12 号前段（混同誤認）よ
り高いレベルが要求されることしか指摘されていないものの、同草案に「知名度は一般公衆に
普遍的に認識されているレベルに達した場合の方が、第 23 条 1 項 12 号後段（識別力又は信用
の希釈）の規定が適用される可能性が高い」という文言がある。なお、商標類似の程度は「混
同誤認」の態様より高く要求されるという文言があるものの、
「同一」又は「非常に類似」とい
う表現は削除された。
学者、実務者からの意見
2007 年 9 月 13 日付草案に対し、学者、実務者から様々な意見が寄せられてきた。主な争点は、
台湾商標法第 23 条 1 項 12 号前段（混同誤認）に関わる「商品又は役務の同一又は類似」の要
件及び同後段（識別力又は信用の希釈）に関わる「商品又は役務の非類似」及び「一般公衆に
普遍に認識されているレベル知名度」の要件にある。
これらの要件に対し、裁判官の李得灶氏、陳國成氏、及び学者の李素華氏は、商標法に当該要
件が定められていないことを理由に、
「本法（商標法）の範囲を越える」
、
「本法に抵触する」
、
「法
律に定めていない制限を加える」等と評価した。（注1）
台湾商標法第 23 条 1 項 12 号前段の「混同誤認」及び後段の「識別力又は信用の希釈」に関す
る知名度のレベルの認定につき、
「商標法第 23 条 1 項 12 号の著名商標保護審査基準」は「2007
年 9 月 29 日付草案」と同じ内容で纏められた。
(2) 著名性の判断
現行第 62 条に定める「みなし侵害」に関連する裁判例は見当たらなかった。第 23 条 1 項 12 号
の関連認定については、前記（1）を参照されたい。
(3) 第 62 条の解釈
台湾商標法第 62 条 1 号と 2 号のみなし侵害の規定は同法第 23 条 1 項 12 号と同じく、著名商標
の保護を強化するために、2003 年法改正で追加されたものである。しかし、第 23 条 1 項 12 号
の規定と異なり、
「混同誤認」及び「識別力又は信用の希釈」については、現実に「混同誤認が
注1 ：2007 年 9 月 14 日に開かれた公聴会の記録
－153－
生じたこと」又は「識別力又は信用が希釈されたこと」が要件とされ、「おそれ」の程度では、
同条に基づき権利侵害を主張することはできない。
また、現行第 62 条に定める「みなし侵害」に関連する裁判例は見当たらなかった。
(4) 権利行使の調整
非類似の指定商品・役務について、同一又は類似の商標を使用する者が複数おり、双方又は片
方が著名商標となった場合の権利行使に関し、台北高等行政裁判所 89 年度訴字 1196 号判決に
は、次のような意見が示されている。
「商品又は役務の出所を表す著名商標又は標章の所有者は懸命に営業を行いながら、売上げを
高めるとともに商業上の信用を築いていくことにより、その（商標又は標章の）経済価値を高
める。標章専用権の排他範囲を広げていく過程に、ある領域で先に基礎を立てた営業主体と衝
突した場合、両方の利益はどのように調整するのか。当院（注2）は、著名商標の排他的な権利
の方が歩を譲るべきだと考える。著名商標の経済価値のため、早くからある商品領域（すなわ
ち既に商標専用権を取得している）で先に基礎を立てた企業の既有権益が犠牲になることはな
い」とのことである。
本件判決は、片方の著名商標（無効審判請求の根拠となる商標）の所有者が 1993 年法第 37 条 1
項 7 号（注3）の規定に基づき、他方の登録商標（係争商標）の登録を無効にしようとする審判
を請求した、いわゆる商標無効審判に係わる案件である。本件において、無効審判請求の根拠
となる商標は、無効審判請求時点の知名度は認められたが、係争登録商標出願時点における、
請求の根拠となる商標に係わる商品の知名度は認められなかったため、係争登録商標は 2003 年
の法改正前の商標法第 37 条 1 項 7 号に定める不登録事由に該当しないと判断された。
前記引用した権利調整に関する裁判所の意見は、
「著名商標又は標章に・・・・貴重な経済価値
があり、商標価値の希釈を避けるため、保護を与えるべきである」との本件著名商標の所有者
の主張に対し、裁判所が見解を示したものである。この見解によると、非類似の指定商品・役
務について同一又は類似の商標を使用する者が複数おり、片方が著名商標となった場合、片方
の著名商標が著名となる前に出願された他方の商標の権利の方が保護される。一方、片方の商
標が著名となった後に出願された他方の商標が「引用商標が著名商標となる前に既に使用して
いた」ことを理由に第 23 条 1 項 12 号の適用を避けられるか否かについては、前記の判決から
は判断できない。この問題に関して台湾商標主務官庁又は裁判所の見解はまだないが、私見と
しては、著名商標の希釈規定の保護法益は、混同誤認の規定と異なり、関連消費者の利益（公
の利益）ではなく、著名商標所有者の私的利益であるため、著名商標に対する保護は善意の第
三者の利益を犠牲にしてまで与える必要があるのか、疑問を感じる。
(5) 未登録著名商標に対する保護
現行台湾商標法では、排他権の付与につき、実際の使用による付与の制度はなく、今も登録保
護制度を採用している。登録保護制度のもとでは、台湾商標法第 62 条の保護対象も登録商標に
限られている。台湾で登録を受けている著名商標の権利者は第 62 条に基づき権利を主張するこ
とができるのに対し、未登録の著名商標の所有者は商標法同条の保護を受けることができず、
台湾公平交易法に基づき保護を求めることしかできない。
注2 ：台北高等行政裁判所のことを指す。
注3 ：1993 年法第 37 条 1 項 7 号：「商標図案は他人の商標又は標章を襲用し、これにより公衆に混同誤認を生
じさせる虞がある場合、登録することができない」
－154－
(6) 第 23 条 1 項 12 号関連の統計資料等
第 23 条 1 項 12 号によって登録拒絶された件数の統計資料は見当たらなかった。関連事例は以
下に紹介する。
【処分機関】
：台湾知的財産局
【処分日時】
：2006 年 12 月 5 日
【処分書番号】：中台異字第 G00950619 号
【事実】：
被異議申立人の「FREYA 及び図形」商標は「花瓶・化粧用具」等の国際分類第 21 類の商品を指
定商品として出願し、登録第 1146230 号商標（以下「係争商標」という）として登録された。
この登録商標に対し、「化粧品」等に係わる「FREYA」商標（以下「引用商標」という）を有す
る異議申立人は、台湾商標法第 23 条 1 項 12 号（「著名商標との混同誤認」
、
「著名商標の識別力
及び信用の希釈」）、同 13 号（同一又は類似の商品を指定している先登録の存在）及び同 14 号
の規定に基づき、異議を申し立てた。台湾商標主務官庁の知的財産局は、
「引用商標の知名度は
『化粧品』等の関連業者又は消費者の間で著名商標の程度に達している」こと、及び「本件係
争商標を『化粧用具』等の商品に使用する行為は、不正に著名商標の識別力を利用して著名商
標の価値を減損すること、又は著名商標の信用を利用してただ乗りすることに該当する」こと
を理由に、異議申立人の主張を認め、不登録事由があると判断した上で、異議申立ては成立す
る（すなわち、登録第 1146230 号商標の登録は取り消されるべきである）との審決を下した。
この審決を不服として、被異議申立て人は台湾経済部に訴願を提起した。
この訴願に対し、台湾経済部は「希釈規定により保護を受ける商標は、著名性の程度が高く要
求され、
「混同誤認の虞」のような「関係商品又は役務の範囲内の消費者に熟知されている程度」
より高く、当該関係商品・役務以外の領域の消費者にも熟知されている著名商標だけが商標希
釈の対象に該当する。また、商品類似の関係について、商標希釈の場合は著名商標と係争商標
の商品・役務が類似関係、競合関係にないことが要求される。引用商標の知名度が関連消費者
の間だけに広がり、また両商標の指定商品も類似関係、競合関係にあるので、著名商標の識別
力又は信用の減損の規定を適用する余地はない」ことを理由に、知的財産局の「異議成立」処
分に間違いがあり、新たに処分するように知的財産局に命じた。
台湾知的財産局はこの命令に従い、新たに処分を下した。
【審決】：係争商標（登録第 1146230 号商標）の登録を取り消す。
【理由】：
引用商標は「化粧品」等の関連業者又は消費者に熟知されている著名商標に該当し、また、係
争商標の指定商品は引用商標の「化粧用具」と関連性があるので、両商標は出所につき消費者
に「混同誤認」を生じさせる可能性がある。よって、係争商標は商標法第 23 条 1 項 12 号の不
登録事由がある。
本件審決に対し、被異議申立人が訴願を提起しなかったため、本件係争商標は 2007 年 3 月 1 日
付にて登録を取り消された。
また、希釈化を認定する際に必要な立証事実及び立証の程度は前述（1）を参照されたい。
II 著名商標保護の沿革と現状
(1) 商標法及び公平交易法の競合
商標侵害は性質上不正競争に属するので、公平交易法の規制対象ともなる。現在の台湾法制で
－155－
は、商標法及び公平交易法は排他的な関係ではなく、いずれも商標侵害問題の解決に運用され
ている。立体商標、著名商標等の問題につき商標法の規定が完備されていなかった時期は、商
標問題は商標法により解決しきれないことが多かったため、公平交易法第 20 条及び第 24 条を
頼りにしていたところが多い。しかし、近年、国際調和を図るため、商標法はさまざまな改正
が行われ、商標保護の範囲が広くなった。過去では公平交易法に頼るしかなかった侵害案件は、
現在ではその多くが商標法により対応することができるようになった。以下に著名商標侵害に
関連する商標法第 62 条及び公平交易法第 20、24 条の規定を説明する。
A 台湾商標法第 62 条
条文の規定：
商標権者の同意を得ずに、次の各号のいずれかの情況を有する場合、商標権の侵害と見なす。
他人の著名の登録商標であることを明らかに知りながら、同一又は類似の商標を使用し、又は
当該著名商標中の文字を自己の会社名称、商号名称、ドメインネーム、或はその他の営業主体
又は供給元を表彰する標識とし、著名商標の識別性又は信用を損なった場合。
他人の登録商標であることを明らかに知りながら、当該商標中の文字を自己の会社名称、商号
名称、ドメインネーム、或はその他の営業主体又は供給元を表彰する標識とし、商品又は役務
に関連する消費者に混同誤認を生じさせた場合。
構成要件：
著名商標の所有者が台湾商標法第 62 条 1 項 1 号の規定に基づき、第三者による著名商標の使用
に対し、権利侵害を主張する場合、その主張は認められるため、
（1）
「商標が著名商標で台湾で
登録されていること」、
（2）「行為者が当該著名商標と同一又は類似する商標を使用しているこ
と」
（又は「当該著名商標中の文字を自己の会社名称、商号名称、ドメインネーム、或はその他
の営業主体又は供給元を表彰する標識として使用していること」）
、
（3）
「当該使用により著名商
標の識別性又は信用が損なわれたこと」
、
（4）
「行為者が著名商標であることを知っていること」
という四つの要件を満たさなければならない。ちなみに、現行台湾商標法により保護される商
標の種類は「文字、図形、記号、色彩、音、立体形状又はこれらの結合で構成するもの」に限
られる。これらの対象以外のもの、例えば「匂い」、「動き」等は登録対象にはならないので、
商標法第 62 条の保護対象ではない。
B 公平交易法第 20 条、第 24 条
条文の規定：
第 20 条
事業者は、その営業上提供する商品又は役務につき、次に掲げる行為をしてはならない。
1. 関連事業又は消費者に一般的に認識されている他人の氏名、商号又は会社の名称、商標、商
品容器、包装、外観又はその他他人の商品を示す表徴と同一又は類似するものを使用し、それ
をもって他人の商品と混同を生じさせること、又は当該表示を使用する商品を販売、運送、輸
出或は輸入すること。
2. 関連事業又は消費者に一般的に認識されている他人の氏名、商号又は会社の名称、標章又は
その他他人の営業、役務を示す表徴と同一又は類似するものを使用し、それをもって他人の営
業又は役務の施設又は活動と混同を生じさせること。
3. 同一又は類似の商品について、未登録の外国の著名な商標と同一又は類似するものを使用す
ること、又は当該商標を使用する商品を販売、運送、輸出又は輸入すること。
－156－
前項の規定は、次の各号に掲げる行為に適用しない。
1. 普通の使用方法で、商品自体の慣用名称又は取引上同類の商品の慣用表徴を使用すること、
又は当該名称又は表徴を使用する商品を販売、運送、輸出又は輸入をすること。
2. 普通の使用方法で、取引上同種の営業又は役務の慣用名称その他表徴を使用すること。
3. 善意で自己の氏名を使用すること、又は当該氏名を使用する商品を販売、運送、輸出又は輸
入をすること。
4. 前項第１号又は第２号に定める表徴が関連事業又は消費者に一般的に認識される前に、善意
でそれと同一又は類似するものを使用し、又は善意で当該表徴を使用する者からその営業とと
もに当該表徴を譲り受けて使用し、又は当該表徴を使用する商品を販売、運送、輸出又は輸入
をすること。
事業者は、他の事業者が前項第３号又は第４号の行為により、自己の営業、商品、施設又は
活動が損害を受け、又は混同を生じるおそれがある場合は、他の事業者に対し、適当な表示を
つけるよう請求することができる。但し、これは、商品の運送しか行わない事業者には適用し
ない。
第 24 条
本法にある規定以外にも、事業者はその他取り引きの秩序に影響を与えるに足る欺瞞的な又は
著しく公正を欠く行為をしてはならない。
構成要件：
公平交易法第 20 条 1 項に「関連事業又は消費者に一般的に認識されている表徴の使用」
（1 号、
2 号）及び「未登録の外国著名商標の使用」
（3 号）の二態様（注：4）が分けられている。著名
商標の所有者は第三者による著名商標の使用に対し、公平交易法第 20 条 1 号（商品への使用の
場合）又は 2 号（役務への使用の場合）により対処する場合、次の構成要件が満たされなけれ
ばならない。ちなみに、公平交易法に保護されている「表徴」の範囲は商標法の保護対象であ
る「商標」
（「文字、図形、記号、色彩、音、立体形状又はこれらの結合で構成するもの」）より
広いとされる。
・「表徴が関連事業又は消費者に一般的に認識されていること」
・「行為者が当該表徴と同一又は類似する商標を同一又は類似の商品・役務に使用しているこ
と」（注：5）
・「当該使用により他人の商品・役務と混同を生じさせること」
公平交易法第 20 条 1 項 3 号の「未登録の外国著名商標の使用」に基づき対処する場合、次の構
成要件が満たされなければならない。
・「使用されている商標は未登録の外国の著名な商標（注：6）と同一又は類似するものである
注4 ：台湾公平交易法第 21 条 1 項 1 号に定めている行為態様には「表徴の使用」のほか、
「当該表徴を表記する
商品を販売、運送、輸出或は輸入する」という態様も含まれているが、商標法第 62 条に関連するものは「表徴
の使用」であるため、ここでは「表徴の使用」だけを取上げて検討した。
注5 ：公平交易委員会は「同一又は類似する商品での使用」を要件としているものの、台湾の学説では、「同一
又は類似の商品・役務ではなくても、その使用により、消費者に当該行為者と表徴の所有者の間に経済、経営、
組織、法律上密接的な関係を持つかのように誤認させる場合も、台湾公平交易法第 20 条 1 項 1、2 号を適用す
る」という考えが多数説である。
（經濟部智慧財產局「商標法整體法制暨具體修法建議之研究」
、P168~P169、2005
年）
注6 ： 「未登録の外国の著名な商標」については、「台湾で著名となっているものの、登録されていない商標」
と解釈することが可能であるものの、このような解釈を取ると、公平交易法第 20 条 1 項 3 号は規制内容が実質
－157－
こと」
・「同一又は類似の商品について使用すること」
また、公平交易委員会の運用では、第 20 条 1 項 1 号、2 号の規制対象とされない「非類似商品
・役務での著名商標の使用」及び「著名商標の識別力又は信用の希釈」は公平交易法第 24 条に
定める「欺瞞的な又は著しく公正を欠く行為」に該当するものとして扱われている。
公平法による保護の実質上の必要性（商標法の不備を補完するための実質上の必要性）は近年
段々低くなり、「商標事件は商標法により救済すべきである」との議論（注：7）が出始めてい
るが、法改正が行われるまでは、商標権関連事件が公平交易法に定める要件を満たすのであれ
ば、商標法のほか、公平交易法による救済も可能である。
実際の商標侵害事件では、商標法により対応できるものでも、公平交易委員会への告発ルート
を優先することがよく見られる。その理由は、
「政府手数料の納付が不要」というメリットがあ
るほか、「公平交易委員会は準司法権を有し、迅速且つ効率的に案件を処理することができる」
との意見がある。しかし、
「行政指導が先に行われ、その後司法手段をとる」という公平交易法
の処理原則により、公平交易法の違反を構成すると認められた場合、まずは公平交易委員会よ
り是正命令を出すと同時に過料処分を下し、それでも命令に従い是正しなければ、始めて裁判
所の審理に移転することとなる。
裁判例（商標法と公平交易法の競合）
【裁判所】：最高裁判所
【判決日時】
：1997 年 8 月 27 日
【判決番号】
：86 年度台非字第 241 号
【判決要旨】
：
商標侵害行為は、本来不正競争の一種に該当し、商標法に違反すると同時に公平交易法第 20 条
の規定にも違反する。商標法と公平交易法は構成要件及び規制の範囲が異なるため、法条競合
に該当しない。被告は登録商標を付ける模造品を販売していたことが原判決で認定されてお
り、また、当該模造品に係わる登録商標、例えば ROLEX、CHANEL 等が公衆に周知される著名商
標であることも疑う余地はない。よって、被告の、かかる商標を付ける模造品の販売行為は、
一個の行為が公平交易法第 20 条 1 項 1 号後段、同第 35 条及び商標法第 63 条等の二個以上の罪
名に触れ、観念的競合に該当するため、刑法第 55 条に基づき、その最も重い刑、すなわち公平
交易法第 35 条により処断する。
(2) 周知著名商標の希釈化関連規定の制度改正の背景、趣旨（商標法第 23 条、第 62 条）
台湾における周知著名商標に対する保護の明文化は、1983 年に初めて商標法第 37 条 1 項 7 号と
して「他人の著名商標と同一又は類似する商標で、同一又は類似の商品を指定する場合、登録
を受けることができない」、商標法第 62 の 1 条 1 項として「他人を欺瞞する意図をもって、未
登録の外国著名商標又はその類似の商標を同一の商品又は同類の商品に使用された場合、三年
以下の懲役、拘留又は三万元以下の罰金又はその併科に処する」との規定が定められた。
上同条 1 号の射程範囲に入っていることになり、規定自体が無意義になると考えられることから、立法理由を
根拠に、本号にいう「未登録の外国の著名な商標」とは、
「台湾において著名となっていないものの、外国で著
名となっている商標」のことを指すと解釈する学者がいる。
（經濟部智慧財產局「商標法整體法制暨具體修法建
議之研究」、P170~P171、2005 年）
注7 ：經濟部智慧財產局「商標法整體法制暨具體修法建議之研究」（2005 年），「2007 年 5 月 28 日経済日報」
－158－
1991 年台湾公平交易法(不正競争防止法に相当)が公布・実施され、同法第 20 条 1 項 3 号として
「事業者は、同一又は類似の商品について、未登録の外国の著名商標と同一又は類似のものを
使用すること、又は当該商標を使用する商品を販売、運送、輸出又は輸入してはならない」と
の規定が定められた。著名商標への保護強化を図るため、1993 年に商標法の防護標章制度に著
名商標関連規定が加えられ、著名商標の権利者は防護標章制度を利用して、
「指定商品に性質上
関連性があるか否か」を問わず、すべての区分において防護標章として著名商標を出願し、登
録を受けることにより、非類似商品・役務における他人による著名商標又はその類似商標の使
用を排除することができるようになった。しかし、1993 年の法改正で「未登録の外国著名商標
は公平交易法第 20 条 1 項 3 号の規定により保護されている」との理由で、1983 年に追加された
商標法第 62 の 1 条 1 項が、商標法から削除された。
公平交易法第 20 条 1 項 3 号の規定は未登録の著名商標に保護を与えるものの、その保護範囲は
当該著名商標と同一又は類似の商品に限られ、非類似商品にまで及ばない。
「著名商標の識別力
又は信用の希釈」に対する保護は、公平交易法第 20 条 1 項 3 号の規定の適用に限界があり、未
登録著名商標の権利者はしばしば公平交易法第 24 条（「本法に別段の定めがある場合を除き、
事業者はその他取引の秩序に影響を与えるに足りる欺瞞的な又は著しく公平に欠ける行為をし
てはならない」）を援用し、「著名標章の信用のただ乗り」を根拠に保護を求める。
「著名商標又は標章に対する保護は『信用の希釈（DILUTE）』にまで及ぶ」との世界知的所有権
機関（WIPO）
（1999 年 9 月）の決議を受け、2003 年に台湾商標法に第 23 条 1 項 12 号として「周
知著名商標の識別力又は信用を毀損する虞のある商標は登録を受けることができない」との規
定が追加され、同時に商標権の見なし侵害という第 62 条 1 号(他人の著名商標であると知りな
がら、それと同一、類似の商標を使用し、或いは他人の著名商標にある文字を会社名称、商号
名称、ドメインネーム或いはその他営業主体を表示する標識として使用し、著名商標の識別性
又は信用を毀損する)の規定が定められた。第 23 条 1 項 12 号及び第 62 条 1 号の追加について、
法改正関連資料（注：8）では、
「世界知的所有権機関が 1999 年 9 月に公布した『著名商標の保
護規定に関する共同決議事項（Joint Recommendation Concerning Provisions on the protection
of Well-Known Marks）』で、『著名商標認定は一般公衆ではなく、関係公衆の認識に基づき判断
すべきであること』
、及び『著名商標との混同誤認のほか著名商標の希釈（DILUTE）も避けるべ
きであること』が明確に指摘されている。アジア太平洋経済協力（APEC）の 2000 年 3 月の決議
により、APEC 参加メンバーは WIPO の『著名商標の保護規定に関する共同決議事項』を遵守しな
ければならないため、第 23 条 1 項 12 号の規定で『公衆』を『関係公衆』に修正すると同時に、
『著名商標の識別力又は信用を毀損（希釈）する虞がある商標は登録を受けられない』との規
定を追加した」、「近年、登録商標の中の文字を自社の名称、屋号の名称、ドメインネームの名
称又はその他営業主体若しくは出所を表す標識とすることで生じた商標権侵害の紛争が益々多
くなっている。明確化するため、商標権の侵害と見なされる態様を規定する必要がある。また、
擬制の方式を以って「侵害」の態様を規制するため、その構成要件は特に厳格さを要する。よ
って、結果として「減損」又は「混同誤認」が生じて初めて「侵害」に該当することを明確に
規定した。これは、改正法第 29 条第 2 項 2 号、3 号の「混同誤認のおそれ」を構成することを
注8 ：
「立法院議案關係文書 民國 92 年商標法修正條文對照表」http://www.tipo.gov.tw/trademark/trademark_law/past/
民國 92 年商標法修正條文對照表.doc
－159－
以って侵害に該当するとの規定とは異なる。また、第 1 号は、著名な登録商標を対象に、他人
の著名な登録商標であると明らかに知っていながら、当該著名商標と同一又は類似の商標を使
用し、又は当該著名商標の中の文字を自社の名称、屋号の名称、ドメインネームの名称又はそ
の他営業主体若しくは出所を表す標識とすることにより当該著名商標の識別力又は信用を減損
するものが、商標権の侵害であると見なされるべきであると規定する。これにより、著名な登
録商標を保護し、且つ近年、他人の著名商標を先取りにドメインネームとして登録するという
新しい問題に対応し、これを規制する。」と説明されている。
(3) WTO への加盟後の商標を巡る情況の変化及び侵害事件の統計資料
WTO への加盟後、台湾商標法等の改正が進んでいる。現在法改正を巡って多く議論されているの
は、未登録著名商標を含み、商標事件の解決手段は公平交易法から商標法に回帰させるべきか
否かという議論である。ちなみに、ユーザーの出願動向の変動については、目立つ点は見られ
なかった。
また、裁判所には商標権侵害事件に関する統計資料があるものの、侵害の態様による区分はな
いため、周知商標の侵害事案が増加しているか否かは統計資料から判断できない。
－160－
III 防護標章登録制度
(1) 代表的な防護標章の登録例
会社名
商標
登録番号 商品/役務
FAMILYMART CO., LTD. FAMILYMART
448032
Various gas fuels, liquid
fuels, solid fuels and
industrial oils and greases,
gas, gasoline, petroleum,
lubricants, mineral oil,
volatile oils
SEIKO EPSON
EPSON
1039693
Toys, playthings, dolls,
KABUSHIKI KAISHA
gymnastic appliances, fishing
(ALSO TRADING AS
tackle, surfboards,
SEIKO EPSON
sailboards, masts for sail
CORPORATION)
boards, decorations for
Christmas trees, games other
than coin-operated and those
adapted for use with television
receivers only, board games
parlor game implements, balls
for footballs, tennis balls and
rackets for tennis, golf clubs
and golf balls, bowling balls,
boxing gloves.
MILLENNIUM
崇光 SOGO 及圖
180849
RETAILING
News and newspaper
publication; television
broadcasting, radio
broadcasting, rental of cable
television services and rental
of satellite television
services; telephones,
telegraphs and
telecommunications; telephone
secretary for business use
(commercial phone mate),
leaving and passing over
message for clients, dialing
radio paging for clients, data
bank on line services dada base
－161－
on line services; providing
services of internet
transmission;
telecommunications equipment
leasing services.
ROLEX SA
ROLEX + CROWN DEVICE 521662
Clothing
UNILEVER N.V.
UNILEVER (LOGO &
Dried, fresh, salted,
454865
WORDS)
preserved or frozen marine
products or meats, and such
items packed in cans and
imitations thereof; dried,
fresh, preserved, pickled, or
frozen fruits or vegetables,
and such items packed in cans
SHELL INTERNATIONAL SHELL 蜆殼牌
69793
Tobacco, tobacco leaves
131661
Crystalware, porcelain,
CHEMICAL COMPANY
LIMITED
S.T. DUPONT
S. T. DUPONT
glassware, including bottles
and flasks of any kind in these
materials to contain cosmetic
or perfumery products, PARFUME
PANS.
PFIZER PRODUCTS INC. VIAGRA
126079
Editing and translation of
various books, periodicals,
magazines, literature;
kindergartens and nurseries;
restaurants and hotels;
building design and civil
construction engineering
design, gardening and
upholstering design
3M Company
3M LOGO
755016
Tea, black tea, coffee, cocoa,
chocolate powder, ice,
ice-cream, ice-cream powder,
salt, soybean sauce, seasoning
sauce, vinegar, monosodium
(glu- tamate), sugar, cube
－162－
sugar, honey, bee honey, candy,
chewing gum, biscuit, potato
chip, pop corn, toast, cake,
hot dog, sandwich, pudding,
pudding powder, chinese bread,
bun, fish dumpling, egg
dumpling, rice, wheat, wheat
powder, rice powder, glutinous
rice paper, congee, rice,
instant noodles, boiled pork
dumpling, rice noodle, frozen
boiled pork dumpling, sweet
rice wine seed
KONINKLIJKE PHILIPS PHILIPS
94884
ELECTRONICS N.V.
Sewing machines and assemblies
and parts thereof
INTERNATIONAL
"IBM" IN EIGHT
BUSINESS MACHINES
STRIPED LOGO
280966
Scientific instruments, and
apparatus, equipment and
CORPORATION
supplies for use in medical
treatment
CARTIER
CARTIER
86901
INTERNATIONAL N.V.
Providing market information
and import/export trading
services
ALFRED DUNHILL
DUNHILL
139517
LIMITED
Television receivers, electric
phonographs, radio receivers,
apparatus for recording sound,
radio relay transmitters,
radio relay receivers, radio
antenna masts, radio
transceivers, pagers, radio
signal receivers, radio
receiving sets, radio
transmitters, radio telephone,
telephone sets, facsimile
sets, stereo sets,
communication apparatus and
materials
ASICS CORPORATION
ASICS (STYLIZED
357770
WORD)
Embroideries, knitted and
woven artistic handwork
－163－
ちなみに、防護標章の件数に関する統計は見当たらなかった。
(2) 2003 年防護標章制度廃止経緯、廃止関連議論及び廃止によるユーザーへの影響
A 経緯
1990 年後半、著名商標への保護強化という国際要請が高まる中、台湾も「著名商標又は標章に
対する保護は「信用の希釈（DILUTE）」に及ぶ」と世界知的所有権機関（WIPO）1999 年 9 月の決
議を受け、著名商標への保護強化をめぐり、さまざまな検討を始めた。その結果、2003 年の法
改正がなされ、
「著名商標の識別力又は信用の希釈」関連の規定が台湾商標法に明文されるよう
になった。かかる希釈制度の導入は防護標章制度の廃止につながり、防護標章制度の廃止理由
について、法改正関連資料（注：9）では、「商標法に著名商標の「希釈」概念が導入された以
上、防護標章の機能が果たされた」と説明されている。一方、2003 年の法改正以前、著名商標
に関する議論は多くあったものの、防護標章制度廃止要否関連のものはあまりなされていない
ようであり、公開資料を調べても関連資料は非常に少ない。台湾防護標章制度の導入は日本商
標法の影響を受けるところが大きいものの、制度の内容は必ずしも日本の防護標章制度と完全
に一致するとはいえない。防護標章廃止をめぐる議論を紹介する前に、台湾防護標章制度を理
解しておく必要があると思うので、まずは台湾防護標章制度を以下のように説明する。
B 台湾防護標章制度の概要
台湾防護標章の制度は、単なる著名商標に対する保護の目的ではなく、予防登録という性質も
ある。1973 年に商標法に防護標章制度が導入され、第 22 条として「同一人は同一又は類似の商
品につき、類似の商標を連合商標として出願することができる。また、同一人は同一又は類似
のものでないが、性質上関連性のある商品につき、同一の商標を防護標章として出願すること
ができる」との規定が定められた。立法要旨は次のとおりである。
「法改正以前の規定によると、商標権の効力は登録されている商標及び指定商品のみにしか及
ばないため、性質上関連性がある商品に他人の登録商標を使用したとしても、他人の登録商標
の指定商品と類似関係がなければ、商標権侵害を構成しない。かかる性質上関連性がある商品
に他人の登録商標と同一のものを使用する行為は、当該商品が他人の登録商標に関わる商品で
あるかのように公衆に混同誤認を生じさせやすく、他人の登録商標の信用に影響を与えると思
われる。このような事情に鑑み、登録商標の権利者が登録商標に関わる指定商品以外の、性質
上関連性のある商品についても防護標章として登録することができるように、新たな規定が追
加された。」
その後、著名商標保護の強化策として、1993 年に商標法の防護標章制度に著名商標を加え、著
名商標の保護を図ろうとした。1993 年の改正法は 1973 年改正法の第 22 条 2 項の条文表現を改
めた上で、同条 2 項に著名商標関連の但し書きを加えた。その条文は以下のとおりである。
旧法第 22 条 2 項
同一人が、同一の商標について、同一又は類似していないが、性質上関連のある商品を指定し
て登録しようとする場合、防護標章として登録を受けることができる。但し、著名商標は性質
注9 ：
「立法院議案關係文書 民國 92 年商標法修正條文對照表」http://www.tipo.gov.tw/trademark/trademark_law/past/
民國 92 年商標法修正條文對照表.doc
－164－
上関連のある商品という制限を受けない。
上記の規定によると、防護標章が著名商標である場合、
「指定商品に性質上関連性がある」とい
う要件は不要である。すなわち、著名商標の権利者は「指定商品に性質上関連性があるか否か」
を問わず、すべての区分において防護標章として著名商標を出願し、登録を受けることができ
る。但し、著名商標として防護標章の出願をする際に、当該著名であることを立証する責任を
負う。
C 防護標章制度廃止の反対意見（注：10）
希釈理論は、努力により著名商標を作り上げた著名商標の権利者を保護する観点（消費者混同
誤認の観点ではなく、著名商標自体の保護）から発展してきた理論である。これに対し、台湾
の「防護標章制度」は立法趣旨からも分かるように、消費者の混同誤認を避けるために作られ
た、予防の性質を有する特殊な制度であり、著名商標だけのために存在するものではない。著
名商標であれ、非著名商標であれ、いずれも防護標章制度による保護を受けることができる。
よって、台湾の「防護標章制度」は希釈理論より保護の範囲が大きく、
「希釈理論」の導入は「防
護標章制度」を代替することができないため、
「希釈理論」の導入と共に「防護標章制度」を維
持すべきとの意見がある。
D 防護標章制度の廃止によるユーザーへの影響について
希釈制度では、著名商標の権利者は権利侵害に当たり、
「著名商標」及び「識別力又は信用の希
釈」を証明しなければならない。防護標章制度では、他人は許可なく、商標審査に通過して登
録された防護標章を使用した場合、権利者は権利の行使にあたり、
「本商標の指定商品と関連性
があるか否か」又は「著名商標」を立証する責任はない。したがって、防護標章制度の廃止後、
著名商標の商標権者は、それぞれの侵害事件において逐一「著名性」を立証しなければならな
い。著名商標ではない商標の所有者は、権利侵害予防のためにあらかじめ「関連する商品」に
ついて防護標章を登録することができなくなる。
(3) 防護標章における訴訟事例
台湾司法機関にて公開されているデータベースで調べたところ、防護標章登録に基づき民事・
刑事訴訟を提起した事例は発見できなかった。旧法第 61 条以降の権利侵害規定は、商標の種類
に分類して効力を定めていなかったため、解釈上、防護標章を含むすべての登録商標は旧法第
61 条以降の規定を適用することができる。すなわち、防護標章と類似の商標に対しても権利行
使が可能である。ちなみに、防護標章登録制度の廃止後、希釈化による権利侵害に関連する訴
訟事例は見当たらなかった。
(4) 防護標章登録の経過措置について
2003 年法に定めている経過措置に関連する議論は見当たらなかった。
注10 ：林惠貞「商標減損與防護商標之研究」（2004 年）
－165－
（４）米国
インターネット上の商標保護
Rader, Fishman & Grauer PLLC
米国弁護士、米国弁理士、日本弁理士
中嶋 知子
Rader, Fishman & Grauer PLLC
1233 20th Street N. W., Suite 501
Washington, D. C. 20036
+1-202-955-8701 direct
+1-202-955-3751 facsimile
－169－
Trademark Protection on the Internet
In the area of the Internet, which is easily accessible around the world, there is a need to
solve the problem of the use of trademarks across national borders since the territoriality
principle that controls the effects of rights cannot be applied. Various aspects need to be
discussed including the requirements for establishing certain uses as use of a trademark on
the Internet and an Internet-specific discipline that differs from that of the real world.
Based on an awareness of such issue, please explain the following matters.
(1) Please provide a detailed explanation on the course of the development and the current
situation of US trademark law with regard to trademark protection on the Internet.
Please elaborate on the following points.
(i) Do intangible goods that are traded as digital content over the Internet
correspond to “goods (or services)” under US trademark law? Is an act of
attaching a trademark to intangible goods in such transactions over the Internet
regarded as “use of a trademark”? Please explain by citing specific provisions of
law. Please also explain the differences in the details of the protection between a
case where the trademark attached to intangible goods is an unregistered
trademark and a case where it is a registered trademark, if any.
“Digital Content” Traded as Goods over the Internet
Section 30 of the Trademark Act provides authority for establishing a classification
system for trademarks and service marks.1 The classification schedules are set forth in 37
C.F.R. § 6.1. As of September 1, 1973, the International Classification of goods and services
is the primary classification used by the United States.2 The indications of goods or services
appearing in the List of Classes of the International Classification are general indications
relating to the field to which the goods or services belong.3
The answer to this first question depends on the definitions of both “traded” and “digital
content.” Below will be discussed different possible classifications and then actual examples
of “digital content” “traded” over the internet will be given along with the different
International Classifications that “digital content” and “traded” could be classified under.
International Class 9 is a classification of goods described as “electrical and Scientific
Apparatus” and includes “all computer programs and software regardless of recording media
or means of dissemination, that is, software recorded on magnetic media or downloaded from
1
15 U.S.C. § 1112 (“The Director may establish a classification of goods and services, for convenience of Patent and
Trademark Office administration, but not to limit or extend the applicant's or registrant's rights.”)
2
TMEP § 1401.02
3
TMEP § 1401.02(a)
－170－
a remote computer network.”4
International Class 35 is a classification of services described as “Advertising and
Business” and includes “the bringing together, for the benefit of others, of a variety of goods
(excluding the transport thereof), enabling customers to conveniently view and purchase those
goods.”5
International Class 38 is a classification of services described as “Telecommunications”
and includes “services allowing at least one person to communicate with another by a sensory
means. Such services include those which (1) allow a person to talk to another, (2) transmit
messages from one person to another, and (3) place a person in oral or visual communication
with another (radio and television).”6
International Class 41 is a classification of services described as “Education and
Entertainment” and includes “(1) services consisting of persons or training or animals, (2)
services having the basic aim of the entertainment, amusement or recreation of people, (3)
presentation of works visual art or literature to the public for cultural or educational
purposes.”7
International Class 42 is a classification of services described as “Computer, Scientific, &
Legal” and includes “scientific and technological services and research and design relating
thereto” and “design and development of computer hardware and software.”8
Application of these classifications to known trademarks may be instructive. Below,
three marks that are associated with “digital content” “traded” over the internet will be
examined, namely, iTunes, Adobe Acrobat, and YouTube.
iTunes
iTunes is a digital media player application, introduced by Apple on January 10, 2001 at
the Macworld Expo in San Francisco, for playing and organizing digital music and video files.
The program is also an interface to manage the contents on Apple's popular iPod digital media
players as well as the recently introduced iPhone. Additionally, iTunes can connect to the
iTunes Store in order to purchase and download digital music, music videos, television shows,
iPod games, audiobooks, various podcasts, feature length films, and ringtones. iTunes is
available as a free download for Mac OS X, Windows Vista, and Windows XP from Apple's
website.9, 10
The iTunes registered mark classified into International Classes 9, 16, 35, 38, 41, and 42
4
Id.
5
TMEP § 1401.02(a)
6
TMEP § 1401.02(a)
7
TMEP § 1401.02(a)
8
TMEP § 1401.02(a)
9
http://www.apple.com/itunes/
10
http://en.wikipedia.org/wiki/Itunes
－171－
with the following descriptions:
Word Mark – ITUNES – Goods and Services:
IC 009. Computer software for use in authoring, downloading, transmitting, receiving,
editing, extracting, encoding, decoding, playing, storing and organizing audio data.
IC 016. Gift cards, printed gift certificates; non-magnetically encoded prepaid purchase
cards for allowing users to transfer financial value on-line via retail computer networks; nonmagnetically encoded prepaid purchase cards for the online purchase of news, sports and
entertainment content via the Internet.
IC 035. Retail store services in the field of entertainment featuring pre-recorded audio
and audiovisual works and related merchandise, provided via the internet and other computer
and electronic communication networks.
IC 038. Telecommunication services, namely, electronic transmission of streamed and
downloadable audio and video files via computer and other communications networks;
providing on-line chat rooms, bulletin boards and community forums for the transmission of
messages among computer users concerning entertainment, music, concerts, videos, radio,
television, film, news, sports, games and cultural events; web casting services; delivery of
messages by electronic transmission; provision of connectivity services and access to
electronic communications networks, for transmission or reception of audio, video or
multimedia content; Telecommunication services, namely, electronic transmission of streamed
and downloadable audio and video files via computer and other communications networks;
providing on-line chat rooms, bulletin boards and community forums for the transmission of
messages among computer users concerning entertainment, music, concerts, videos, radio,
television, film, news, sports, games and cultural events; web casting services; delivery of
messages by electronic transmission; provision of connectivity services and access to
electronic communications networks, for transmission or reception of audio, video or
multimedia content.
IC 041. Providing on-line facilities, via a global computer network, to enable users to
program audio, video, text and other multimedia content, including music, concerts, videos,
radio, television, news, sports, games, cultural events, and entertainment-related programs.
IC 042. Providing search engines for obtaining data via communications networks;
providing search engines for obtaining data on a global computer network; providing
temporary use of on-line non-downloadable software to enable users to program audio, video,
text and other multimedia content, including music, concerts, videos, radio, television, news,
－172－
sports, games, cultural events, and entertainment-related programs; internet services, namely,
creating indexes of information, sites and other resources available on global computer
networks for others; searching, browsing and retrieving information, sites, and other resources
available on global computer networks for others.
Adobe
Adobe is a family of application software by Adobe Systems. These applications use
Adobe's Portable Document Format (PDF) as their native file format. Some software in the
family is commercial, and some free of charge. Adobe Reader (formerly called Acrobat
Reader) is available as a no-charge download from Adobe's web site, and allows the viewing
and printing of PDF files. Acrobat and Reader are major components of the Adobe
Engagement Platform, and are widely used as a way to present information with a fixed
layout similar to a paper publication.11, 12
The Adobe Acrobat or Adobe family marks are registered marks classified into
International Classes 9, 16, 41, and 42 with the following descriptions:
Word Mark – CLEARLY ADOBE IMAGING – Goods and Services
IC 009. computer software, namely computer programs in the fields of web publishing,
desktop publishing, electronic publishing, digital publishing, printing, proofing, typesetting,
and graphic design; computer software for the creation, storage, manipulation, conversion,
transmission, transfer, distribution, retrieval, display, printing, editing and annotation of
electronic documents; computer software for use in layout, editing and collaborative asset
management in the production of electronic and printed publications; computer software for
web authoring; computer software for creating, playing, viewing, publishing and broadcasting
animation, sound, graphics, 3 dimensional graphics, interactive graphics, video, presentations
and illustrations for use over computer networks, wireless networks and global
communication networks; computer e-commerce software to allow users to perform
electronic business transactions via a global computer network; computer software for
creating, processing, editing, managing, printing, proofing, transferring or distributing text,
audio, graphics, still images and moving pictures; computer software for creating fonts and
typefaces; computer software for accessing information directories that many be downloaded
from the global computer network; computer software for wireless communications;
computer software for use with optical scanners; computer software for page recognition and
rendering; computer hardware, namely, printers; and instructional books and manuals sold as
a unit therewith.
11
http://www.adobe.com/products/acrobat/
12
http://en.wikipedia.org/wiki/Adobe_Acrobat
－173－
Word Mark – ADOBE PREMIERE – Goods and Services
IC 009. Computer programs for creating and editing digital movies, video images,
audio recordings, animation, still images and graphics and manuals for use therewith, sold as
a unit.
Word Mark – ADOBE ENCORE – Goods and Services
IC 009. Computer software for authoring, distributing, receiving, playing, storing,
organizing, editing, formatting, converting, encoding and decoding audio, video and
multimedia content, and user manuals sold therewith.
Word Mark – ADOBE – Goods and Services
IC 016. Books and magazines relating to graphic design; books, magazines and
manuals relating to the use of computers and computer software; and books and magazines
for the computer hardware and software industries.
IC 041. Educational and training services, namely classroom training, online training,
web-based training, and video training in the fields of computer software, desktop publishing,
digital publishing, electronic publishing, graphic design, business document and forms
creation, and automation of business document and forms processing and workflow;
Educational services, namely, arranging professional workshops and training courses,
conducting classes, seminars, conferences, and workshops in the fields of computer software,
desktop publishing, digital publishing, electronic publishing, graphic design, business
document and forms creation, and automation of business document and forms processing and
workflow.
IC 042. Computer software technical support services; computer software
development and design for others; consulting services in the field of computer software;
consulting services in the field of computer software development and design; providing online support services for computer software users; providing access to computer bulletin
boards for the transfer and dissemination of a wide range of information.
Word Mark – ADOBE STUDIO – Goods and Services
IC 035. US 100 101 102. G & S: Retail store services, computerized on-line retail
store and distributorship services, and mail order catalog services, all in the fields of computer
hardware, electronic devices, software and related publications; advertising and marketing
services, namely, promoting the goods and services of others by displaying advertisements for
－174－
others on a web site and by means of operating an on-line shopping mall with links to the
retail web sites of others; dissemination of advertising for others via an on-line electronic
communications network, namely, delivering advertisements and promotional materials to
others via electronic mail and over computer networks, wireless networks and global
computer networks; business management and consulting services offered via computer
networks, wireless networks and global computer networks; providing information in the
fields of business, business communication and commerce via computer networks, wireless
networks and web sites on global computer networks; computer software licensing;
employment directory services, namely, employment hiring, recruiting, placement, staffing
and career networking services in the fields of graphic design and desktop publishing.
IC 042. Consulting services in the fields of computers, software, electronics,
telecommunications, security and authentication; technical support services, namely,
troubleshooting of computer hardware and software problems via a global computer network;
providing information in the fields of graphic design and publishing, via web sites on the
Internet; providing on-line books, newsletters, magazines, instructional manuals and user
guides in the fields of computers, software graphic design and publishing; providing
temporary use of online non-downloadable e-commerce software to allow users to perform
electronic business transactions via computer networks, wireless networks and global
communication networks in the fields of graphic design and publishing; providing temporary
use of online non-downloadable computer software for encryption, authentication, access
control, monitoring and protection of contents of electronic files in the fields of graphic
design and publishing; providing temporary use of online non-downloadable computer
software for managing communications and data and information exchange over computer
networks, wireless networks and global communication networks in the fields of graphic
design and publishing; providing temporary use of online non-downloadable computer
software for use in the field of graphic design and desktop publishing, namely, software for
digital publishing and electronic publishing, printing, imaging, graphics, typesetting and
archiving.
YouTube
YouTube is a popular video sharing website where users can upload, view and share
video clips. Unregistered users can watch most videos on the site, while registered users are
permitted to upload an unlimited number of videos. The San Bruno-based service uses Adobe
Flash technology to display a wide variety of video content, including movie clips, TV clips
and music videos, as well as amateur content such as videoblogging and short original videos.
YouTube was created in mid-February 2005 and before being purchased by Google
made 15 million dollars per month from advertising. In October 2006, Google Inc.
announced that it had reached a deal to acquire the company for US $1.65 billion in Google
－175－
stock. The deal closed on November 13, 2006.13, 14
YouTube marks is a registered mark classified into International Classes 9, 35, 38, and
41with the following descriptions:
Word Mark – YOUTUBE – Goods and Services
IC 009. (Based on Intent to Use) Software to enable uploading, posting, showing,
displaying, tagging, blogging, sharing or otherwise providing electronic media or information
over the Internet or other communications network
IC 035. (Based on Intent to Use) Advertising and advertisement, promotion and
marketing services for providing electronic media or information over the Internet or other
communications network
IC 038. Audio and video broadcasting services over the Internet or other
communications network, namely, uploading, posting, showing, displaying, tagging and
electronically transmitting information, audio, and video clips; providing access to
information, audio, and video via websites, online forums, chat rooms, listservs and blogs
over the Internet; providing on-line chat rooms and electronic bulletin boards for transmission
of messages among users in the field of general interest.
IC 041. Education and entertainment services, namely, providing a website featuring
audio clips, video clips, musical performances, musical videos, film clips, photographs, other
multimedia materials, and information in the field of audio clips, video clips, musical
performances, musical videos, film clips, photographs, and other multimedia materials; blogs
featuring information in the field of audio clips, video clips, musical performances, musical
videos, film clips, photographs, and other multimedia materials.
The above examples show instances where registered marks corresponding to
intangible goods that are traded as digital content over the Internet are protected under US
trademark law.
“Use of a Trademark” on the Internet
Use of a trademark is defined in the Lanham Act as “use in commerce” in 15 U.S.C. §
1127.
“The term "use in commerce" means the bona fide use of a mark in the ordinary
course of trade, and not made merely to reserve a right in a mark. For purposes of this Act, a
13
http://www.youtube.com/
14
http://en.wikipedia.org/wiki/Youtube
－176－
mark shall be deemed to be in use in commerce-(1) on goods when-(A) it is placed in any manner on the goods or their containers or the displays
associated therewith or on the tags or labels affixed thereto, or if the nature of the
goods makes such placement impracticable, then on documents associated with the
goods or their sale, and
(B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or advertising of services and
the services are rendered in commerce, or the services are rendered in more than one State or
in the United States and a foreign country and the person rendering the services is engaged in
commerce in connection with the services.”
Commerce is defined in 15 U.S.C. § 1127 as “all commerce which may lawfully be
regulated by Congress.”
Offering services via the internet has been held to constitute use in commerce, since
the services are available to a national and international audience who must use interstate
telephone lines to access a website.15 This issue is related to your question I (1)(iv), and I
(4) (ii), . Please see the answer to these more details.
Difference between Registered and Un-Registered Marks in Intangible Goods
United States trademark rights are acquired through use, and unregistered rights can be
enforced in federal court via a Lanham Act § 43(a), 15 U.S.C. § 1125(a), action. Trademark
registration, then, does not create rights; it only confirms the existence of rights.16 What then
15
See Planned Parenthood Federation of America, Inc. v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y. 1997), aff’d, 152 F.3d 920
(2d Cir. 1998), cert. denied, 525 U.S. 834 (1998).
16
15 U.S.C. § 1125. False designations of origin and false descriptions forbidden (a) Civil action.
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce
any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading
description of fact, or false or misleading representation of fact, which-(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or
association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or
geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil
action by any person who believes that he or she is or is likely to be damaged by such act.
(2) As used in this subsection, the term "any person" includes any State, instrumentality of a State or employee of a
State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or
employee, shall be subject to the provisions of this Act in the same manner and to the same extent as any nongovernmental
entity.
(3) In a civil action for trade dress infringement under this Act for trade dress not registered on the principal register,
－177－
is the benefit of federally registering a mark? Trademark registration serves an important
purpose: it provides notice to the public of the existence and nature of the claims of rights. In
recognition of the public benefit of having a trademark registered, the Lanham Act provides
significant inducements to persuade parties to registered their marks. Sections 33(a) and 7(b)
of the Lanham Act lay out the major benefits of federal trademark registration on the Principal
Registration. Under these sections, registration constitutes prima facie evidence of:
(1) The validity of the registered mark and the validity of the registration;
(2) The registrant’s ownership of the mark;
(3) The registrant’s exclusive right to use the registered mark in commerce on or in
connection with the goods or services specified in the registration; and
(4) Registrations are accorded nationwide constructive use as of their application dates.
Also, owners of registered trade dress do not bear the burden of establishing nonfunctionality.17
Some courts take the presumption of validity seriously. In one case, the First Circuit
asserted that the trademark challenger must offer “significant probative evidence” of
invalidity to overcome the presumption. Only then would the registrant be required to
“assume the devoir of persuasion on the issue of whether its mark has acquired secondary
meaning.”18 In a number of other courts, if a registration has not yet received incontestability,
the presumption of validity is “easily rebuttable.”19 Courts have generally held that only a
preponderance of the evidence is needed to overcome the Section 33(a) and Section 7(b)
presumption.20 But, the presumption does shift the burden of production to the trademark
challenger.21
(ii) While the purpose of trademark law is to prevent confusion as to the source with
regard to the goods/services provided by business operators, does the United
States have any special regulations for preventing confusion as to the source
regarding trademarks on the Internet?
Please explain the outline, criteria for application, academic theories and court
decisions concerning cases where unconventional uses of trademarks (Internetspecific uses such as meta tags and keyword buying) constitute trademark
infringement.
(Reference information: We understand that, in the United States, use of a trademark as
the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.
17
15 U.S.C. § 43(a)(3)(imposing such a burden on owners of unregistered trade dress).
18
Borinquen Biscuit Corp v. M.V. Trading Corp., 443 F.3d 112 (1st Cir. 2006). See also American Trading, Inc. v. Russ Berrie
& Co., 966 F.2d 1284 (9th Cir. 1992)(calling for district court to give greater weight to the presumptive effect of registration).
19
Custom Vehicles, Inc. v. Forest River, Inc. 476 F.3d 481 (7th Cir. 2007).
20
Vuitton et Fitts S.A. v. J. Young Enters., Inc. 644 F.2d 769, 775-776 (9th 1981).
21
Liquid Controls Corp. v. Liquid Control. Corp. 802 F.2d 934 (7th Cir. 1986).
－178－
a meta tag was found by the court to constitute trademark infringement in Brookfield
Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th
Cir.1999). There are two problems with regard to keyword buying: (i) the problem of
search engine operators selling specific keywords beforehand; and (ii) the problem of
keyword purchasers publishing banner ads corresponding to their keywords. Whether
or not these two cases constitute trademark infringement is a matter to be discussed.)
As the popularity of the Internet has increased, interest in the legal issues
surrounding trademark use on the internet has increased also. Trademark law in general and
the Lanham Act in particular is operative in cyberspace. 22 With regard to preventing
confusion on the internet, six areas have developed by statute or case law, in the application of
trademark law to the internet, namely: 1.) Domain Name; 2.) Meta Tags; 3.) Linking; 4.)
Framing; 5.) Keyword Buying, and 6.) Pop-Up Adds, which will be discussed below.
Domain Name
Like a street address or telephone number, domain names serves the purely
technological function of locating a web site in cyberspace.23 Domain names are also used for
trademark purposes when they are “used to identify the source of goods or services.”24
“Trademark or service mark infringement under the federal Lanham Act can occur if
a domain name similar to a trademark is used without permission in a commercial sense, such
as in connection with the sale, offering for sale, distribution or advertising of any goods or
services in a context that is likely to cause confusion, mistake or deception with a previously
used mark.”25
“For any type of trademark infringement or dilution or false advertising to be
actionable under the Lanham Act, the accused user must use the challenged designation in
some commercial sense. Thus, mere reservation of a domain name, without use in connection
with any commercial enterprise, does not trigger infringement by confusion or dilution under
the Lanham Act.”26 Passage in 1999 of the federal Anti-Cybersquatting Act (ACPA), now 15
22
Cardservice Int'l, Inc. v. McGee, 950 F. Supp. 737, 741, 42 U.S.P.Q.2d 1850, 1854 (E.D. Va. 1997), aff'd without opinion,
129 F.3d 1258 (4th Cir. 1997) (“The terms of the Lanham Act do not limit themselves in any way which would preclude
application of federal trademark law to the internet.”).
23
Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1044, 50 U.S.P.Q.2d 1545, 1549 (9th
Cir. 1999) (“Each web page has a corresponding domain address, which is an identifier somewhat analogous to a telephone
number or street address.”).
24
Lockheed Martin Corp. v. Network Solutions, Inc., 985 F.Supp. 949, 956 (C.D.Cal.1997).
25
McCarthy § 25:71; Panavision International v. Toeppen, 141 F.3d 1316 (9th Cir. 1998); PETA v. Doughney, 263 F.3d 359
(4th Cir. 2001); Harrods LTD v. Sixty Internet Domain Names, 302 F3d 214 (4th 2002)..
26
McCarthy § 25:76; See also, Panavision International v. Toeppen, 141 F.3d 1316 (9th Cir. 1998)(affirming a summary
judgment against Toeppen, finding that even though he did not use the “panavision.com” web site in connection with the sale
－179－
U.S.C. § 1125(d) made dilution by cybersquatting largely obsolete.27
Nine factors are outlined in 15 U.S.C. 1125(d)(1)(B) which may be used to determine
whether a defendant has acted with a bad faith intent to profit from the use of a mark.28 It is
noted that these factors are not exhaustive.29
It is also important to note that a domain name does not become a trademark or
service mark unless it is also used to identify and distinguish the source of goods or
services.30
of any goods or services; Toeppen's traded on the value of Panavision’s marks when attempting to sell the Panavision.com
domain name to Panavision); Compare to Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005)(reversing summary judgment
against defendant, finding defendant’s use of fallwell.com website simply to criticize Reverend Falwell’s views with no
financial motivation), cert. denied 126 S.Ct. 1772 (2006)
27
Porsche Cars North America, Inc. v. Porsche.Net, 302 F.3d 248, 261 (4th Cir. 2002)(“We may and do conclude that the
enactment of the ACPA eliminated any need to force trademark dilution law beyond its traditional bounds in order to fill a
past hole, now otherwise plugged, in the protection of trademark rights.”)
28
15 U.S.C. 1125(d)(1)(B)(i)(“In determining whether a person has a bad faith intent described under subparagraph (A), a
court may consider factors such as, but not limited to-(I) the trademark or other intellectual property rights of the person, if any, in the domain name; (II) the extent to which the
domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III)
the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV) the
person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name; (V) the person's intent
to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the
goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a
likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) the person's offer to transfer,
sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or
having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct
indicating a pattern of such conduct; (VII) the person's provision of material and misleading false contact information when
applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or
the person's prior conduct indicating a pattern of such conduct; (VIII) the person's registration or acquisition of multiple
domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time
of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such
domain names, without regard to the goods or services of the parties; and (IX) the extent to which the mark incorporated in
the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of section 43
[subsec. (c)(1) of this section.”)
29
15 U.S.C. 1125(d)(1)(B)
30
Data Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 627, 47 U.S.P.Q.2d 1672, 1998 FED App. 0241P (6th Cir.
1998) (Merritt, J., concurring: “When a domain name is used only to indicate an address on the Internet and not to identify
the source of specific goods and services, the name is not functioning as a trademark.”); Brookfield Communications, Inc. v.
West Coast Entertainment Corp., 174 F.3d 1036, 1052, 50 U.S.P.Q.2d 1545, 1555 (9th Cir. 1999) (the mere registration of a
designation as a domain name with the intent to use it commercially does not establish “use” of the designation as a
－180－
Meta Tags
In Brookfield Communications, Inc. v. West Coast Ent. Corp., the 9th Circuit held that
the Lanham Act barred the defendant from including in its metatags any term confusingly
similar with the plaintiff’s mark.31 However, because the normal rules of trademark law apply
to the use of a trademark as a metatags, the fair use defense applies so that if another's
trademark is used in a metatag solely to describe the defendant or defendant's goods or
services, there is no infringement.32
While search engines in the early days of the internet relied heavily on metatags to
find web sites, modern search engines make little if any use of metatags.33
Linking
A hypertext link allows a user to move directly from one web location to another by
using the mouse to click twice on the colored link. A hypertext link button must have some
text, indicator or symbol on it. If that symbol or word is someone else's trademark but the
context of use precludes the likelihood of confusion, then it is not an infringing use. 34
However, the addition of links to commercial websites may cause a non-infringing domain
name to become infringing.35
Framing
trademark in order to establish priority over a rival); Newborn v. Yahoo! Inc., 391 F. Supp.2d 181 (D.D.C. 2005) (the mere
registration of a domain name with a domain name registrar by itself does not confer trademark rights).
31
Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1065 (9th Cir. 1999).
32
Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1065 (9th Cir. 1999) (“The proper
term for the ‘motion picture enthusiast” is “Movie Buff,” which [defendant] certainly can use. It cannot, however, omit the
space.”); Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002) (affirming a nominative fair use defense to the
charge of infringement by use of the PLAYBOY marks in Welles' metatags. But the repetitive use of the mark “PMOY '81”
as “wallpaper” in defendant's web site was held to fail the nominative fair use defense.).; Bijur Lubricating Corp. v. Devco
Corp., 332 F. Supp. 2d 722 (D.N.J. 2004) (A seller of replacement parts can use the trademark of the original manufacturer in
its website metatags. "However, just as the Lanham Act permits Devco to inform customers through its website that it sells
replacements for Bijur parts, it allows Devco to provide that same information in its metatags.").
33
E. Goldman, Deregulating Relevancy in Internet Trademark Law, 54 Emory L. Jour. 507, 567 (2005) (“[A]lmost all search
engines have removed keyword metatags from their relevancy algorithms.”).
34
Knight-McConnell v. Cummins, 2004 WL 1713824 (S.D. N.Y. 2004) (defendant's website bitterly criticized plaintiff and
provided links to plaintiff's website. An allegation that defendant violated the Lanham Act by linking to plaintiff's website
without permission did not state a claim; “The mere appearance on a website of a hyperlink to another site will not lead a
web user to conclude that the owner of the site he is visiting is associated with the owner of the linked site.”).
35
Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir. 2004), cert. denied, 125 S. Ct. 1825 (U.S. 2005)
(Defendant Uzi Nissan used his website Nissan.com to advertise his Nissan Computer Co., but when Uzi Nissan placed links
to auto-related websites on his nissan.com website, infringement was found because defendant was then capitalizing on web
users initial interest confusion in thinking that this was a web site related to the NISSAN auto company.).
－181－
“Framing occurs when one webpage displays the content of another webpage within
its own borders. If the outer window is moved, the framed page moves with it simultaneously;
if the outer window is closed or minimized, the framed page closes or minimizes as well. The
purpose of framing is to create a single seamless presentation that integrates the content of the
two web pages into what appears to be single webpage.”36 “For example, assume that the
hypothetical company Alpha has a web site, with paid advertising, about legal news. Instead
of having a hyperlink to the legal news section of the Wall Street Journal, in this hypothetical,
Alpha enables the user to bring the Wall Street Journal web site to Alpha's site by framing it.
The user then looks at and reads the Wall Street Journal web page by looking through the
frame of the Alpha site, complete with the advertising messages in the frame of the Alpha site.
The user accesses and reads the Wall Street Journal, but it is the Alpha advertising that the
user sees.”37
Apart from the potential copyright issues, “framing” can be found to be a form of
either trademark38 or trade dress39 infringement.
Keyword Buying
“[S]ome search engines to “sell” or “auction” high placement on the list of hits for
certain keywords. Many users believe that every search engine lists the hits it finds in order of
relative importance. However, some search engines are “selling” high placements on the list
of hits.
Banner Advertising.”40 Although this practice may be perceived as deceptive41, courts have
found that a trademark owner cannot violate a trademark by buying purchasing higher
advertisement placement on a search engine.42 It should be noted that concerning the buying
36
Wells Fargo & Co. v. WhenU.com, Inc., 293 F.Supp.2d 734, 748 (E.D.Mich. 2003).
37
McCarthy § 25:70
38
Hard Rock Cafe Intern. (USA) Inc. v. Morton, 1999 WL 717995
(S.D.N.Y. 1999)(“Through framing, the Hard Rock Hotel Mark and the Tunes site are combined together into a single visual
presentation and the Hard Rock Hotel Mark is used to promote the sale of CDs by Tunes. Because the Tunes material appears
as a window within the original linking page, it is not clear to the computer user that she or he has left the Hard Rock Hotel
web site” and such framing is found to be passing off.)
39
Peri Hall & Associates, Inc. v. Elliot Institute for Social Sciences Research, 78 U.S.P.Q.2d 1414, 2006 WL 742912 (W.D.
Mo. 2006)(rival political group copied plaintiff's political web site: preliminary injunction ordered against both copyright
infringement and infringement of trade dress in the “look and feel” of plaintiff's website.).
40
McCarthy § 25:70.25
41
"A Matter of Trust: What Users Want from Web Sites," www.consumerwebwatch.com, April 16, 2002 (found that 60% of
U.S. Internet users had not heard or read that certain search engines were paid fees to list some sites more prominently than
others in their search results the study also found that after being informed and 80% said it was important for a search engine
to disclose that it is being paid to list some sites more prominently.).
42
Nissan Motor Co., Ltd. v. Nissan Computer Corp., 204 F.R.D. 460 (C.D. Cal. 2001) (“By way of analogy, the purchase of
－182－
and selling of high placement results from search engines, The Federal Trade Commission in
2002 sent letters to the major search engines recommending clear and prominent disclosure of
paid placement practices used by a search engine.43
Banner Advertisement
“Internet search engines such as Google sell "keywords" to companies. The result is
that when an Internet user enters such a keyword in Google's search engine, the search results
screen, in addition to the usual list of results, also shows "banner advertising" or "sponsored
links" to the companies that bought the right to have their link appear. For example, if car
makers FORD, CHEVROLET and CHRYSLER purchase the generic keywords "cars,"
"autos," "sedans" and "convertibles" from Google, advertising and links to the web sites of
those three companies will appear when the user searches using the keywords. Problems can
arise when the keywords sold consist of trademarks.”44
Playboy Enters., Inc. v. Netscape Commc’s Corp. presented an interesting set of facts.
Defendants Netscape and Excite required adult-oriented companies to link their ads to
Playboy’s trademarked words “playboy” and playmate.” Thus, when a use typed in
“playboy,” “playmate,” or one of the other listed terms, those companies’ banner ads would
appear. Playboy introduced evidence that the adult-oriented banner ads displayed on
defendants’ search results pages were graphic in nature and confusingly labeled or not labeled
at all. The district court refused to grant a preliminary injunction which would have banned
the search engines from selling to advertisers of sexually explicit web sites a list of 450
keywords, including “playboy” and “playmate.”45 The court later dismissed Playboy's case on
advertising in a periodical is not per se unlawful.”). affirmed in part and reversed in part, see later decision in: Nissan Motor
Co. v. Nissan Computer Corp., 378 F.3d 1002, 72 U.S.P.Q.2d 1078 (9th Cir. 2004), cert. denied, 125 S. Ct. 1825, 161 L. Ed.
2d 723 (U.S. 2005).
43
www.ftc.gov, Letter of June 27, 2002 from Heather Hippsley, Acting Associate Director, Division of Advertising Practices,
FTC, to Gary Ruskin, Executive Director, Commercial Alert. Commercial Alert had complained and requested an FTC
investigation of seven search engines.
44
McCarthy § 25:70.25; See, e.g. 800-JR Cigar, Inc. v. Goto.com, Inc. 437 F.Supp.2d 273 (D.N.J. 2006)(denying defendant’s
motion for summary judgment and finding evidence of actionable use where defendant accepted bids on the plaintiff’s
trademark from the plaintiff’s competitors, manipulated search results so that paid advertisers appeared before natural listings,
and recommended search terms to plaintiff’s competitors that included plaintiff’s marks); Google v. American Blind &
Wallpaper Factor, Inc., 74 U.S.P.Q..2d (BNA) 1385 (N.D.Cal. 2005)(denying Google’s motion to dismiss on trademark use
grounds and noting that the law regarding “trademark use” was “uncertain”) GEICO v. Google, Inc., 330 F.Supp.2d 700
(E.D.Va. 2004)(denying Google’s motion to dismiss on the basis of a lack of trademark use); but see, Rescuem Corp. v.
Google, Inc., 456 F.Supp.2d 393 (N.D.N.Y 2006)(granting Google’s motion to dismiss on the ground that Google did not
engage in trademark use because it did not place the trademark at issue on any goods or otherwise use the trademark in a way
that indicated origin).
45
Playboy Enterprises, Inc. v. Netscape Communications Corp., 55 F. Supp. 2d 1070, (C.D. Cal. 1999), aff'd, 202 F.3d 278
－183－
summary judgment, but the Ninth Circuit reversed finding triable issues of fact. 46 The
appellate court said that plaintiff Playboy had a viable argument that the defendant search
engine created initial interest confusion such that users were likely to be confused regarding
the sponsorship of the banner ads that were triggered by users who were searching for
plaintiff's trademarks. However, the Ninth Circuit repeatedly emphasized that if a banner
advertisement either “clearly identified its source" or "overtly compared” Playboy's products
to those advertised in the banner ad, “no confusion would occur.” 47 Thus the court
emphasized the crucial nature of the impact of the search engine's visual separation of banner
advertising from search results and the clarity and effectiveness of the labeling of the paid
banner advertising as “advertising.”48
Pop-Up Adds
“In 2003 a number of companies sued "WhenU.com" for placing computer programs
on computers that triggered "pop-up" ads of company A to appear when the computer user
goes to company B's web site. A "pop-up" ad appears on a computer screen to obscure and
cover most of the information on the screen. Defendant "WhenU.com" installed its
"SaveNow" program on users' computers. That program scanned the user's Internet activity.
The program delivered pop-up ads matched to the user's perceived interests.”49
WhenU.com was sued in federal court in New York by 1-800 Contacts, in Virginia by
U-Haul and in Michigan by Wells Fargo. The District Courts in Michigan and Virginia found
that defendant did not violate the Lanham Act because "WhenU.com" did not "use" the
(9th Cir. 1999) ("The words 'playboy' and 'playmate' are being used as words in the English language and not as trademarks
to identify a product or service. There should be no liability for that reason.") The Ninth Circuit later characterized the
argument that the words "playboy" and "playmate" were chosen for their primary meaning and not for their trademark
significance was “absurd.” Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1029, 69 U.S.P.Q.2d
1417 (9th Cir. 2004).
46
Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020, 69 U.S.P.Q.2d 1417 (9th Cir. 2004) (the
appellate court said that whether defendants Netscape and Excite were direct infringers or contributory infringers need not be
decided because they were "either directly or contributory liable." 354 F.3d 1020, 1024).
47
Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1025, 69 U.S.P.Q.2d 1417 (9th Cir. 2004).
See D.C. Glzaer & D.R. Dhamja, Revisiting Initial Interest Confusion on the Internet, 95 Trademark Rptr. 952, 972 (2005)
(“Where the source of the banner ads is clearly marked as distinct from the owner of the trademark used as a keyword, there
is no actionable harm and no initial interest confusion.”).
48
Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1030, 69 U.S.P.Q.2d 1417 (9th Cir. 2004)
(“[W]e note that we are not addressing a situation in which a banner advertisement clearly identifies its source with its
sponsor's name, or in which a search engine clearly identifies a banner advertisement's source… Doing so might eliminate the
likelihood of initial interest confusion that exists in this case.”(concurring Judge Berzon emphasized that: “Our opinion limits
the present holding to situations in which the banner advertisements are not labeled or identified.”)
49
McCarthy § 25:70.75
－184－
plaintiff's trademark.50 The Southern District of New York issued a preliminary injunction,
finding that defendant had "used" plaintiff's trademark to probably cause both initial interest
confusion and source confusion. 51 The Second Circuit, agreeing with the analysis of the
District Courts in Michigan and Virginia, reversed and remanded for dismissal of all
trademark infringement claims.52
(iii) One category of confusion on the Internet is “initial interest confusion.” Please
explain the details of initial interest confusion and the cases to which it applies. In
particular, please explain any major court decisions related to initial interest
confusion. What is the generally accepted idea on the relationship between initial
interest confusion and free-riding?
Please see an article titled “Initial Interest Confusion: Standing at the Crossroads of
Trademark law” 27 Cardozo L. Rev. 105 was helpful and we parsed from it below.
The benchmark of trademark infringement in the United States traditionally has been a
demonstration that consumers are likely to be confused by the use of a similar or identical
trademark to identify the goods or services of another.53 Trademark law in the United States
is primarily a statutory matter governed by the Lanham Act.54 Under the Lanham Act there
can be a finding of trademark infringement or unfair competition only if a likelihood of
confusion, mistake, or deception is demonstrated.55
Despite the statutory requirement of confusion, there is some debate as to who must be
confused by the defendant’s mark, the public in general, the consumer, or the purchaser.
Several courts have held that defendants can be held liable for trademark infringement absent
50
Wells Fargo & Co. v. WhenU.com, Inc., 293 F. Supp. 2d 734, 761 (E.D. Mich. 2003)( ("Plaintiffs' marks are neither
displayed or appear to be displayed on WhenU's windows, and the fact that WhenU advertisements appear on a computer
screen at the same time plaintiffs' web pages are visible in a separate window does not constitute a use in commerce of
plaintiffs' mark."); U-Haul Intern., Inc. v. WhenU.com, Inc., 279 F. Supp. 2d 723, 729, 68 U.S.P.Q.2d 1038, 1042 (E.D. Va.
2003) ("In sum, U-haul fails to establish that WhenU uses U-Haul's trademarks in commerce in violation of the Lanham Act
because (1) WhenU's pop-up window is separate and distinct from U-Haul's web site, (2) WhenU does not advertise or
promote U-Haul's trademarks through the use of U-Haul's URL or 'U-Haul' in its SaveNow directory, and (3) the SaveNow
program does not hinder or impede Internet users from accessing U-Haul's web site in such a manner that WhenU ‘uses’ UHaul's trademarks.")..
51
1-800 Contacts, Inc. v. WhenU.com, 309 F. Supp. 2d 467, 480 (S.D. N.Y. 2003),
52
1-800 Contacts, Inc. v. WhenU.com, 414 F.3d 400, (2d Cir. 2005).
53
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992)(“It is, of course, also undisputed that liability under § 43(a)
[15 U.S.C. § 1125] requires proof of the likelihood of confusion.”)
54
15 U.S.C. §§ 1051-1127 (2000); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 782 (1992).
55
15 U.S.C. § 1125
－185－
a showing of purchaser confusion.56 This has been especially true in decisions involving the
Internet.57 For example, courts have allowed findings of trademark infringement and unfair
competition simply because a defendant designed a website so that the website would appear
as a search result when another business's trademarked term was entered into a search
engine. 58 Some courts have also held defendants accountable for selling or displaying
sponsored advertising or pop-up advertisements that are linked to a search for a trademarked
term.59
The basis for these decisions is a doctrine called “initial interest confusion,” which
was first adopted over thirty years ago and has been vastly expanded in recent years with the
advent of the Internet. Courts have defined “initial interest confusion” as “confusion, which is
actionable under the Lanham Act, [which] occurs when a consumer is lured to a product by its
similarity to a known mark, even though the consumer realizes the true identity and origin of
the product before consummating a purchase.”60 Initial interest confusion is seen as a form of
56
Checkpoint Systems, Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270, 295 (3d 2001)(“Congress recognized
the relevance of initial interest confusion and its effect on a company's goodwill when it amended the Lanham Act in 1962. In
its original form, the Lanham Act only applied where the use of similar marks was “likely to cause confusion or mistake or to
deceive purchasers as to the source of origin of such goods or services.” Esercizio v. Roberts, 944 F.2d 1235, 1245 (6th
Cir.1991) (quoting 1946 Lanham Act.) (emphasis added). In 1962 Congress deleted the term “purchasers,” affording Lanham
Act protection where a mark is “likely to cause confusion or mistake or to deceive.” Id. Several courts have found the
amendment expanded the reach of the Lanham Act beyond mere purchasers to recognize pre-sale confusion as well as postsale confusion. See, e.g., id. (“Since Congress intended to protect the reputation of the manufacturer as well as to protect
purchasers, the Act's protection is not limited to confusion at the point of sale.”); Koppers Co. v. Krupp-Koppers GmbH, 517
F.Supp. 836, 843-44 (W.D.Pa.1981) (holding Congress intended to broaden the scope of protections with the 1962
Amendment to the Lanham Act); see also 3 McCarthy on Trademarks & Unfair Competition, § 23.7 (“In 1962, Congress
struck out language in the Lanham Act which required confusion, mistake or deception of ‘purchasers as to the source of
origin of such goods and services.’ Several courts have noted this expansion of the test of infringement and held that it
supports a finding of infringement when even non-purchasers are deceived.”). We agree with the view that Congress's
amendment of the Lanham Act in 1962 expanded trademark protection to include instances in which a mark creates initial
interest confusion).
57
Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, (Fed. Cir. 1992)( The legislative history
states that the word “purchasers” was deleted because “the provision actually relates to potential purchasers as well as to
actual purchasers.” Id. Therefore, we do not construe this deletion to suggest, much less compel, that purchaser confusion is
no longer the primary focus of the inquiry. Instead, we believe that, at least in the case of goods and services that are sold, the
inquiry generally will turn on whether actual or potential “purchasers” are confused.).
58
Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 464 (7th 2000); Brookfield Communications, Inc. v. West Coast
Entertainment Corp., 174 F.3d 1036, 1061 (9th 1999).
59
Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020, (9th 2004).
60
Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 464 (7th 2000).
－186－
free riding on the goodwill infringed trademark owner’s goodwill.61
Many federal circuits have adopted the initial interest confusion doctrine.62 Others
have either rejected it or not adopted it entirely.63
The greatest factors that courts examine when determining evidence of initial interest
confusion are the “relatedness of the goods offered and the level of care exercised by the
consumer.” 64 Other factors include traditional likelihood-of-confusion factors, namely 1.
61
Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F.3d 936, 945 (9th 2002)(“If a rogue company adopts as its domain
name a protected trademark and proceeds to sell goods similar to those offered by the trademark owner, it necessarily free
rides on the trademark owner's goodwill, and that rogue company benefits from increasing initial interest confusion as
consumers exercise lower levels of care in making their purchasing decisions.”).
62
See, e.g., Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 259 (2d Cir. 1987); Checkpoint Sys., Inc. v. Check
Point Software Techs., Inc., 269 F.3d 270, 294 (3d Cir. 2001); Elvis Presley Enters. v. Capece, 141 F.3d 188, 204 (5th Cir.
1998); PACCAR Inc. v. TeleScan Techs., L.L.C., 319 F.3d 243, 253 (6th Cir. 2003); Forum Corp. of N. Am. v. Forum Ltd., 903
F.2d 434, 442 n.2 (7th Cir. 1990); Playboy Enters. v. Netscape Commc'ns Corp., 354 F.3d 1020, 1024-25 (9th Cir. 2004);
Brookfield, 174 F.3d at 1062.
63
The First Circuit has never explicitly adopted initial interest confusion, and has suggested that trademark infringement
should not be found on the basis of confusion that occurs prior to the time of sale. See Beacon Mut. Ins. Co. v. OneBeacon Ins.
Group, 376 F.3d 8, 17 n.4 (1st Cir. 2004) (not addressing initial interest confusion issue raised below in reversing district
court decision); Hasbro, Inc. v. Clue Computing, Inc., 232 F.3d 1, 2 (1st Cir. 2000) (declining “to enter the ‘initial interest
confusion’ thicket”); Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1207-08 (1st Cir. 1993) (limiting
confusion analysis to time of purchase); see also Benchmark v. Benchmark Builders, Inc., No. CIV. 00-151-PH, 2000 WL
1886570, at *6 (D. Me. Dec. 29, 2000) (“[T]he First Circuit, while not expressly rejecting the doctrine of initial-interest
confusion, has indicated that confusion must be found likely at point of purchase to be actionable under Lanham Act.” (citing
Astra, 718 F. 2d at 1207)); Northern Light Tech., Inc. v. Northern Lights Club, 97 F. Supp. 2d 96, 113 (D. Mass. 2000)
(“[I]nitial confusion...is not cognizable under trademark law in the First Circuit.”); CCBN.com, Inc. v. c-call.com, Inc., 73 F.
Supp. 2d 106, 113 (D. Mass. 1999) (considering initial confusion irrelevant unless it translates into “actual confusion in
purchasing parties' products”). But see EMC Corp. v. Hewlett-Packard Co., 59 F. Supp. 2d 147, 150 (D. Mass. 1999)
(considering initial interest confusion theory).
Lamparello v. Falwell, 420 F.3d 309, (4th 2005)(“we have never adopted the initial interest confusion theory; rather, we have
followed a very different mode of analysis, requiring courts to determine whether a likelihood of confusion exists by
“examin[ing] the allegedly infringing use in the context in which it is seen by the ordinary consumer.” Anheuser-Busch, Inc. v.
L & L Wings, Inc., 962 F.2d 316, 319 (4th Cir.1992).); But see Sara Lee Corp. v. Kayser-Roth Corp., No. 6:92CV00460, 1992
WL 436279, at *24 (M.D.N.C. Dec. 1, 1992) (applying initial interest confusion in 4th Circuit).
The Eighth, Tenth, Eleventh, D.C., and Federal circuits have not decided the issue. See, e.g., Weiss Assocs. v. HRL Assocs.,
902 F.2d 1546, 1549 (Fed. Cir. 1990); Northland Ins. Cos. v. Blaylock, 115 F. Supp. 2d 1108, 1119-20 (D. Minn. 2000)
(noting that Eighth Circuit has not yet decided whether initial interest confusion doctrine applies under Lanham Act).
64
Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F.3d 936, 945 (9th 2002); Checkpoint Systems, Inc. v. Check Point
Software Technologies, Inc., 269 F.3d 270, 296 (3d 2001)(“Product relatedness and level of care exercised by consumers are
－187－
strength of the mark; 2. proximity of the goods; 3. similarity of the marks; 4. evidence of
actual confusion; 5. marketing channels used;6. type of goods and the degree of care likely to
be exercised by the purchaser; 7. defendant's intent in selecting the mark; and 8. likelihood of
expansion of the product lines.65
Please also see the latest case - Gregerson v. Vilana Financial, Inc. , 2006 WL 3227762 (D. Minn. Nov. 7, 2006)
(defendant’s motion for preliminary injunction); 2007 U.S. Dist. LEXIS 64960 (D. Minn. Aug. 31, 2007 (cross-motions for
summary judgment)
(iv) Enforcement of a registered trademark will be limited if the trademark owner
fails to use the trademark for a certain amount of time. On the Internet, however,
will a trademark owner be excused from nonuse as long as he/she publishes the
trademark on a website? Please explain, focusing on relevant decisions on
cancellation proceedings based on nonuse and court decisions.
The Lanham Act § 45 defines abandonment of a trademark by stating:
A mark shall be deemed to be “abandoned” if either of the following occurs:
(1) When its use has been discontinued with intent not to resume such use.
Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive
years shall be prima facie evidence of abandonment. “Use” of a mark means the bona
fide use of such mark made in the ordinary course of trade, and not made merely to
reserve a right in a mark.
Neither “bona fide use” nor “ordinary course of trade” is defined in the statute. Both
phrases, however, also appear in the statute's definition of “use in commerce,” which
provides:
The term "use in commerce" means the bona fide use of a mark in the ordinary
relevant factors in determining initial interest confusion.”).
65
Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F.3d 936, 942 (9th 2002); (“To evaluate the likelihood of confusion,
including initial interest confusion, the so-called Sleekcraft factors provide non-exhaustive guidance.”); AMF Inc. v.
Sleekcraft Boats, 599 F.2d 341, 346 (9th Cir.1979); See also Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269
F.3d 270, 297 (3d Cir.2001) (applying similar factors to initial interest confusion). Those factors are: (1) the similarity of the
marks; (2) the relatedness or proximity of the two companies' products or services; (3) the strength of the registered mark; (4)
the marketing channels used; (5) the degree of care likely to be exercised by the purchaser in selecting goods; (6) the accused
infringers' intent in selecting its mark; (7) evidence of actual confusion; and (8) the likelihood of expansion in product lines.
Sleekcraft, 599 F.2d at 346. This eight factor test is pliant, and the relative import of each factor is case specific. Brookfield,
174 F.3d at 1054.”)
－188－
course of trade, and not made merely to reserve a right in a mark. For purposes of this
Act, a mark shall be deemed to be in use in commerce-(1) on goods when-(A)it is placed in any manner on the goods or their containers or the
displays associated therewith or on the tags or labels affixed thereto, or if the
nature of the goods makes such placement impracticable, then on documents
associated with the goods or their sale, and
(B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or advertising of
services and the services are rendered in commerce, or the services are rendered in
more than one State or in the United States and a foreign country and the person
rendering the services is engaged in commerce in connection with the services.
Non-use for three consecutive years alone, however, constitutes prima facie evidence
of abandonment. Proof of three consecutive years of non-use thus creates a presumption – a
mandatory inference of intent not to resume use. “Once the presumption is triggered, the
legal owner of the mark has the burden of producing evidence of either actually use during the
relevant period or intent to resume use.”66
“Evaluating whether a use is in “the ordinary course of trade” is often an intensely
factual undertaking.”67 “[C]ourts should be guided in their consideration ... by factors ... such
as the genuineness and commercial character of the activity, the determination of whether the
mark was sufficiently public to identify or distinguish the marked service [or product] in an
appropriate segment of the public mind as those of the holder of the mark, the scope of the
[trademark] activity relative to what would be a commercially reasonable attempt to market
the service [or product], the degree of ongoing activity of the holder to conduct the business
using the mark, the amount of business transacted, and other similar factors which might
distinguish whether a service [or product] has actually been “rendered in commerce.”68
In Emergency One, Inc. v. American FireEagle, Ltd., intent to resume use was
evidenced by promotion of the brand on hats T-shirts, tote bags, souvenir nameplates, and
executives actively considering the use of the mark on fire trucks.69 In Electro Source, LLC v.
66
Emergency One, Inc. v. American FireEagle, Ltd., 228 F.3d 531, 56 U.S.P.Q.2d 1343 (4th Cir. 2000)(for the purpose of
preserving rights in a mark for fire trucks, a continuing use on one recycled fire truck in three years was only a token use that
did not count as use in the ordinary course of trade.).
67
Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc., 458 F.3d 931, 940 (9th Cir. 2006).
68
Id.
69
Id.; See also, Chance v. Pac-Tel Teletrac Inc., 242 F.3d 1151, 1159 (9th Cir.2001); Paramount Pictures Corp. v. White, 31
U.S.P.Q.2d 1768, 1774 n. 8 (T.T.A.B.1994) (the phrases “use in commerce” and “use in the ordinary course of trade” are
“flexible enough to encompass various genuine but less traditional trademark uses .... [and] reflect[ ] the possibility that use
may be interrupted due to special circumstances.' ... ‘[T]he Committee recognizes that the ordinary course of trade varies
－189－
Brandess-Kalt-Aetna Group, Inc., intent to resume use was evidenced by selling trademarkbearing-merchandise out of a car at trade shows at discount prices when at a time when the
small business was struggling and assigning the trademark-bearing-merchandise with the
goodwill of the trademark to a third party.70
(2) What are the typical requirements for establishing dilution on the Internet? Please
explain the historical transition of protection against dilution while referring to
court decisions that provide the basis for the interpretation of statutory provisions
and court decisions that have brought changes to the interpretation of legal
protection on the Internet.
The theory of dilution was first introduced into the United States in the 1920s and 1930s
through the writings and congressional testimony of Frank Schechter.71 Early attempts to
incorporate the dilution concept into federal trademark statutes failed to materialize.72 Until
1996, dilution law was based entirely upon state law because federal law did not recognize the
dilution doctrine.73 Furthermore, dilution law was almost entirely based, not on state common
law, but on antidilution statutes enacted in many states.74 The first federal antidilution law
was enacted in 1996 and was substantially revised in 2006. The federal antidilution law does
not replace the state laws, but adds to them another layer of law.75
Dilution, a weakening or reduction in the ability of a mark to clearly distinguish only one
source, can occur in two different dimensions: “blurring” and “tarnishment.” 76 The vast
majority of dilution cases involve dilution by “blurring.”77 Blurring occurs when another's
use of a mark creates “the possibility that the mark will lose its ability to serve as a unique
identifier of the plaintiff's product.”78 Tarnishment, on the other hand, occurs “when a famous
from industry to industry.’ ... Congress' intent that the revised definition still encompass genuine, but less traditional,
trademark uses must be made clear.' ”) (internal quotation marks omitted) (quoting congressional reports and testimony from
the legislative history of § 1127).
70
Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc., 458 F.3d 931 (9th Cir. 2006).
71
Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813 (1927), reprinted in 60 Trademark Rep. 334
(1970).
72
See Derenberg, The Problem of Trademark Dilution and the antidilution Statutes, 44 Cal. L. Rev. 439, 449 (1956).
73
McCarthy § 24:93.
74
McCarthy § 24:67.
75
McCarthy § 24:93.
76
McCarthy § 24:67; see also Restatement (Third) of Unfair Competition § 25 (1995); Playboy Enterprises, Inc. v. Welles,
279 F.3d 796, 805 (9th Cir. 2002)..
77
McCarthy § 24:67.
78
Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1326 n. 7 (9th Cir.1998).
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mark is improperly associated with an inferior or offensive product or service.”79 Dilution by
“tarnishment” is a much rarer and unusual situation.80 Also, since the rise of the popularity of
the Internet, case law has applied the dilution doctrine to ban a new form of trademark misuse,
known as “cybersquatting” although since the enactment of the Anti-Cybersquatting
Protection Act of 1999, this newer, third type of dilution has become short-lived.81 In fact, it’s
probable that a cybersquatting claim may no longer be brought under the federal anti-dilution
statute of 15 U.S.C. § 1125(c).82
Because the theory of dilution is almost an ephemeral, theoretical concept, it is exceedingly
difficult to explain and understand and misunderstanding is rampant.83
Blurring
“For dilution to occur, the relevant public must make some connection or association
between the mark and both parties. But that connection or association is not the kind of
mental link between the parties that triggers the classic likelihood of confusion test. Rather,
the assumption is that the relevant public sees the junior user's use, and intuitively knows,
because of the context of the junior user's use, that there is no connection between the owners
of the respective marks. However, even with those who perceive distinct sources and no
affiliation, the dilution theory says that the ability of the senior user's mark to serve as a
unique identifier of the plaintiff's goods or services may be weakened because the relevant
public now also associates that designation with a new and different source. Hence, the
unique and distinctive link between the plaintiff's mark and its goods or services is
‘blurred.’” 84 In Playboy Enters., Inc. v. Welles, the Ninth Circuit described the harm of
blurring dilution as, “dilution works its harm not by causing confusion in consumers' minds
79
Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1326 n. 7 (9th Cir.1998).
80
McCarthy § 24:67.
81
McCarthy §§ 24:67; 24:71; 24:77.
82
Porsche Cars North America, Inc. v. Porsche.Net, 302 F.3d 248, 64 U.S.P.Q.2d 1248 (4th Cir. 2002) (“[Trademark owner]
Porsche may not seek possession of any offending domain name through a trademark-dilution claim under 15 U.S.C.A. §
1125(c) and 28 U.S.C.A. § 1655.”); Ford Motor Co. v. Greatdomains.Com, Inc., 177 F. Supp. 2d 635, 653-656, 177 A.L.R.
Fed. 637 (E.D. Mich. 2001) (disagreeing with the courts that held that cybersquatting was a form of dilution. “Thus,
cybersquatting claims must be brought, if at all under the ACPA.”).
83
McCarthy § 24:67; J.T. McCarthy, Proving a Trademark Has Been Diluted: Theories or Facts?, 41 Houston L. Rev. 713,
726 (2004)(“No part of trademark law that I have encountered in my forty years of teaching and practicing IP law has created
so much doctrinal puzzlement and judicial incomprehension as the concept of “dilution” as a form of intrusion on a
trademark. It is a daunting pedagogical challenge to explain even the basic theoretical concept of dilution to students,
attorneys, and judges. I have tried mightily. I believe that few can successfully explain it without encountering blank stares of
incredulity or worse, nods of understanding which mask and conceal puzzlement and misconceptions. Even the U.S. Supreme
Court has failed to grasp the contours of the doctrine.”)
84
McCarthy § 24:72.
－191－
regarding the source of a good or service, but by creating an association in consumers' minds
between a mark and a different good or service.”85
Restatement (Third) of Unfair Competition states:
“In order for such dilution to occur, prospective purchasers must make a mental
connection between the plaintiff's mark and the designation used by the defendant.
The connection, however, is not that which serves as the basis of liability for
trademark infringement—the mistaken belief that the plaintiff is in some way
associated with defendant's goods—but rather is the accurate recognition that a mark
associated with the plaintiff is now also in use as an identifying symbol by another.”86
“The underlying rationale of the dilution doctrine is that the gradual diminution or
whittling away of the value of a trademark, resulting from use by another, constitutes an
invasion of the senior user's property right and good will in his mark and gives rise to an
independent wrong. The wrong is dependent neither upon a showing of competitive
relationship, nor that the goods are related, nor of a likelihood of confusion.”87 In attempting
identify the injury caused by dilution, a Massachusetts federal court stated:
“The risk of detraction may be a risk of an erosion of the public's identification of this
very strong mark with the plaintiff alone, thus diminishing its distinctiveness,
uniqueness, effectiveness and prestigious connotations.”88
“The courts, in an attempt to articulate the exact nature of “dilution,” have identified
several different dimensions of the doctrine. Such dimensions have been labeled as: protection
against “a gradual whittling away” of distinctiveness caused by a “cancer-like growth” of use
on dissimilar products or services; 89 protection against a whittling away of the “unique
character” of the mark;90 protection against a use that “corrodes the senior user's interest in
85
Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002)
86
Restatement (Third) of Unfair Competition § 25, comment f (1995).
87
McCarthy § 24:73.
88
Tiffany & Co. v. Boston Club, Inc., 231 F. Supp. 836, 844, 143 U.S.P.Q. 2 (D. Mass. 1964) (TIFFANY jewelers v.
TIFFANY restaurant).
89
Allied Maintenance Corp. v. Allied Mechanical Trades, Inc., 42 N.Y.2d 538, 399 N.Y.S.2d 628, 369 N.E.2d 1162, 198
U.S.P.Q. 418 (1977).
90
Community Federal Sav. & Loan Ass'n v. Orondorff, 678 F.2d 1034, 215 U.S.P.Q. 26 (11th Cir. 1982); Toys “R” Us, Inc. v.
Canarsie Kiddie Shop, Inc., 559 F. Supp. 1189, 217 U.S.P.Q. 1137 (E.D.N.Y. 1983) (finding dilution in addition to traditional
likelihood of confusion, court found that defendant's usage was likely to “blur” plaintiff's product identification, and was a
“whittling away” by a proliferation of similar marks); Academy of Motion Picture Arts & Sciences v. Creative House
Promotions, Inc., 944 F.2d 1446, 19 U.S.P.Q.2d 1491, 1500 (9th Cir. 1991) (“The doctrine is designed to protect against the
－192－
the trademark by blurring its product identification”;91 protection of “the selling power that a
distinctive mark or name with favorable associations has engendered for a product”; 92
protection against dilution of the mark which was compared to diluting a beverage with
water; 93 protection against weakening of the “unique and distinctive link” to a particular
product;94 protection against a “blurring” of a distinct mental image caused by “dissonant”
usage;95 protection against a “proliferation of borrowings” that are so numerous as to “deprive
the mark of its distinctiveness and hence impact”; 96 protection against “diminution of
plaintiff's name as an advertising tool”;97 and against an erosion of the “magic” of the status
the mark signifies.98”99
Anti-blurring statutes apply to the Internet as much as they do to other forms of
advertising and commerce.100 In Playboy Enterprises, Inc. v. Welles, Welles, a 1981 Playboy
Playmate of the Year, prominently advertised her past distinction on her website. Because
Welles was no unaffiliated with Playboy, Playboy complained of four different uses of its
trademarked terms on Welles' website, namely (1) the terms “Playboy” and “Playmate” in the
metatags of the website; (2) the phrase “Playmate of the Year 1981” on the masthead of the
website; (3) the phrases “Playboy Playmate of the Year 1981” and “Playmate of the Year
1981” on various banner ads, which may be transferred to other websites; and (4) the repeated
gradual ‘whittling away’ of a trademark's value.” OSCAR award statuette found both infringed upon by likely confusion as
well as diluted.).
91
Ameritech, Inc. v. American Information Technologies Corp., 811 F.2d 960, 1 U.S.P.Q.2d 1861 (6th Cir. 1987) (Dilution is
use which causes a “gradual diminution in the mark's distinctiveness, effectiveness and, hence, value. This kind of
infringement corrodes the senior user's interest in the trademark by blurring its product identification or by damaging positive
associations that have attached to it.” Case remanded for consideration of an Ohio common law dilution charge.).
92
Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 217 U.S.P.Q. 658 (2d Cir. 1983).
93
R.J. Corr Naturals, Inc. v. Coca-Cola Co., 1997 WL 223058 (N.D. Ill. 1997) (“Dilution, unlike confusion, occurs when a
mark is employed by multiple users for different products. The dilution occurs much as if one poured a glass of water into a
glass of pop. The product is then spread too thin and is of less value.” No dilution found here because mark was not famous.).
94
Luigino's, Inc. v. Stouffer Corp., 170 F.3d 827, 50 U.S.P.Q.2d 1047 (8th Cir. 1999) (quoting from treatise at § 24:70).
95
Exxon Corp. v. Exxene Corp., 696 F.2d 544, 217 U.S.P.Q. 215 (7th Cir. 1982). See Sally Gee, Inc. v. Myra Hogan, Inc.,
699 F.2d 621, 217 U.S.P.Q. 658 (2d Cir. 1983) (discussing a “blurring” theory of dilution).
96
Illinois High School Ass'n v. GTE Vantage, Inc., 99 F.3d 244, 40 U.S.P.Q.2d 1633, 1635 (7th Cir. 1996) (dilution by
blurring can consist of “a proliferation of borrowings that, while not degrading the original seller's mark, are so numerous as
to deprive the mark of its distinctiveness and hence impact”).
97
Wedgwood Homes, Inc. v. Lund, 294 Or. 493, 659 P.2d 377, 222 U.S.P.Q. 446 (1983). See Dreyfus Fund, Inc. v. Royal
Bank of Canada, 525 F. Supp. 1108, 213 U.S.P.Q. 872 (S.D.N.Y. 1981).
98
Augusta Nat’l, Inc. v. Northwestern Mut. Life Ins. Co., 193 U.S.P.Q. 210 (S.D. Ga. 1976) (MASTERS golf tournament).
99
McCarthy § 24:73.
100
Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1326-27 (9th Cir.1998).
－193－
use of the abbreviation “PMOY ′81” as the watermark on the pages of the website.101
The Ninth Circuit found that Welles’ use of the Playboy marks were merely
nominative and “[a] nominative use, by definition, refers to the trademark holder's product. It
does not create an improper association in consumers' minds between a new product and the
trademark holder's mark.”102 The Court found that “[w]hen Welles refers to her title, she is in
effect referring to a product of PEI's. She does not dilute the title by truthfully identifying
herself as its one-time recipient.”103 But, the court found “one exception to the above analysis
in this case is Welles' use of the abbreviation “PMOY” on her wallpaper. Because we
determined that this use is not nominative, it is not excepted from the anti-dilution provisions”
and remanded the case back to the district court to determine whether PMOY was a
trademarked term entitled to protection.104
The 2006 Trademark Dilution Revision Act was motivated by the U.S. Supreme
Court’s 2003 decision in Moseley v. Victoria’s Secret Catalogue, Inc. In Moseley, the
Supreme Court held that violation of the 1996 federal antidilution law required a finding of
actual dilution to the famous mark.105 One of the key reasons for the 2006 revisions to the
FTDA was to replace the actual dilution requirement with a softened requirement that only a
“likelihood of dilution” need be proven.106
According to McCarthy, “the elements of a prima facie case for an injunction against
dilution by blurring under the TDRA 2006 version of federal Lanham Act § 43(c) can be
summarized as follows. Under § 43(c), plaintiff must plead and prove that:
1. the plaintiff is the owner of a mark which qualifies as a “famous” mark as measured
by the totality of the four factors listed in § 43(c)(2),
2. the defendant is making use of the challenged designation as a mark or trade name,
3. in interstate or international commerce,
4. and defendant's use began after the plaintiff's mark became famous,
5. and, considering the six factors listed in § 43(c)(2)(B), defendant's use is likely to
cause dilution by blurring by creating
6. a likelihood of association with plaintiff's famous mark arising from its similarity to
the plaintiff's famous mark,
7. that is likely to impair the distinctiveness of the plaintiff's famous mark.”107
101
Playboy Enterprises, Inc. v. Welles, 279 F.3d 796, 800 (9th Cir. 2002).
102
Id. at 806.
103
Id.
104
Id.
105
Moseley v. Victoria Secret Catalogue, Inc., 537 U.S. 418 (2003).
106
House Judiciary Committee Report H.R. 109-23 on H.R. 683 (109th Cong. 1st. Sess) (March 17, 2006) p. 5. Available at
http://www.house.gov/judiciary; 2005 WL 638693. (“The Mosley standard creates an undue burden for trademark holders
who contest diluting uses and should be revised.”).
107
McCarthy § 24:99; 15 U.S.C.A. § 1125(c)(The 2006 legislation sets out a multi-factor test for dilution by blurring); see
－194－
In Horphag Research Ltd. v. Garcia, the Ninth Circuit applies the new 2006
Trademark Dilution Revision Act stating, “The test for trademark dilution, as modified by
Moseley, requires the trademark owner to show (a) that its mark is famous; (b) that the junior
user has made commercial use of the famous mark; (c) that the junior user began using the
mark after it had became famous; and (d) that such use caused actual dilution.”108
Recent cases finding dilution by blurring
• Nike, Inc. v. Nikepal Int'l, Inc. , 2007 WL 2782030 (E.D. Cal. Sept. 18, 2007)
• Horphag Research Ltd. v. Garcia , Civ. A. No. 8:99-cv-00816 (C.D. Cal. Aug. 29,
2001) (trial), aff’d in part and vacated and remanded in part, 337 F.3d 1036 (9th Cir.
2003); Civ. A. No. 5:00-cv-00372 (C.D. Cal. Dec. 29, 2003) (plaintiff’s motion for
summary judgment), aff’d 475 F.3d 1029 (9th Cir. 2007) (upholding district court’s
reconsideration of dilution claim in light of Moseley decision)
• Choice Hotels Int’l, Inc. v. Wright , 355 B.R. 192 (Bankr. C.D. Cal. 2006)
• Ford Motor Co. v. Cross , 441 F.Supp.2d 837 (E.D. Mich. 2006)
• Recent cases finding NO dilution by blurring
• S&L Vitamins, Inc. v. Australian Gold, Inc. , 2007 U.S. Dist. LEXIS 74712 (E.D.N.Y.
Sept. 30, 2007)
• Hickory Farms, Inc. v. Snackmasters , 2007 WL 1576124 (N.D. Ill. May 29, 2007)
• Hamzik v. Zale Corp. , 2007 WL 1174863 (N.D. N.Y. April 19, 2007)
•
•
Google Inc. v. American Blind and Wallpaper Factory, Inc. , 74 U.S.P.Q. 2d 1385
(N.D. Cal. 2007) (Google’s motion to dismiss); U.S. Dist. LEXIS 32450 (N.D. Cal.
Apr. 18, 2007) (Cross-motion for summary judgment)
BidZirk, LLC v. Smith , 2007 WL 626161 (D.S.C. April 10, 2006), aff’d, 2007 wl
664302 (4th Cir. March 6, 2007)
Tarnishment
Tarnishment might occur where the effect of the defendant's unauthorized use is to
dilute by tarnishing or degrading positive associations of the mark and thus, to harm the
reputation of the mark. The Second Circuit observed that: “The sine qua non of tarnishment is
a finding that plaintiff's mark will suffer negative associations through defendant's use.”
Judge Cedarbaum observed that: “The essence of tarnishment therefore is . . . the
displacement of positive with negative associations of the mark that, like a claim for blurring,
reduces the value of the mark to the trademark owner.”
also Barton Beebe, A Defense of the New Federal Trademark Antidilution Law, 16 Fordham Intell. Prop. Media & Ent. L.J.
1143, 1171-72 (2007)(arguing that the 2006 legislation in general represents a sensible advancement.).
108
Horphag Research Ltd. v. Garcia, 475 F.3d 1029, 1036 (9th Cir. 2007).
－195－
The First Circuit has defined dilution by tarnishment in terms of impairing consumer
associations between the mark and the reputation signified by the mark:
A trademark is tarnished when consumer capacity to associate it with the appropriate products
or services has been diminished. The threat of tarnishment arises when the goodwill and
reputation of a plaintiff's trademark is linked to products which are of shoddy quality or which
conjure associations that clash with the associations generated by the owner's lawful use of
the mark.
The Restatement explained the damage done by tarnishment in terms of undermining
or damaging the “positive associations” the trademark evokes:
To prove a case of tarnishment, the prior user must demonstrate that the subsequent use is
likely to come to the attention of the prior user's prospective purchasers and that the use is
likely to undermine or damage the positive associations evoked by the mark.
Example of Dilution by Tarnishment involving Internet.
•
•
•
•
•
Hasbro, Inc. v. Internet Entertainment Group, Ltd., 40 U.S.P.Q.2d 1479, 1996 WL
84853 (W.D. Wash. 1996) (the famous mark CANDYLAND for a children's board
game was held diluted by tarnishment by “candyland.com” for an internet web site
showing sexually explicit pictures);
Toys “R” Us, Inc. v. Akkaoui, 40 U.S.P.Q.2d 1836, 1996 WL 772709 (N.D. Cal. 1996)
(the famous mark TOYS ‘R US was held tarnished by use of ADULTS R US as a
domain name for an internet site for the sale of adult sexual products:
“adultsrus.com”);
Kraft Foods Holdings, Inc. v. Helm, 205 F. Supp. 2d 942, 63 U.S.P.Q.2d 1353 (N.D. Ill.
2002) (Injunction against use of KING VELVEEDA” on adult content website as
dilution by tarnishing VELVEETA for cheese products).
Mattel Inc. v. Jcom Inc., 48 U.S.P.Q.2d 1467, 1998 WL 766711 (S.D. N.Y. 1998).
Accord: Mattel, Inc. v. Internet Dimensions Inc., 55 U.S.P.Q.2d 1620, 2000 WL
973745 (S.D. N.Y. 2000) (The famous mark BARBIE for dolls was held to be diluted
by tarnishment by the use of BARBIE's PLAYHOUSE on defendant's web site
offering a female model who engaged in a sexually explicit video conference.
Antidilution Act is violated by a defendant who used barbiesplaypen.com as the
domain name of an adult entertainment website.” The diversion of Internet users to a
site presenting pornographic images, if viewed by a consumer hoping to view
information about one of Mattel's products, may well tarnish the image of Mattel's
BARBIE products in the minds of those consumers.”);
America Online, Inc. v. IMS, 24 F. Supp. 2d 548, 48 U.S.P.Q.2d 1857, 107 A.L.R.5th
781 (E.D. Va. 1998) (the famous mark AOL was held diluted by tarnishment by use in
－196－
junk e-mail “spam” advertisements. There is “a strong likelihood of dilution by
negative associations that AOL subscribers make between AOL and [defendant's] junk
e-mailing practices. . . . AOL receives more than 100,000 complaints a day regarding
junk e-mail generally and can point to more than 50,000 complaints aimed at
[defendant's] spamming.”).
Doubt that the 1996 FTDA Included Tarnishment.
The 1996 federal statute did not include the wording “likelihood of injury to business
reputation” that the 1964 Model Bill contained and that several state antidilution statutes
contain. As a result of that omission, it was argued that dilution by tarnishment was not
encompassed by the Federal Act. But the legislative history of the 1996 federal antidilution
law seemed clear that Congress did intend the statute to prevent tarnishing uses of famous
trademarks. In the 2003 Victoria's Secret case, Justice Stevens, speaking for the Supreme
Court, speculated in dictum that dilution by tarnishment might not be within the 1996 federal
law at all. He favored the position that dilution by tarnishment was probably not encompassed
by the Federal Act because the 1996 federal statute did not include the wording “likelihood of
injury to business reputation” that several state antidilution statutes contain. This speculation
by the Supreme Court led directly to the clear and explicit inclusion of dilution by
tarnishment in the text of the 2006 Trademark Law Dilution Act. (TDRA)
Dilution by Tarnishment is Explicit in the 2006 Federal Antidilution Act.
The 2006 version of the antidilution law (TDRA) fills in the statutory gap of “dilution
by tarnishment” noted by the U.S. Supreme Court in the Victoria's Secret case. The statute
explicitly mentions the phrase “dilution by tarnishment” and defines it as an “association
arising from the similarity between a mark or trade name and a famous mark that harms the
reputation of the famous mark.” The concept of a challenged junior use that is likely to harm
the reputation of a famous mark is a new legal concept introduced by the 2006 revision. It is
assumed that as the courts in a case-by-case process develop a new set of criteria to define and
contain this open-ended concept, they will look to precedent under the previous federal statute
as well as to existing case law under the state antidilution laws which refer to a “likelihood of
injury to business reputation.”
It must be kept in mind that to be included within the 2006 TDRA, the accused use,
whether challenged as blurring or tarnishment, must be a trademark use. Thus, an unflattering
or denigrating use of mark in a political commentary, novel or motion picture is not a use as a
mark for the expressive work and cannot be challenged as a tarnishing use under the FTDA,
even if it does not fit within the statutory defenses.
Cited from McCarthy on Trademark §24:89
Recent cases finding dilution by tarnishment – No good cases from 2007 is found.
－197－
Recent cases finding dilution by tarnishment
• BidZirk, LLC v. Smith , 2007 WL 626161 (D.S.C. April 10, 2006), aff’d, 2007 wl
664302 (4th Cir. March 6, 2007)
• Ultimate Living Int’l, Inc. v. Miracle Greens Supplements, Inc. , 2007 WL 14258 (N.D.
Tex. Jan 3, 2007)
(i) While provisions for preventing dilution were introduced in the Lanham Act of
1996, these provisions are regarded as having advanced the conventional
provisions for preventing confusion to the next level. Please explain how these
provisions are applied to the protection of trademarks on the Internet by citing
actual court decisions.
“Prior to enactment of the 1996 federal antidilution statute, neither the courts nor the
Patent and Trademark Office used the dilution theory under the terms of the Lanham Act.109
The only Lanham Act claims possible at that time all required pleading and proof of a
likelihood of confusion.110 Nothing less than likelihood of confusion would suffice to prove
infringement of a trademark under federal law. Accordingly, until 1996, dilution alone did not
constitute infringement under federal law of a federally registered or unregistered mark.111”112
The 2006 Trademark Dilution Revision Act was motivated by the U.S. Supreme Court’s
2003 decision in Moseley v. Victoria’s Secret Catalogue, Inc. In Moseley, the Supreme Court
held that violation of the 1996 federal antidilution law required a finding of actual dilution to
the famous mark. 113 One of the key reasons for the 2006 revisions to the FTDA was to
replace the actual dilution requirement with a softened requirement that only a “likelihood of
dilution” need be proven.114
109
Avon Shoe Co. v. David Crystal, Inc., 171 F. Supp. 293, 299 (S.D. N.Y. 1959), judgment aff'd, 279 F.2d 607 (2d Cir.
1960); Jean Patou, Inc. v. Jacqueline Cochran, Inc., 201 F. Supp. 861 (S.D. N.Y. 1962), judgment aff'd, 312 F.2d 125 (2d Cir.
1963); Geo. A. Dickel Co. v. General Mills, Inc., 317 F.2d 954, 956 (1963); Mister Donut of America, Inc. v. Mr. Steak, Inc.,
150 U.S.P.Q. 712, 1966 WL 7293 (T.T.A.B. 1966); The Coca-Cola Company v. Fanta, 155 U.S.P.Q. 276, 1967 WL 7267
(T.T.A.B. 1967).
110
Lanham Act § 2(d), 15 U.S.C.A. § 1052(d); Lanham Act § 32(1)(a), 15 U.S.C.A. § 1114(1)(a); Lanham Act § 43(a), 15
U.S.C.A. § 1125(a).
111
R. G. Barry Corp. v. Mushroom Makers, Inc., 612 F.2d 651, 204 U.S.P.Q. 521 (2d Cir. 1979), related proceeding, 208
U.S.P.Q. 824 (S.D.N.Y. 1980); Community Federal Sav. and Loan Ass'n v. Orondorff, 678 F.2d 1034, n.7, 215 U.S.P.Q. 26,
n.7 (11th Cir. 1982). See Girl Scouts of U. S. of America v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 1233, 163
U.S.P.Q. 505 (S.D. N.Y. 1969); Dawn v. Sterling Drug, Inc., 319 F. Supp. 358, 167 U.S.P.Q. 721 (C.D. Cal. 1970).
112
McCarthy § 24:94.
113
Moseley v. Victoria Secret Catalogue, Inc., 537 U.S. 418 (2003).
114
House Judiciary Committee Report H.R. 109-23 on H.R. 683 (109th Cong. 1st. Sess) (March 17, 2006) p. 5. Available at
－198－
Little more than a year has passed since the Trademark Dilution Revision Act (TDRA)
was enacted on October 6, 2006. Since that time, the application of the factors outlined by
that statute has been developing process, although this has already been applied to Internet
aspects of trademark law.
According to McCarthy, “the elements of a prima facie case for an injunction against
dilution by blurring under the TDRA 2006 version of federal Lanham Act § 43(c) can be
summarized as follows. Under § 43(c), plaintiff must plead and prove that:
1. the plaintiff is the owner of a mark which qualifies as a “famous” mark as measured
by the totality of the four factors listed in § 43(c)(2),
2. the defendant is making use of the challenged designation as a mark or trade name,
3. in interstate or international commerce,
4. and defendant's use began after the plaintiff's mark became famous,
5. and, considering the six factors listed in § 43(c)(2)(B), defendant's use is likely to
cause dilution by blurring by creating
6. a likelihood of association with plaintiff's famous mark arising from its similarity to
the plaintiff's famous mark,
7. that is likely to impair the distinctiveness of the plaintiff's famous mark.”115
Recent Cases
In the recent decision Perfumebay.Com Inc., a California Corp. v. EBAY, Inc., decided
November 5, 2007, the Ninth Circuit found that the district court erred in not fully
considering the strength, distinctiveness, and fame of the eBay mark in making its dilution
finding.116 Seeking a declaratory injunction, the online perfume seller Perfumebay.com When
determining whether Perfumebay.com, an online perfume seller, had diluted the eBay mark,
the Ninth Circuit applied a four-factor test used before in Avery Dennison Corp. v. Sumpton,
namely “[I]njunctive relief is available under the Federal Trademark Dilution Act if a plaintiff
can establish that (1) its mark is famous; (2) the defendant is making commercial use of the
mark in commerce; (3) the defendant's use began after the plaintiff's mark became famous;
and (4) the defendant's use presents a likelihood of dilution of the distinctive value of the
mark.”117 Stating that the district court had misapplied the Seventh Circuit’s Eli Lilly test, the
Ninth Circuit concluded, “In sum, eBay possesses a famous and widely known mark, and has
http://www.house.gov/judiciary; 2005 WL 638693. (“The Mosley standard creates an undue burden for trademark holders
who contest diluting uses and should be revised.”).
115
McCarthy § 24:99; 15 U.S.C.A. § 1125(c)(The 2006 legislation sets out a multi-factor test for dilution by blurring); see
also Barton Beebe, A Defense of the New Federal Trademark Antidilution Law, 16 Fordham Intell. Prop. Media & Ent. L.J.
1143, 1171-72 (2007)(arguing that the 2006 legislation in general represents a sensible advancement.).
116
Perfumebay.Com Inc., a California Corp. v. EBAY, Inc., --- F.3d ----, 2007 WL 3243998
(9th Cir. 2007).
117
Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 874 (9th Cir.1999)
－199－
expended considerable resources in attaining this status. In applying Eli Lilly, it does not
appear that the district court fully considered the highly distinctive qualities of eBay's famous
mark. Thus, the district court erred, as “the senior mark is so highly distinctive that consumers
are likely to view a junior mark that is a bit different as essentially the same as the senior
one.”118
In Audi AG v. D'Amato, decided November 27, 2006, the Sixth Circuit used a fivefactor test to determine whether D’Amato diluted the Audi mark by maintaining the
aidisport.com website and selling “Audi Sport” paraphernalia stating, “We use a five-point
test to determine whether a plaintiff will succeed in a federal dilution claim. Audi must show
that its trademark is (1) famous and (2) distinctive, and that D'Amato's use of the mark (3)
was in commerce, (4) began after Audi's mark became famous, and (5) “cause[d] dilution of
the distinctive quality” of Audi's mark.”119
In examining each of the five-factors, the Sixth Circuit found:
“It is clear from the record that Audi's trademarks, on which Audi has spent
millions of dollars and which are known worldwide, satisfy the first two factors.
Further, because the website sold merchandise, email subscriptions, and advertising
space, all with Audi's logo, the third factor is satisfied. The fourth factor is met, as
there is no dispute that www. audisport.com came after the Audi Trademarks. As for
the fifth element-whether the junior mark dilutes the senior mark-the Supreme Court
has noted that “direct evidence of dilution such as consumer surveys will not be
necessary if actual dilution can reliably be proven through circumstantial evidence-the
obvious case is one where the junior and senior marks are identical.” Moseley v. V.
Secret Catalogue, 537 U.S. 418, 434 (2003). Here, D'Amato used identical trademarks
on the goods and services on his website, thus fulfilling the fifth factor. Moreover, it is
of no moment that D'Amato did not profit from www. audisport.com; a plaintiff need
not prove a defendant made sales or profited in order to succeed in proving
dilution.”120
In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, decided by the Fourth
Circuit on November 13, 2007, the defendant produced dog accessories with “Chewy
Vuiton” and “CV” labels and designs and colors that Louis Vuitton alleged, inter alia, diluted
Louis Vuitton’s marks. Both plaintiff and defendant, along with other channels, marketed
their products on the Internet. In applying the 2006 Trademark Dilution Revision Act, the
Fourth Circuit first states:
“Thus, to state a dilution claim under the TDRA, a plaintiff must show:
118
Perfumebay.Com Inc., a California Corp. v. EBAY, Inc., --- F.3d ----, 2007 WL 3243998
(9th Cir. 2007)(quoting Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 907 (9th Cir.2002)).
119
Audi AG v. D'Amato, 469 F.3d 534, 547 (6th Cir. 2006).
120
Id.
－200－
(1) that the plaintiff owns a famous mark that is distinctive;
(2) that the defendant has commenced using a mark in commerce that allegedly
is diluting the famous mark;
(3) that a similarity between the defendant's mark and the famous mark gives
rise to an association between the marks; and
(4) that the association is likely to impair the distinctiveness of the famous
mark or likely to harm the reputation of the famous mark.”121
The Fourth Circuit also clarified the TDRA and distinguished the Supreme Court
holding of Moseley, stating, “In proving a dilution claim under the TDRA, the plaintiff need
not show actual or likely confusion, the presence of competition, or actual economic injury.
See 15 U.S.C.A. § 1125(c)(1).”122
Later in Louis Vuitton, the Fourth Circuit outlines the factors to determine whether a
junior mark is likely to dilute a famous mark through blurring, namely, “the TDRA directs the
court to consider all factors relevant to the issue, including six factors that are enumerated in
the statute:
(i) The degree of similarity between the mark or trade name and the famous
mark.
(ii) The degree of inherent or acquired distinctiveness of the famous mark.
(iii) The extent to which the owner of the famous mark is engaging in
substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name intended to create an
association with the famous mark.
(vi) Any actual association between the mark or trade name and the famous
mark.
Not every factor will be relevant in every case, and not every blurring claim will require
extensive discussion of the factors.”123
Finding that the defendant, Haute Diggity Dog, designed a pet chew toy to imitate,
parody and suggest, but not use, the marks of a high-fashion LOUIS VUITTON handbag, the
Fourth Circuit concluded that the defendant’s dog toy did not dilute the Louis Vuitton mark.124
Another recent (Post October 6, 2006) cases involving the TDRA and the internet
include:
The Freecycle Network, Inc. v. Oey, --- F.3d ----, 2007 WL 2781902 (9th Cir. 2007); .
121
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, --- F.3d ----, 2007 WL 3348013 (4 th Cir. 2007).
122
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, --- F.3d ----, 2007 WL 3348013 (4 th Cir. 2007).
123
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, --- F.3d ----, 2007 WL 3348013 (4 th Cir. 2007); 15 U.S.C. §
1125(c)(2)(B).
124
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, --- F.3d ----, 2007 WL 3348013 (4 th Cir. 2007).
－201－
(ii) The 2006 revision of the Lanham Act relaxed the requirement for dilution from
the presence of actual dilution to the presence of a likelihood of dilution. Have
there been any concerns or opposition expressed against this revision? Please
explain based on court decisions and academic theories by also referring to the
relationship with the concept of a “likelihood of confusion.”
The critical case for TDRA (Trademark Dilution Revision Act of 2006) is Moseley v. V Secret
Catalogue125. The case is introduced in an article “Hatsumei – the Invention Feb. 2007” in
Japanese (Please see the attachment). Further, the following articles are directly addressing
your questions. Therefore, please let us attach the following articles.
• Graeme B. Dinwoodie & mark D. Janis, Dilution’s (Still) Uncertain Future, 105 Mich.
L. Rev. First Impressions 98 (2006)(suggesting that courts may view the statutory
blurring test as little more than “confusion analysis with a different point job,” and
may thus construe it restrictively against trademark owners).
• “chilling effects” on speech concern --- Jesse A. Hofrichter, Tool of The Trademark:
Brand Criticism And Free Speech Problems With The Trademark Dilution Revision
Act Of 2006, 28 Cardozo Law Review 1923 (2007)
(3) Please explain in detail (e.g., the provisions of laws or regulations applied) cases in
which a criminal penalty was imposed for the infringement of intellectual property
rights on the Internet, if any. In particular, have there been any cases in which a criminal
penalty has been imposed for trademark infringement (either a registered or
unregistered trademark)? If so, please outline the requirements based on which criminal
penalty was applied in such cases.
Knowingly copying another’s trademark is considered counterfeiting and is a felony
punishable by fines and imprisonment under 18 U.S.C. §2320.
18 U.S.C. § 2320 states as follows:
(a) Whoever intentionally traffics or attempts to traffic in goods or services and
knowingly uses a counterfeit mark on or in connection with such goods or services, or
intentionally traffics or attempts to traffic in labels, patches, stickers, wrappers, badges,
emblems, medallions, charms, boxes, containers, cans, cases, hangtags,
documentation, or packaging of any type or nature, knowing that a counterfeit mark
has been applied thereto, the use of which is likely to cause confusion, to cause
125
Moseley v. V Secret Catalogue, 537 U.S. 418 (2003)
－202－
mistake, or to deceive, shall, if an individual, be fined not more than $2,000,000 or
imprisoned not more than 10 years, or both, and, if a person other than an individual,
be fined not more than $5,000,000. In the case of an offense by a person under this
section that occurs after that person is convicted of another offense under this section,
the person convicted, if an individual, shall be fined not more than $5,000,000 or
imprisoned not more than 20 years, or both, and if other than an individual, shall be
fined not more than $15,000,000.
(b)
(1) The following property shall be subject to forfeiture to the United
States and no property right shall exist in such property:
(A) Any article bearing or consisting of a counterfeit mark used
in committing a violation of subsection (a).
(B) Any property used, in any manner or part, to commit or to
facilitate the commission of a violation of subsection (a).
(2) The provisions of chapter 46 of this title relating to civil forfeitures,
including section 983 of this title, shall extend to any seizure or civil
forfeiture under this section. At the conclusion of the forfeiture
proceedings, the court, unless otherwise requested by an agency of the
United States, shall order that any forfeited article bearing or consisting of
a counterfeit mark be destroyed or otherwise disposed of according to law.
(3)
(A) The court, in imposing sentence on a person convicted of
an offense under this section, shall order, in addition to any
other sentence imposed, that the person forfeit to the United
States-(i) any property constituting or derived from any
proceeds the person obtained, directly or indirectly,
as the result of the offense;
(ii) any of the person's property used, or intended to
be used, in any manner or part, to commit, facilitate,
aid, or abet the commission of the offense; and
(iii) any article that bears or consists of a
counterfeit mark used in committing the offense.
(B) The forfeiture of property under subparagraph (A),
including any seizure and disposition of the property and any
related judicial or administrative proceeding, shall be governed
by the procedures set forth in section 413 of the
Comprehensive Drug Abuse Prevention and Control Act of
1970 (21 U.S.C. 853), other than subsection (d) of that section.
Notwithstanding section 413(h) of that Act, at the conclusion of
－203－
the forfeiture proceedings, the court shall order that any
forfeited article or component of an article bearing or
consisting of a counterfeit mark be destroyed.
(4) When a person is convicted of an offense under this section, the court,
pursuant to sections 3556, 3663A, and 3664, shall order the person to pay
restitution to the owner of the mark and any other victim of the offense as
an offense against property referred to in section 3663A(c)(1)(A)(ii).
(5) The term "victim", as used in paragraph (4), has the meaning given that
term in section 3663A(a)(2).
(c) All defenses, affirmative defenses, and limitations on remedies that would be
applicable in an action under the Lanham Act shall be applicable in a prosecution
under this section. In a prosecution under this section, the defendant shall have the
burden of proof, by a preponderance of the evidence, of any such affirmative defense.
(d)
(1) During preparation of the presentence report pursuant to Rule 32(c) of
the Federal Rules of Criminal Procedure, victims of the offense shall be
permitted to submit, and the probation officer shall receive, a victim
impact statement that identifies the victim of the offense and the extent and
scope of the injury and loss suffered by the victim, including the estimated
economic impact of the offense on that victim.
(2) Persons permitted to submit victim impact statements shall include-(A) producers and sellers of legitimate goods or services
affected by conduct involved in the offense;
(B) holders of intellectual property rights in such goods or
services; and
(C) the legal representatives of such producers, sellers, and
holders.
(e) For the purposes of this section-(1) the term "counterfeit mark" means-(A) a spurious mark-(i) that is used in connection with trafficking in any goods,
services, labels, patches, stickers, wrappers, badges, emblems,
medallions, charms, boxes, containers, cans, cases, hangtags,
documentation, or packaging of any type or nature;
(ii) that is identical with, or substantially indistinguishable
from, a mark registered on the principal register in the United
States Patent and Trademark Office and in use, whether or not
the defendant knew such mark was so registered;
(iii) that is applied to or used in connection with the goods or
services for which the mark is registered with the United States
－204－
Patent and Trademark Office, or is applied to or consists of a
label, patch, sticker, wrapper, badge, emblem, medallion,
charm, box, container, can, case, hangtag, documentation, or
packaging of any type or nature that is designed, marketed, or
otherwise intended to be used on or in connection with the
goods or services for which the mark is registered in the United
States Patent and Trademark Office; and
(iv) the use of which is likely to cause confusion, to cause
mistake, or to deceive; or
(B) a spurious designation that is identical with, or substantially
indistinguishable from, a designation as to which the remedies of the
Lanham Act are made available by reason of section 220506 of title 36;
but such term does not include any mark or designation used in connection with
goods or services, or a mark or designation applied to labels, patches, stickers,
wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases,
hangtags, documentation, or packaging of any type or nature used in connection
with such goods or services, of which the manufacturer or producer was, at the
time of the manufacture or production in question, authorized to use the mark or
designation for the type of goods or services so manufactured or produced, by the
holder of the right to use such mark or designation.
(2) the term "traffic" means to transport, transfer, or otherwise dispose of, to another,
for purposes of commercial advantage or private financial gain, or to make, import,
export, obtain control of, or possess, with intent to so transport, transfer, or otherwise
dispose of;
(3) the term "financial gain" includes the receipt, or expected receipt, of anything of
value; and
(4) the term "Lanham Act" means the Act entitled "An Act to provide for the
registration and protection of trademarks used in commerce, to carry out the
provisions of certain international conventions, and for other purposes", approved July
5, 1946 (15 U.S.C. 1051 et seq.).
(f) Nothing in this section shall entitle the United States to bring a criminal cause of
action under this section for the repackaging of genuine goods or services not intended
to deceive or confuse.
(g)
(1) Beginning with the first year after the date of enactment of this
subsection, the Attorney General shall include in the report of the Attorney
General to Congress on the business of the Department of Justice prepared
pursuant to section 522 of title 28, an accounting, on a district by district
basis, of the following with respect to all actions taken by the Department
of Justice that involve trafficking in counterfeit labels for phonorecords,
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copies of computer programs or computer program documentation or
packaging, copies of motion pictures or other audiovisual works (as
defined in section 2318 of this title), criminal infringement of copyrights
(as defined in section 2319 of this title), unauthorized fixation of and
trafficking in sound recordings and music videos of live musical
performances (as defined in section 2319A of this title), or trafficking in
goods or services bearing counterfeit marks (as defined in section 2320 of
this title):
(A) The number of open investigations.
(B) The number of cases referred by the United States Customs
Service.
(C) The number of cases referred by other agencies or sources.
(D) The number and outcome, including settlements, sentences,
recoveries, and penalties, of all prosecutions brought under
sections 2318, 2319, 2319A, and 2320 of this title.
(2)
(A) The report under paragraph (1), with respect to criminal infringement
of copyright, shall include the following:
(i) The number of infringement cases in these categories:
audiovisual (videos and films); audio (sound recordings);
literary works (books and musical compositions); computer
programs; video games; and, others.
(ii) The number of online infringement cases.
(iii) The number and dollar amounts of fines assessed in
specific categories of dollar amounts. These categories shall
be: no fines ordered; fines under $500; fines from $500 to
$1,000; fines from $1,000 to $5,000; fines from $5,000 to
$10,000; and fines over $10,000.
(iv) The total amount of restitution ordered in all copyright
infringement cases.
(B) In this paragraph, the term "online infringement cases" as used in
paragraph (2) means those cases where the infringer-(i) advertised or publicized the infringing work on the Internet;
or
(ii) made the infringing work available on the Internet for
download, reproduction, performance, or distribution by other
persons.
(C) The information required under subparagraph (A) shall be submitted in
the report required in fiscal year 2005 and thereafter.
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Explanation and cases regarding the statute terminology
The Defendant's Trafficking or Attempt to Traffic Was Intentional
The statute contains two distinct mental state requirements. The first of these is the
requirement that the defendant's trafficking be "intentional." This means that the
government must show that the defendant trafficked in the goods or services
deliberately or "on purpose." See Joint Statement on Trademark Counterfeiting
Legislation 130 Cong. Rec. H12076 (daily ed. Oct. 10, 1984)(hereinafter "Joint
Statement").
Note that it is the trafficking and not the use of the counterfeit mark which must be
intentional. The statute does not require a showing of specific intent to deceive or
defraud the buyer. United States v. Gantos, 817 F.2d 41, 42-43 (8th Cir.), cert. denied,
484 U.S. 860 (1987). See United States v. Torkington, 812 F.2d 1347, 1353 n. 7 (11th
Cir. 1987). A defendant need not be aware of the illegality of his conduct. United
States v. Baker, 807 F.2d 427, 429 (5th Cir. 1986).
The Defendant Used a "Counterfeit Mark" on or in Connection With Such Goods or
Services
The marks protected from counterfeiting by this statute are registered trademarks in
use and Olympic designations protected under 36 U.S.C. § 380. For purposes of the
criminal statute, the term "counterfeit mark" is defined in 18 U.S.C. § 2320 (d).
The requirements for establishing that a counterfeit Olympic designation is a
"counterfeit mark" appear to be somewhat simpler than those required for other
registered trademarks. According to the language of the statute, the mark must be: (1)
a spurious designation, (2) "identical to or substantially indistinguishable from," (3) a
designation as to which the remedies of the Lanham Act are made available by reason
of Section 110 of the Olympic Charter Act. The designations protected are set forth at
36 U.S.C. § 380, and include, for example, the familiar International Olympic
Committee symbol consisting of five interlocking rings. Id. § 380(a)(1).
Trademark Counterfeiting -- Requirements for a "Counterfeit Mark"
In order to show that a trademark used by the defendant was a "counterfeit mark" the
government must prove the following:
A. The mark is spurious. 18 U.S.C. § 2320(e)(1)(a). A mark is "spurious" if it is
"not genuine or authentic." Joint Statement on Trademark Counterfeiting
Legislation, 130 Cong. Rec. H12076, H12078 (daily ed. Oct. 10,
1984)(hereinafter "Joint Statement").
－207－
B. The mark was used in connection with trafficking in goods or services. 18
U.S.C. § 2320(e)(1)(A)(i).
C. The mark is "identical with, or substantially indistinguishable from" the
genuine trademark. 18 U.S.C. § 2320 (e)(1)(a)(ii). This element assures that
not every case of trademark infringement amounts to trademark counterfeiting.
The "indistinguishable from" standard is to be interpreted on a case-by-case
basis. Joint Statement, 130 Cong. Rec H12078.|C906 The phrase is intended to
prevent a counterfeiter from escaping liability by modifying a protected
trademark in trivial ways, while excluding arguable cases of trademark
infringement involving trademarks which are merely "reminiscent of"
protected trademarks. Id. The Act does not extend to imitations or "trade
dress," such as the color, shape, or design of packaging, unless those features
have been registered as trademarks. Id. at H12079.
D. The genuine mark is registered on the principal register in the United States
Patent and Trademark Office. 18 U.S.C. § 2320(e)(1)(A)(ii). This element
limits the class of trademarks covered by the statute. It also establishes the
basis for federal jurisdiction under the Commerce Clause, since use in
commerce is a requirement for registration. See 15 U.S.C. § § 1051, 1057.
Registration on the principal register is prima facie evidence that the mark has
been in interstate commerce prior to registration. Maternally Yours, Inc. v. Your
Maternity Shop, Inc., 234 F.2d 538 (2d Cir. 1956); 15 U.S.C. § 1057(b). It is
not necessary to prove that the defendant knew the mark was registered. See 18
U.S.C. § 2320(e)(1)(A)(ii).
E. The genuine mark is in use. The genuine mark must not only be registered, it
must also be in use. 18 U.S.C. § 2320(e)(1)(A)(ii).
F. The goods or services are those for which the genuine mark is registered. 18
U.S.C. § 2320(e)(1)(A)(ii). The definition of counterfeit mark extends only to
imitations of registered marks which are used in connection with the goods or
services for which the mark is registered. See 18 U.S.C. § 2320(e)(1)(A)(ii).
For example, a mark used in connection with typewriter paper which is
identical to or substantially indistinguishable from a mark registered only for
use on typewriters would not be a counterfeit mark, although civil remedies
might be available under the Lanham Act. See Joint Statement, 130 Cong. Rec
H12079.
G. The use of counterfeit mark is "likely to cause confusion, to cause the mistake,
or to deceive." 18 U.S.C. § 2320(e)(1)(iii). The phrase "use of which is likely
to cause confusion, to cause mistake, or to deceive" is taken from the remedial
－208－
section of the Lanham Act. Joint Statement, 130 Cong. Rec. H12079. This
element is the essence of a trademark infringement.
The issue of likelihood of confusion, mistake, or deception, is a question of fact for the
jury. United States v. Gonzalez, 630 F. Supp. 894, 896 (S.D. Fla 1986). In criminal
cases, however, which will involve goods and marks which are identical to or
substantially indistinguishable from each other, the factual determination is less
complex than it might be in a civil case. Where counterfeit goods are involved, the
trier of fact may resolve the issue by a side-by-side comparison of the two products, or
through expert testimony and the inability of a defense witness to distinguish the
counterfeit item. See, e.g., United States v. Yamin, 868 F.2d 130 (5th Cir.), cert. denied,
492 U.S. 924 (1989); Rolex Watch USA, Inc. v. Canner, 645 F. Supp. 484, 489 (S.D.
Fla. 1986).
Courts in criminal cases have adopted factors used in the civil context when analyzing
whether there exists a likelihood of confusion. United States v. McEvoy, 820 F.2d 1170,
1172 (11th Cir.), cert. denied, 484 U.S. 902 (1987); United States v. Torkington, 812
F.2d 1347, 1354 (11th Cir. 1987). Factors may include the type of trademark, the
similarity of design, the similarity of product, identity of retailers and purchasers, the
defendant's intent, and any actual confusion. These factors may be argued to a jury in a
criminal case. McEvoy, 820 F.2d at 1172.
The statute does not require a showing that direct purchasers would be confused,
mistaken, or deceived. It is sufficient that there is a likelihood of confusion, mistake,
or deception to any member of the buying public, even a person who sees the product
after its purchase. United States v. Gantos, 817 F.2d 41, 43 (8th Cir.), cert. denied, 484
U.S. 860 (1987); United States v. Torkington, 812 F.2d at 1352; United States v.
Infurnari, 647 F. Supp. 57, 59-60 (W.D.N.Y 1986). Because likelihood of confusion,
mistake, or deception applies to members of the general purchasing public and not just
to the immediate purchaser, this factor may be present even where the defendant told
the immediate purchaser the item was not genuine, Gantos, 817 F.2d at 43; Infurnari,
647 F. Supp. at 59, or where the sale of counterfeit goods for a fraction of the price of
expensive trademarked goods might alert a prospective purchaser that the item was not
genuine. See Torkington, 812 F.2d at 1350 (replica Rolex watches sold for $27). See
also United States v. Hon, 904 F.2d 803, 806-08 (2d Cir. 1990), cert. denied, 498 U.S.
1069 (1991).
Trademark Counterfeiting -- Fourth Element -- The Defendant Knew the Mark Was
Counterfeit
The second mental state requirement of the statute is that the defendant "knew" the
mark used on or in connection with the goods or services in which he trafficked was
counterfeit. Such knowledge is established by proof that the defendant "had an
－209－
awareness or firm belief to that effect." Joint Statement on Trademark Counterfeiting
Legislation, 130 Cong. Rec. H12076 (daily ed. Oct. 10, 1984) (hereinafter "Joint
Statement").
The Joint Statement indicates that the government's burden can also be satisfied by
showing that the defendant was "willfully blind" to the counterfeit nature of the mark.
Id. at H12077. See also United States v. Sung, 51 F.3d 92, 94 (7th Cir. 1995), appeal
after remand, 87 F.3d 194 (1996) (remanded for resentencing). The government need
not prove that it was the defendant's purpose or objective to use a counterfeit mark, but
only that the defendant knew that he or she was doing so. Id.
For another criminal trademark case: Please visit the following link.
http://www.usdoj.gov/opa/pr/1998/November/540crm.htm
Other criminal cases involving Trademark Cases
Cited from http://www.usdoj.gov/criminal/cybercrime/ipcases.html#trademark
U.S. v. Wakefield (S.D. Fla.)
•
Miramar Man Pleads Guilty to Trafficking in Counterfeit Goods (August 22, 2006)
U.S. v. Cousens (E.D. Mich.)
•
Chesterfield Township Retailer Sentenced for Sale of Counterfeit Products (July 5,
2006)
U.S. v. Shao (Fu, Fu, Chen, Li) (S.D. Fla.)
•
Five Individuals Indicted for Trafficking in Counterfeit Goods (December 29, 2005)
U.S. v. So (N.D. Ohio)
•
Ohio Man Pleads Guilty to Criminal Infringement of Copyrights Relating to DVD
Movies and CD Audio Recordings, and Possession of Counterfeit Labels to be Affixed
to Counterfeit Goods (December 2, 2005)
•
Ohio Man Indicted for Criminal Infringement of Copyrights Relating to DVD Movies
and CD Audio Recordings, and Possession of Counterfeit Labels to be Affixed to
Counterfeit Goods. (June 8, 2005)
U.S. v. Luong et al. (D. Mass.)
•
Massachusetts Man And Woman Plead Guilty To Participating In One Of New
England's Largest Counterfeit Goods Conspiracies (June 19, 2006)
•
Four Massachusetts Residents Charged with Scheme to Sell More than 30,000
Counterfeit Luxury Goods (November 3, 2005)
－210－
U.S. v. Wen (He, Zhai) (N.D. Cal.) (Operation Remaster) (also charged under copyright
violation)
•
First Two Defendants Plead Guilty in Largest CD Manufacturing Piracy Scheme
Uncovered in U.S. to Date (April 3, 2006)
•
Three Indictments in Massive Music and Software Piracy Scheme: Individuals
Charged with Infringing Over 325,000 CDs Containing Music and Software Largest
CD Manufacturing Seizure in the United States According to Recording Industry
(October 12, 2005)
U.S. v. Berger (D.N.J.)
•
Maple Shade, New Jersey Man Gets 15 Months in Prison for Selling Fake Rolex
Watches Over the Internet (July, 12, 2005)
U.S. v. Huang (Srulevitch) (C.D. Cal.)
•
Southern California Man Pleads Guilty to Trafficking in Counterfeit Viagra (January 6,
2005)
U.S. v. Zheng (S.D. Tex.)
•
Houston Importer Convicted of Trafficking in Counterfeit Merchandise (July 20,
2004)
U.S. v. Murphy (N.D. Ala.) (Adulterated Pesticides)
•
Glencoe Man Sentenced for Selling Counterfeit & Misbranded Pesticides to Cities
(April 21, 2004)
•
Glencoe, Alabama Man Pleads Guilty to Selling Counterfeit and Adulterated
Pesticides (January 5, 2004)
U.S. v. Barbot (E.D. Va.) (also sentenced under copyright violation)
•
Richmond, Virginia Man Sentenced to 70 Months and $1.7 Million Restitution for
Illegal Distribution of Counterfeit Microsoft Software (March 23, 2004)
U.S. v. Nguyen (C.D. Cal.)
•
Orange County Businessman Found Guilty of Trafficking Counterfeit Compaq
Computer Components: The First Criminal Trademark Case Ever Brought to Verdict
in Orange County (October 28, 2003)
•
Orange County Businessman Indicted for Trafficking Counterfeit Compaq Computer
Components (October 28, 2002)
－211－
U.S. v. Jaghouri (Carter) (C.D. Cal.)
•
Two Los Angeles-Area Residents Charged with Trafficking Millions of Dollars of
Counterfeit Designer Goods (August 18, 2003)
U.S. v. Lawler (D.N.H.)
•
Massachusetts Man Pleads Guilty to Multi-Million Dollar New Hampshire Internet
Conspiracy (July 1, 2003)
U.S. v. Fontanini et al. (S.D. Cal.) (also charged under copyright violation)
•
Nine Indicted for Engaging in a Conspiracy to Distribute Counterfeit Microsoft
Software (March 10, 2003)
U.S. v. Ma et al. (E.D.N.Y.) (also charged under copyright violation)
•
Six Charged With Trafficking in Counterfeit Computer Software -- $9 Million Worth
of Counterfeit Software Seized During Search of Defendants' Distribution Centers
(February 26, 2003)
U.S. v. Zhu (Huang) (S.D.N.Y.) (Luis Vuitton handbags)
•
Two Men Arrested in Conspiracy to Sell Over $200,000 Worth of Fake Louis Vuitton
Handbags via the Internet (February 10, 2003)
•
South Carolina Man Pleads Guilty to Trafficking Clothing with Counterfeit
Trademarks (January 16, 2003)
•
Sentence: 84 months incarceration; 1M fine/restitution; judgement affirmed by 4th
Circuit, June 4, 2004
U.S. v. Berrios (Peralta) (S.D. Fla..) (CDs & Cassettes; also charged under copyright
violation)
•
Owner and Operator of Multi-Million Dollar Music Piracy Operation Charged
Criminally (November 1, 2002)
U.S. v. Mostafa (C.D. Cal.) (Health and Safety threat)
•
Defendant's sentence affirmed by 9th Circuit, December 17, 2003.; Fugitive Who sold
Counterfeit Baby Formula Sentenced to 44 Months Imprisonment (December 16,
2002)
•
Fugitive Who Sold Counterfeit Baby Formula Convicted of Federal Criminal Charges
(August 9, 2002)
－212－
U.S. v. Tzeng (C.D. Cal.)
•
San Gabriel Valley Woman Sentenced For Trafficking In Counterfeit Microsoft
Computer Programs (May 24, 2002)
•
San Gabriel Valley Woman Arrested for Trafficking in Counterfeit Microsoft
Computer Programs (June 15, 2001)
U.S. v. Qaza (Ghnaim) (E.D.N.Y.) (CDs & DVDs; also charged under copyright violation)
•
Two Brooklyn Men Indicted in Connection with Largest Seizure of Counterfeit DVDs
in United States History (January 11, 2002)
•
Sentence: 41 months incarceration
U.S. v. Dipadova (Ford) (N.D.S.C.)
•
Defendant Who Operated Fakegifts.com Sentenced (December 12, 2001)
•
Operators of www.fakegifts.com Web Site Plead Guilty to Selling Counterfeit Luxury
Goods over the Internet (March 7, 2001)
•
Two Indicted and Arrested in South Carolina for Trafficking in Counterfeit Luxury
Goods over www.fakegifts.com Web Site (January 29, 2001)
U.S. v. Ngo (D. Utah)
•
West Valley Man Sentenced to 10 Months in Federal Prison for Trafficking in
Counterfeit Video Tapes (July 17, 2001)
U.S. v. Mou (C.D. Cal.)
•
Southland Woman Sentenced to One Year in Prison for Trafficking in Counterfeit
Computer Software; Judge Orders Restitution Paid to Microsoft (December 4, 2000)
•
Texas Woman Pleads Guilty to Operating Ring That Trafficked in Counterfeit
Microsoft Software (September 25, 2000 ) Texas Woman Charged with Running Ring
That Trafficked in Counterfeit Software (May 23, 2000 )
U.S. v. Platinum (Wu and Pham) (E.D.N.Y.)
•
New York Electronic Crimes Task Force Arrests Two Individuals on Charges of
Trafficking in Counterfeit Computer Chips and Software (June 22, 2000)
•
Sentence: one month incarceration; 340K fine/restitution
U.S. v. Kablin (D. Mass.)
•
Norwood Man Pleads Guilty to Selling Counterfeit Clothing and Accessories
(February 23, 2000)
－213－
•
Sentence: six months incarceration; 85K fine/restitution
U.S. v. Lee (D. Haw.)
•
Kent Aoki Lee Charged by Federal Grand Jury With Wire Fraud, Trademark
Violations, and Selling Viagra over the Internet Without a Prescription (December 9,
1999)
•
Sentence: 10 months incarceration U.S. v. Desktop Sales, Inc. (N.D. Ill.)
•
Violation of I.B.M.. Trademark Results in $3.3 Million Fine and Restitution for
Chicago-area Company (November 19, 1998)
(4) In addition to the points mentioned above, if there are any matters that are considered to
be problematic in the United States, please explain. For example, please explain the
following points.
(i) Are there any arguments on the need to regulate the use of trademarks, etc. in a virtual
society on the Internet such as “Second Life” or on the need to apply the provisions on
dilution against such use? Or can the current legal system sufficiently deal with such
use? Please explain by citing academic theories and court decisions. (If there are any
differences between registered trademarks and unregistered trademarks in that regard,
please explain such differences.)
インターネット上における仮想社会における商標侵害の問題については非常に新しい分野
である。問題がおきつつはあるものの、現実問題として弊職のリサーチした限りでは判例はま
だ出ていないようである。同じ知的財産権の中でも著作権については 2000 年に改正された
DMCA(Digital Millennium Copyright Act)の適用可能性が強いが、商標に関しては米国商標法
（Lanham Act）における use in commerce を満たさないと侵害が認められないため、仮想社会に
おける商標の使用がこれに当たるかどうか難しいところである（use in commerce の定義につい
ては記述）。
例えばセカンドライフ自身も知的財産権の問題を数多く指摘されていることは認識してい
る。そのため、例えば、Linden Lab のオフィシャルポリシー中には、次のように掲載されてい
るようである。
Linden staff generally removes content that uses trademarks without apparent
authorization, with or without giving notice to the object owner. This generally
includes all RL corporate logos and brand names.
It is often difficult to tell what may or may not be trademarked. However, use of
designer logos and brand names without permission, such as Gucci, Nike, Louis
Vuiton, etc., are usually not acceptable.
46
－214－
ま た 、 最 近 the Second Life Patent and Trademark Office と い う も の が 設 置 さ れ て い る
（www.slpto.com）。ただし、この機関は、中立的な第三者機関であり、法的拘束力がないこ
とはもちろんのこと、セカンドライフを設立した Linden Lab への拘束力なども持たない。
(ii) Can a trademark acquire a secondary meaning as a result of being used on the Internet
alone? If so, please explain what kinds of conditions are required on the Internet by
indicating actual case examples (e.g., a large number of accesses from a wide area).
There is no special requirement for acquired distinctiveness regarding trademarks on the
Internet. Accordingly, the same requirement is necessary as follows:
The applicant may present evidence that the proposed mark has acquired
distinctiveness by submitting examples of advertising and promotional materials that
specifically promote the proposed mark as a trademark in the United States, dollar figures for
advertising devoted to such promotion, dealer and consumer statements of recognition of the
proposed mark as a trademark and any other evidence that establishes recognition of the
matter as a mark for the goods.
To determine whether the proposed mark has acquired distinctiveness, the trademark
examining attorney will consider the following factors:
(1) how long applicant has used the mark in the United States;
(2) the type and amount of advertising of the mark in the United States; and
(3) applicant’s efforts in the United States to associate the mark with the goods or
services identified in the application.
See Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 173 USPQ 820 (S.D.N.Y.
1972); In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984); 37 C.F.R. §2.41;
TMEP §§1212, 1212.01 and 1212.06 et seq.
Your question is related to the first factors “use in commerce,” since if such a use on
the Internet is allowed, it is possible to acquire “distinctiveness.” Here are several examples
(underline added).
• Offering services via the Internet has been held to constitute use in commerce,
since the services are available to a national and international audience who
must use interstate telephone lines to access a website. See Planned
Parenthood Federation of America, Inc. v. Bucci, 42 USPQ2d 1430 (S.D.N.Y.
1997), aff'd, 152 F.3d 920 (2d Cir. 1998) (Table), cert. denied, 525 U.S. 834
(1998). TMEP 901.03
－215－
•
•
For downloadable computer software, an applicant may submit a specimen that
shows use of the mark on an Internet website. Such a specimen is acceptable
only if it provides sufficient information to enable the user to download or
purchase the software from the website. If the website simply advertises the
software without providing a way to download it, the specimen is unacceptable.
In re Osterberg, 83 USPQ2d 1220 (TTAB 2007); In re Dell Inc., 71 USPQ2d
1725 (TTAB 2004). See TMEP §904.03(i) regarding electronic displays as
specimens for trademarks. 904.03(e)
904.03(i) Electronic Displays
A website page that displays a product, and provides a means of ordering the
product, can constitute a “display associated with the goods,” as long as the
mark appears on the web page in a manner in which the mark is associated
with the goods, and the web page provides a means for ordering the goods. The
Trademark Trial and Appeal Board has held that web pages that display goods
and their trademarks and provide for online ordering of such goods are, in fact,
electronic displays which are associated with the goods. Such uses are not
merely advertising, because in addition to showing the goods, they provide a
link for ordering the goods. In effect, the website is an electronic retail store,
and the web page is a shelf-talker or banner which encourages the consumer to
buy the product. A consumer using the link on the web page to purchase the
goods is the equivalent of a consumer seeing a shelf-talker and taking the item
to the cashier in a store to purchase it. The web page is thus a point of sale
display by which an actual sale is made. In re Dell Inc., 71 USPQ2d 1725
(TTAB 2004).
However, an Internet web page that merely provides information about the
goods, but does not provide a means of ordering them, is viewed as
promotional material, which is not acceptable to show trademark use on goods.
See In re Genitope Corp., 78 USPQ2d 1819,1822 (TTAB 2006) (“[T]he
company name, address and phone number that appears at the end of the web
page indicates only location information about applicant; it does not constitute
a means to order goods through the mail or by telephone, in the way that a
catalog sales form provides a means for one to fill out a sales form or call in a
purchase by phone.”). Merely providing a link to the websites of online
distributors is not sufficient. There must be a means of ordering the goods
directly from the applicant’s webpage, such as a telephone number for placing
orders or an online ordering process. In re Osterberg, 83 USPQ2d 1220
(TTAB 2007).
－216－
It is important to consider whether the goods are specialized in nature when
determining the acceptability of webpage specimens constituting a display
associated with the goods. The Board found a web page containing a link to an
online catalog, along with a toll free number and links to customer service and
technical support, to be an acceptable specimen, where the goods were
specialized industrial goods, and the record contained declaration evidence that
purchase of the goods requires careful calculation and technical knowledge,
and that the online phone numbers were in fact used to order the goods. In re
Valenite Inc., ___ USPQ2d ___, Serial No. 76482852 (TTAB July 31, 2007)
("[A]pplicant's website, in addition to showing pictures of the goods, provides
an on-line catalog, technical information apparently intended to further the
prospective purchaser's determination of which particular product to consider,
an online calculator and both a link to, and phone number for, customer service
representatives. Therefore, applicant's website provides the prospective
purchaser with sufficient information that the customer can select a product
and call customer service to confirm the correctness of the selection and place
an order.").
The mark must also be displayed on the webpage in a manner in which
customers will easily recognize it is a mark. In re Morganroth, 208 USPQ 284
(TTAB 1980). In Osterberg, supra, the Board found that CONDOMTOY
CONDOM was not displayed so prominently that consumers would recognize
it as a trademark for condoms.
II Dealing with Trademark Infringement Across National Borders
Please explain the following matters regarding the use of trademarks on the Internet in
other countries and the regulation of such use.
(1) When a US court is to determine whether or not information transmitted on the Internet
from a server located in a foreign country infringes a trademark used in the United
States, the court must first indicate whether or not it has jurisdiction.
In this regard, there are some US court decisions concerning the courts’ jurisdiction
over infringement on the Internet, such as Compuserve Inc. v. Patterson, 89 F.3d
1257(6th Cir.1996) and Bensusan Restaurant Corp. v. King, 937 F. Supp.295
(S.D.N.Y.1996). While also referring to these court decisions, please explain the trend
of the US courts’ determination on jurisdiction over such cases and any related
academic theories.
(2) Please explain the regulations under the current law (federal law, state law, common
49
－217－
law) against an act of infringement in the case where a US trademark (registered or
unregistered) is found to be infringed by the transmission of information on the Internet
from a server located in a foreign country, as well as any related court decisions
(including whether the details of the protection differ between a registered trademark
and an unregistered trademark).
The questions (1) and (2) are related to each other. Therefore, let us answer these issues
together.
Trademark cases without domain name issues:
The first issue that must be addressed is whether Internet infringement actually
reaches the question of extraterritoriality. If an Internet user accesses a website from within
the United States, regardless of whether the website’s base is in a foreign territory, it is at least
arguable that the mark was used in the United States, thus negating the need for trademark
law that reaches extraterritorially. If the “use” is in fact determined to be “domestic use,” then
it may overcome the fact that either the “physical situs of the files containing the mark, the
server hosting those files, or the individuals responsible for those files” exist in a foreign
territory. Thus, the definition of “use” becomes critical.
This issue was first discussed in the case of Playboy Enterprises, Inc. v. Chuckleberry
Publishing, Inc. (“Playboy II”)126. In a prior case (“Playboy I”)127, the Second Circuit Court of
Appeals had granted an injunction enjoining Chuckleberry from using the confusingly similar
mark “Playmen” for the distribution of their Italy-based magazine. Despite this, in a parallel
suit brought to enjoin Chuckleberry’s use in Italy, the Italian court upheld the use of the
Playmen mark. The events giving rise to this case occurred several years later when
Chuckleberry published an Internet website for its magazine, again using the mark
“Playmen,” based in Italy. Playboy brought suit for a violation of the injunctive order granted
in Playboy I, citing that the worldwide nature of access to Internet website was clearly in
violation of the court order. The court agreed, stating that the website equated to the
circulation of a magazine (a “use”) within U.S. territory and ordered Chuckleberry to block
U.S. access to the website.
While this case seems to give us an answer regarding the question of applying an
extraterritoriality doctrine, commentators have suggested that the decision should be taken
with the understanding that the procedural context of the case may have been a determinative
factor. Because the court was able to exercise jurisdiction over Chuckleberry based on the
126
Playboy Enter., Inc. v. Chuckleberry Publ’g Inc. (Playboy II), 939 F. Supp 1032(S.D.N.Y. 1996).
127
Playboy Enter., Inc. v. Chuckleberry Publ'g, Inc., (Playboy I), 687 F.2d 563, 571 (2d Cir. 1982).
－218－
prior injunction issued in Playboy I, it is unclear whether the court would have found in
personam jurisdiction in Playboy II if it were brought as an original action which directly
challenged the use of the Playmen mark on a foreign website (as opposed to being based on a
prior action on which jurisdiction was undisputed). Further, because the decision in Playboy II
was rendered from a court sitting in equity for remedial purposes, it is unclear whether such a
result would have been rendered in an original action. Since the issue in Playboy II centered
on a prior injunction and not the Lanham Act, it cannot be wholly ascertained whether the
court would have been able to apply the Lanham Act to this seemingly extraterritorial
situation on the Internet.
If it should turn out that the more decisive issue in Playboy II was the procedural
context, in which case Playboy II does not support the notion that access on a computer
located within the U.S. equates to a simple application of the Lanham Act, then it may still be
possible to reach foreign defendants using the Lanham Act’s extraterritorial arms, as
articulated in Steele128. The Steele case essentially provided that, if confusingly similar marks
are used, even if that use occurs entirely outside of U.S. territory, it can still be reached by the
Lanham Act if it in any way effects U.S. commerce. Should any such questionably infringing
activity take place over the Internet, it has been said that the worldwide nature of the Internet
would lend to finding an effect on U.S. commerce.
There have been several cases dealing with personal jurisdiction over the Internet, and
have been decided with varying reasoning and results.
The standard has evolved to distinguishing between active and passive websites, as
formatively articulated in the Zippo case129. The court distinguished and classified websites as
being either active, passive, or intermediate, based upon their level of interactivity:
[a]t one end of the spectrum are situations were a defendant clearly does business over
the Internet. If the defendant enters into contracts with residents of a foreign jurisdiction that
involve the knowing and repeated transmission of computer files over the Internet, personal
128
Steele v. Bulova Watch Co., 344 U.S. 280 (1952).
Summary: a U.S. citizen obtained the Mexican rights to the widely-known “Bulova” name and subsequently began to
manufacture and sell watches bearing that mark in Mexico; several of those watches found their way into the United States,
despite being wholly the products of Mexico. Bulova brought suit in a Texas federal district court seeking both injunctive
and monetary relief under the Lanham Act. Bulova had only registered their trademark in the U.S.; Steele had registered in
Mexico several years before the inception of the lawsuit. The U.S. Supreme Court found Steele subject to the Lanham
Act’s trademark protection provisions despite the fact that the apparently infringing behavior occurred outside of the
territory of the United States
129
Zippo Manufacturing Co. v. Zippo Dot Com, Inc. , 952 F. Supp. 1119 (W.D. Pa. 1997)
－219－
jurisdiction is proper . . . at the opposite end are situations where a defendant has simply
posted information on an Internet website which is accessible to users in foreign jurisdictions.
A passive Web site . . . is not grounds for the exercise [of] personal jurisdiction . . . The
middle ground is occupied by interactive Web sites where a user can exchange information
with the host computer. In these cases, the exercise of jurisdiction is determined by examining
the level of interactivity and commercial nature of the exchange of information that occurs on
the website (emphasis added).
This test is easily applied at both ends of the sliding scale between active and passive;
it is not until the middle of the scale is approached that it becomes difficult to distinguish
between the websites.
Cited from Richmond Journal of Law & Technology Volume XIII, On international
Trademark and the Internet, by Joshua Clowers
Other Recent case:
• Toys "R" Us v. Step Two, S.A., 2003 U.S. App. LEXIS 1355 (3rd Cir., January
27, 2003) (This case is attached hereto)
Trademark cases with domain name issues:
Trademark infringement cases are quite often involved with domain name disputes,
usually with cybersquatting issues. Until recently there has been no legislation governing
trademark infringement through domain names. The United States is the first country to
introduce cyberspace-specific trademark legislation with the Anticybersquatting Infringement
Act of 1999 (ACPA), which is now part of U.S. trademark law.
The Act states that cybersquatting occurs when the person registering a domain name
containing a trademark "has a bad faith intent to profit from that mark" and "registers, traffics
in, or uses" a domain name that contains the trademark, either verbatim or in a diluted form
("identical or confusingly similar to or dilutive of that mark").130
An innovative feature of the ACPA is that it enables in rem jurisdiction in domain
name disputes - this means that the trademark owner does not have to sue the domain name
owner personally, but can take action against the domain name itself.131 This provision
recognises that cybersquatters frequently give out false contact information, presumably in
anticipation of possible law suits. Normally, in U.S. law, a person who cannot be located
130
15 U.S.C. § 1125 (d) (1) (A)(i) and (ii).
131
15 U.SC. 1125 (d) (2)(A) states: "The owner of a mark may file an in rem civil action against a domain name in the
judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or
assigned the domain name is located".
－220－
cannot be sued. And since domain name registrars are not liable for registering domain names
that infringe trademarks132 the fact that the registrant cannot be located would be prejudicial
to the rights of the trademark owner to claim infringement.
To take advantage of the in rem provision the trademark owner must take steps to
satisfy the courts that the registrant cannot be found. For straightforward cybersquatting
offences the in rem provision is useful. However, in cases where there is a genuine question
whether the domain name infringes the rights of the trademark owner, the desirability of this
provision is another matter133. On the other hand, if the plaintiff uses the in rem provision he
cannot claim damages, as the only remedies available are cancellation or transfer of the
domain name. Thus it is more beneficial for the plaintiff to obtain personal jurisdiction if the
infringing domain name caused material damage to the trademark. In a related matter, it needs
to be pointed out that most trademark owners prefer to use ICANN's Uniform Dispute
Resolution Policy (whose provisions are similar to those of ACPA) rather than face the
expense of litigation. This route is popular among trademark owners who do not so much
want to use the domain name themselves as to prevent others from using it134. Like action
under the ACPA's in rem provision, the Uniform Dispute Resolution Policy permits only
cancellation or transfer of the domain name, not damages. Thus for more grievous cases and
to recover damages the plaintiff would still need to go to court and sue the cybersquatter
personally.
Cited from Cybersquatting and Trademark Infringement
E LAW Murdoch University Electronic Journal of Law
By Monica Kilian PhD
Recent related cases:
z Hi-Rise Technology, Inc. v. Amatuerindex.com , 2007 WL 1847249 (W.D. Wash. June 27,
2007)
z Agri-Supply Company, Inc. v. Agrisupply.com , 457 F.Supp. 2d 660 (E.D. Va. 2006)
z Yahoo!, Inc. v. Yahooahtos.com , 2006 WL 2303166 (E.D. Va. August 8, 2006)
z Investools, Inc. v. Investtools.com , 2006 WL 2037577 (E.D. Va. July 17, 2006)
132
Lockheed Martin Corp v Network Solutions Inc, 985 F. Supp. 949 (C.D. Cal 1997), aff'd, 194 F 3d 980 (9th Cir. 1999).
133
For example, in Nissan Motor Co., Ltd v Nissan Computer Corp, 89 F. Supp. 2d 1154 (C.D. Cal, March 2000) the
defendant registered nissan.com in 1994. His named happens to be Uzi Nissan, and he had been using "Nissan" as a business
name since 1985. This case concerned only the question of jurisdiction - the outcome of the court case to follow is
foreshadowed by the District Court judge's opinion that the trademark has been infringed and that, moreover the defendant
showed bad faith intent (after being approached by Nissan Motors, Mr Nissan apparently saw a commercial opportunity and
refused to part with the name unless Nissan Motors agreed to pay him several million dollars).
134
Tamara Loomis, "Disputes get swift resolution under UDRP" (2000) 224 New York Law Journal 18. Westlaw 7/27/2000
N.Y.L.J. 5, (col. 2)
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z
z
z
z
z
z
z
Graham & Buffet, Ltd. v. www.vilcabamba.com , 2006 WL 851253 (W.D. Wash. Mar 30,
2006)
NBC Universal, Inc. v. NBCUNIVERSAL.COM , 378 F. Supp. 2d 715 (E.D. Va. 2005)
Venetian Casino Resort, LLC v. Venetiangold.com , 380 F. Supp. 2d 737 (E.D. Va. 2005)
U.S. Olympic Comm. v. 2000Olympic.com , Civ. A. No. 1:00CV1018 (E.D. Va. May 21,
2002) (Magistrate Judge's Report and Recommendation); (E.D. Va. Apr. 4, 2003)
(Court's Order Adopting Magistrate Judge's Report and Recommendation).
Cable News Network, L.P. v. cnnews.com , 162 F. Supp. 2d 484 (E.D. Va. Sept. 18, 2001)
(respondent’s motion to dismiss), 177 F. Supp. 2d 506 (E.D. Va. 2001) (cross-motions for
summary judgment), aff’d, 2003 U.S. App. LEXIS 1065 (4th Cir. 2003)
Ford Motor Co. v. Great Domains, Inc. , 2001 U.S. Dist. LEXIS 12712 (E.D. Mich. Mar.
30, 2001) (motion to dismiss regarding personal jurisdiction); 177 F. Supp. 2d 656 (E.D.
Mich. 2001) (motions to dismiss on other grounds)
Alitalia-Linee Aeree Italiane S.p.A. v. CASINOALITALIA.COM , 128 F. Supp. 2d 340
(E.D. Va. 2001)
(3) Have there been any cases where a criminal penalty has been imposed under US law
against infringement in the case where a US trademark (registered or unregistered) has
been found to be infringed by the transmission of information on the Internet from a
server located in a foreign country? If so, what kinds of procedures are followed to
execute such criminal penalty?
Our research did not disclose any criminal cases.
(4) No international convention exists as a means for settling disputes between trademark
owners who are entitled to legitimate rights in different countries for identical or similar
trademarks. However, though not legally binding, WIPO has compiled the Joint
Recommendation Concerning Provisions on the Protection of Marks, and Other
Industrial Property Rights in Signs, on the Internet, which was adopted by the General
Assembly in October 2001, with regard to the use of trademarks on the Internet.
This recommendation recognizes that the use of a sign on the Internet constitutes use in
a Member State only if the use has a commercial effect in that Member State (Article
2). Since such commercial effect could prove to be irrelevant to the intention of the
trademark user, the recommendation provides for exemption measures to exempt a user
from being held liable for infringement with regard to use prior to and after receipt of a
notification of infringement (Article 9, Article 10).
Has the US legal system been changed in any way with regard to use of trademarks on
the Internet (e.g., provisions concerning commercial use or exemption measures) based
on said recommendation? In addition, has the recommendation been taken into
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consideration in the examination of trademark applications or in litigation against a
decision of the Trademark Trial and Appeal Board or infringement litigation? Please
explain the measures currently taken or planned to be taken in the future by the United
States to deal with the recommendation. If there have been court decisions in which the
handling differs from the recommendation, please explain in detail (including whether
the handling of the protection differs between a registered trademark and an
unregistered trademark). Please explain based on your responses for (1) to (3) above.
The Joint Recommendation Concerning provisions on the protection of Marks, and
Other industrial Property Rights in Signs, on the Internet was (is) not well discussed in US. As
you see the USPTO website, the Recommendation was only posted in the website in 2001.
http://www.uspto.gov/web/offices/com/annual/2001/03d4_intellectualproperty.htm
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(Trademark Protection on the Internet)
Definitions – Abbreviations
All ER - All England Law Reports
CDPA - Copyright, Designs and Patents Act 1988
ECJ – European Court of Justice for the European Communities
The Handbook – The Trade Mark Handbook, Thomson/Sweet & Maxwell 2006
IPO – The UK Intellectual Property Office
The Registry – The UK Trade Marks Registry
TMA – Trade Marks Act 1994 (1994 c26)
WIPO – World Intellectual Property Organisation
2.
Trademark Protection on the Internet
I.
Trade Mark Protection on the Internet
In the area of the Internet, which is easily accessible around the world, there is a need to
solve the problem of the use of trademarks across national borders since the territoriality
principle that controls the effects of rights cannot be applied. Various aspects need to be
discussed including the requirements for establishing certain uses as use of a trademark on
the Internet and an Internet-specific discipline that differs from that of the real world.
Based on an awareness of such issues, please explain the following matters.
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(1)
Please provide a detailed explanation on the course of the development and the
current situation of German trademark act with regard to trademark protection on the
Internet. Please elaborate on the following points.
i.
Do intangible goods that are traded as digital content over the Internet correspond to
“goods (or services)” under UK trademark law? Is an act of attaching a trademark to
intangible goods in such transactions over the Internet regarded as “use of a
trademark”? Please explain by citing specific provisions of law. Please also explain
the differences in the details of the protection between a case where the trademark
attached to intangible goods is an unregistered trademark and a case where it is a
registered trademark, if any.
By “intangible goods traded as digital content” we understand the question to refer, among
other things, to content such as MP3 and MP4 files, digital books and newsletters, and
software. According to Boothroyd1, trade mark rights are often embedded in, and intrinsic to,
digital content. UK trade mark law does not define “goods” or “services”, and does not
contain any specific treatment either of intangible goods in general or digital content in
particular. Under traditional legal analysis, the sales of a digital asset such as an MP3 file
would probably not constitute a sale of goods, but rather the supply of a service that is
normally coupled with the grant or sale of intellectual property rights to the purchaser (such
as a licence to use it)2. However, from a practical perspective, the strict legal characterisation
of the transaction will not matter as long as the activity concerned is covered by the
registration of the mark being used: for the purposes of e.g. infringement, and/or genuine use
(to defeat a non-use attack) of the trade mark concerned, the question will be whether the
digital content in issue comes within the specification of the goods and services for which the
relevant trade mark is registered.
In identifying the goods or services in respect of which a mark is being used, Morcom et al
suggest in an internet context it is necessary “to ignore the superficial analysis that the sign is
merely being used in relation to a website and is physically appearing ‘on’ a computer
1
‘Licensing digital content: opportunities and risks’, Practical Law Company, 25 October 2007.
2
See e.g. definition of ‘goods’ under section 61, Sale of Goods Act 1979; and cases where supply of
software was not held to be ‘goods’ under that legislation: St Albans City and District Council v ICL
[1996] 4 All ER 481 and Horace Holman Group v Sherwood International Group [2001] All ER (D)
83.
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screen”3. Instead, they recommend asking what it is that the website is promoting or selling (if
that is what the website is doing), as it is in relation to that promotion or sale that the mark is
being used. In this regard, it has been held that mere use of a mark on a website did not
constitute use in the course of trade in the UK (which is necessary for UK trade mark
infringement) where the defendant had a shop in Dublin, Ireland, and placed an advertisement
on its website, but was not on the facts trying to enter the trade in the UK or selling to UK
customers via his website4.
As to whether attaching a trade mark to intangible goods in internet transactions would be
regarded as “use of a trade mark”, if the mark is being used as an indication of origin or so as
to create the impression that there is a material link in the course of trade between the goods
or services in issue and the trade mark owner, this will count as trade mark use5. Whether a
sign is being used in a trade mark sense is a question of fact to be determined in the light of
the specific circumstances of the use. Kerly points out6, the test is how the sign would be
perceived by the average consumer of the type of goods in question7. Please refer to the
answer to question (4)(i) for further discussion of trade mark use.
There are several provisions of the TMA which address the use of a trade mark in relation to
goods or services. We set out the following by way of a significant example in respect of
infringement:
“10. –
(1) A person infringes a registered trade mark if he uses in the course of trade a sign which is
identical with the trade mark in relation to goods or services which are identical with those for
which it is registered.
3
Morcom, Roughton, Graham and Malynicz, The Modern Law of Trade Marks, Reed Elsevier 2005.,
paragraph 17.29.
4
Euromarket Designs Inc v Peters [2001] FSR 288.
5
Anheuser-Busch v Budejovicky Budvar NP [2005] ETMR 27.
6
Kerly’s Law of Trade Marks and Trade Names, 14th Edition, London, Sweet & Maxwell 2005, at
paragraph 14-019.
7
Sabel BV v Puma AG [1997] ECR I-6191; R v Johnstone [2003] UKHL 28, at paras 31 and 87; most
recently, see Adam Opel v Autec AG [2007] E.T.M.R. 33.
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(2) A person infringes a registered trade mark if he uses in the course of trade a sign where
because (a) the sign is identical with the trade mark and is used in relation to goods or
services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or services
identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of
association with the trade mark.
(3) A person infringes a registered trade mark if he uses in the course of trade in relation to goods
or services a sign which –
(a) is identical with or similar to the trade mark,…
where the trade mark has a reputation in the United Kingdom and the use of the sign, being
without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the
repute of the trade mark.
(4) For the purposes of this section a person uses a sign if, in particular, he(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market or stocks them for those
purposes under the sign, or offers or supplies services under the sign;
(c) imports or exports goods under the sign; or
(d) uses the sign on business papers or in advertising.
(5) A person who applies a registered trade mark to material intended to be used for labelling or
packaging goods, as a business paper, or for advertising goods or services, shall be treated as a
party to any use of the material which infringes the registered trade mark if when he applied the
mark he knew or had reason to believe that the application of the mark was not duly authorised by
the proprietor or a licensee.
(6) Nothing in the preceding provisions of this section shall be construed as preventing the use of
a registered trade mark by any person for the purpose of identifying goods or services as those of
the proprietor or a licensee.
But any such use otherwise than in accordance with honest practices in industrial or commercial
matters shall be treated as infringing the registered trade mark if the use without due cause takes
unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.”
The non-exhaustive list in subsections 4 and 5 of section 10 TMA maintain the previous
position in the UK (under the old 1938 Trade Marks Act) that the mark does not actually have
to be physically affixed to the goods, provided it is so used in relation to them as to lead to the
belief that the goods are designated by the mark. The wording of these provisions makes clear
that the decisive factor is the relationship of the mark with the good/service in question, rather
than the form (e.g. internet, digital data) in or from which a good is delivered or a service is
rendered.
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Apple, Inc.’s registered Community trade mark for “ITUNES” (number 2895266) provides an
example of how digital content could be treated. The registration covers, among other things,
goods in Class 9 including “sound, video and data recordings”; and services in Class 38
including “electronic transmission of data and documents via the Internet or other databases;
delivery of data and messages by electronic transmission”. Apple could therefore seek to rely
on this registration to prevent a third party providing an internet-based service under the mark
ITUNES (or a confusingly similar mark) for the download of MP3 files.
The protection afforded in the UK to unregistered trade marks is different from that enjoyed
by registered trade marks. Bringing an action for registered trade mark infringement is
generally viewed as more straightforward and usually less expensive, especially in the case of
an identical mark used in relation to identical goods/services. In relation to infringement of
registered trade marks, the trade mark owner is required to fulfil the criteria set out in either
section 10(1), 10(2) or 10(3) (set out above). However an unregistered trade mark is enforced
by bringing an action in passing off.
The traditional requirements of passing off are threefold: the claimant must establish it owns
sufficient ‘goodwill’ (the attractive force which brings in custom8) among the relevant public
in relation to its goods or services, such that its mark is distinctive of the goods or services;
there must be a misrepresentation by the defendant likely to lead persons wishing to buy the
goods or services to be misled into buying the goods or services of the defendant; and the
claimant must be likely to suffer (or have suffered) damage9. So, e.g. if Apple did not have a
registration for ITUNES, given the large reputation it enjoys in the UK, it would almost
certainly be able so to show it owned sufficient goodwill in the mark and may well therefore
still be able to prevent a third party website selling MP3 downloads under the same or a
similar mark as long as the public were confused (and this activity were causing Apple loss).
Passing off is governed by common law and is not set out in statute.
8
IRC v Muller & Co’s Margarine (1901) AC 217, 224
9
Reckitt and Colman Products Ltd v Borden, Inc [1990] RPC 341 HL.
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ii.
While the purpose of trademark law to prevent confusion as to the source with regard
to the goods/services provided by the business operators, does the UK have any special
regulations for preventing confusion as to the source regarding trademarks on the
Internet?
Please explain the outline, criteria for application, academic theories and court
decisions concerning cases where unconventional uses of trademarks (Internetspecific uses such as meta tags and keyword buying) constitute trademark
infringement.
(Reference Information: We understand that, in the United States, use of a
trademark as a meta tag was found by the court to constitute trademark
infringement in Brookfield Communications, Inc. v. West Coast Entertainment
Corp., 174 F.3d 1036 (9th Cir.1999). There are two problems with regard to keyword
buying: (i) the problem of search engine operators selling specific keywords
beforehand; and (ii) the problem of keyword purchasers publishing banner ads
corresponding to their keywords. Whether or not these two cases constitute
infringement is a matter to be discussed).
[General remarks] We are not aware of any special regulations in the UK for preventing
confusion as to the source of goods/services regarding trade marks on the internet, and
therefore the claimant would have to rely on trade mark infringement and/or passing off
and/or domain name dispute resolution in the normal way. Note, however, that Regulation 6
of the Electronic Commerce (EC Directive) Regulations 200210 does effectively oblige
“information society service providers” (which will include most companies offering an
internet-based service such as sales from a website) to display its name, geographic address,
email address, details of any trade registration, and details of any relevant regulatory body or
professional rules. However, this provision is not directed at preventing confusion as to origin
in a trade mark context, and in itself is probably not effective in doing so, especially if the
business name or domain name being used is the alleged infringement.
There are a number of unconventional, internet-specific uses of trade marks to be discussed in
this answer: metatags, keywords, and wordstuffing.
[Metatags] Prior to the Court of Appeal decision in Reed Executive plc v Reed Business
Information Limited11 it seemed clear according to Kerly that under the TMA use of a mark in
10
SI 2002/2013.
11
[2004] RPC 40.
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a metatag does constitute use of the sign for the purposes of infringement12. The definition of
“use” contained in section 103(2) TMA13 means that the usual lack of visibility of the metatag
ought not make a difference: use includes “use otherwise than by means of graphic
representation”. However, the views expressed by Jacob LJ in Reed cast doubt on whether
metatag use is likely to give rise to a likelihood of confusion for the purposes of s10(2) trade
mark infringement. Jacob also called into question, without deciding the point, whether
metatag use constituted use at all for the purposes of trade mark infringement under s10 of the
TMA, i.e. whether it is use in a trade mark sense. A definitive answer is still to be provided in
the UK.
The claimant in Reed was a recruitment business and owner of a registered trade mark for
REED. The defendant was the publisher of specialist magazines and journals, and had moved
job advertisements from its industry-specific publications onto a newly-created website called
‘totaljobs.com’. This site included the name “Reed Business Information” within its metatags.
On the facts it was held that there was no identity between the marks, so the s10(1) claim
failed, and that there was no confusion, so the s10(2) claim failed. In relation to confusion, the
Court held that merely causing a site to appear in search results did not necessarily suggest a
connection with someone else. Users of the internet know that results of searches often have
nothing to do with their search terms.
However, the fundamental question of “use as a trade mark” was not decided. Jacob’s
concerns were around whether use as a metatag (or indeed a keyword) constitutes use which
is capable of affecting the functions of a trade mark, given that the consumer will not
normally be aware of the use by the defendant itself (because that use is not visible), but will
merely see the results of the use (in the form of a higher position on a search engine results
table or the display of a competitor’s banner advertisement). “In many cases it is the
consumer who has typed in the mark in issue, and the only visible use in the search results
12
Road Tech Computer Systems Ltd v Mandata Limited [2000] ETMR 970; a number of US decisions
including Brookfield (quoted in the question).
13
103(2) TMA: “References in this Act to use (or any particular description of use) of a trade mark,
or of a sign identical with, similar to, or likely to be mistaken for a trade mark, include use (or that
description of use) otherwise than by means of a graphic representation.”
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may be the words remaining in the search window on the consumer’s screen, alongside the
adverts and search results complained of”14. Clearly, if metatag use is not trade mark use, this
also has implications for the revocation provisions in respect of non-use (please see question
1(iv) below for further information on revocation for non-use).
In relation specifically to banner advertising, Jacob noted in passing that booking banner
advertising on search engines may not constitute trade mark use in the required way if the
sign was not displayed on the user’s screen: “It may be that an invisible use of this sort is not
use at all for the purposes of this trade mark legislation – the computers who ‘read’ sets of
letters merely ‘look for’ patterns of 0s and 1s – there is no meaning being conveyed to anyone
– no ‘sign’”.
Two other questions raised by Jacob were: (i) if metatag use does count as trade mark use, is
there infringement if the marks and goods/services are identical but no one is misled?; and (ii)
if metatag use does fall within infringement, can defences such as the own name defence
apply (section 11(2)(a) TMA15)? The judge at first instance had thought not because the use
was invisible. But if that judge thought lack of visibility did not prevent infringement, why
should that prevent availability of the defence? Note that this defence would only be available
if the use were “in accordance with honest practices in industrial or commercial matters”16. In
any case, according to Hart17, invisible uses of trade marks, e.g. in metatags, will not
automatically constitute dishonest use such as to prevent a defendant relying on the ownname defence under the TMA. Hart also suggests it may be possible to use a third party trade
mark in a metatag for the purposes of comparative advertising, but points out that the use
would have to be honest within the meaning of s10(6) TMA.
Despite Jacob’s uncertainties, the Court’s decision does not exclude the possibility of
bringing a claim for trade mark infringement in respect of the use of metatags, though it might
14
Kerly, at para 23-067.
15
11(2) TMA: “A registered trade mark is not infringed by-
(a) the use by a person of his own name or address”
16
S10(6) TMA; see e.g. Gerolsteiner Brunnen v Putsch [2004]ETMR 40.
17
PLC, 8 September 2006.
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be more likely to succeed where there is no requirement to show confusion (i.e. it is an
identical mark and identical goods/services under section 10(1)).
[Keywords] The only UK case to have considered the position in relation to keywords is also
the Reed case. In Reed, as well as using ‘REED’ in its metatags, the defendant had purchased
certain the keywords “job” and “recruitment”, and had been allocated a free extra keyword
“Reed” by the search engine. When a search was entered for “Reed jobs”, this triggered
banner adverts for the defendant’s website, totaljobs.com, on the search engine sites. Those
banner adverts (which did not include the word REED) contained links to the defendant’s
website, and so provided another means of attracting traffic to the defendant’s site. The Court
of Appeal disagreed with the trial judge’s finding that, when the banner advert was displayed
by searching the word "Reed", there was trade mark infringement.
Jacob LJ described it as “fanciful” that a “web-using member of the public” would connect a
totaljobs banner, which made no reference to the word "Reed", to the claimant. He found that
there was no likelihood of confusion and therefore no infringement (the analysis proceeded
under section 10(2) TMA because there was no identity of signs or services on the facts).
Again, the Court expressed the view that the public are used to a random selection of sites
being displayed on a search and do not necessarily assume there is a connection between the
search terms and the sites.
Though “a rash of litigation has erupted around the Google search engine’s AdWords
service”18, with suits against Google in France, Germany and the US, there are no UK cases
on this service. In relation to whether or not a search engine could itself be held liable for
trade mark infringement on the basis of making keywords available to persons other than the
trade mark owner, in the UK a claimant would need to show that the search engine falls
within s10 TMA (or that the search engine authorised the infringement). Unlike in the US,
there is no doctrine of contributory infringement. As Smith comments, there is generally little
consensus in the US cases over whether sale of a trademarked keyword search term
18
Internet Law and Regulation, 4th Edition, Graham JH Smith, Sweet & Maxwell.
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constitutes a use in commerce for trade mark infringement purposes19. In the UK it seems
doubtful that such activity would count as use of a trade mark for such purposes.
[Wordstuffing] This involves formatting text on a webpage so it appears in the same colour
as the page background, such that the text is not actually visible to the web user. As the text is
still present on the page it will be indexed and picked up by search engines. Wordstuffing
would probably fall to be analysed in the same way as metatags. Indeed, in the Phones4u
case20, the trial judge treated hidden text as a form of metadata, though he found that the
claimants had not, due to lack of evidence, made out a case of deception in this and other
respects. Though the judge’s general approach to the evidence was overturned on appeal, the
wordstuffing aspects were not specifically referred to by the Court of Appeal21.
[Domain names] Finally, it is worth mentioning abusive domain name registrations. It is
possible to infringe a trade mark (whether registered or unregistered) by the use of a domain
name (BT Plc and Others v One In A Million Limited22). Trade mark owners are able to seek
the transfer of a domain name to themselves where that domain name is identical or
confusingly similar to their un/registered trade mark and there is an element of bad faith in the
use or registration of that name (for more information, see WIPO's Domain Name Dispute
Resolution Service based on the Uniform Dispute Resolution Policy. In the UK, the relevant
authority is Nominet which deals with the registration of .uk domains).
iii.
One category of confusion on the internet is “initial interest confusion”. Please
explain the details of initial interest confusion and the cases to which it applies. In
particular, please explain any major court decisions related to initial interest
confusion. What is the generally accepted idea on the relationship between initial
interest confusion and free-riding?
Initial interest confusion arises in US case law concerning the prohibition of trade mark
infringement under the Lanham Act as conduct which is ‘likely to cause confusion, or to
19
Ibid at para 3-105.
20
(1) Phones 4u Limited (2) Caudwell Holdings Limited v (1) phone4u.co.uk Internet Limited (2)
Abdul Heykali and other [2005] EWHC 334.
21
[2006] EWCA Civ 244.
22
[1999] 1 WLR 903.
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cause mistake, or to deceive’23. It covers conduct whereby the defendant gains credibility in
the eyes of consumers in initial phases of a sale because of the association the conduct leads
to between the defendant and claimant. In other words, it concerns pre-sale confusion, which
does not persist into the actual sale itself.
The Brookfield case referenced in question (1) (ii) is the first US case where a court explicitly
held that initial interest confusion was a sufficient ground on which to found an action for
trade mark infringement, even where there was absolutely no likelihood of actual confusion.
The claimant provided services including an online searchable movie database called
‘MovieBuff’, and registered the name as a trade mark. The defendant had a searchable
entertainment database on its website to help its customers to locate movies to rent, and used
the word ‘moviebuff’ in the keyword and description metatags for its website. As a result, its
website was listed as a search result when a user entered the search term ‘moviebuff’. The
Court held the use of ‘moviebuff’ in the defendant’s metatags infringed the claimant’s trade
mark.
Though generally in favour of the initial interest confusion doctrine, Allgrove and O’Byrne24
argue that the Court in Brookfield applied the doctrine wrongly in an internet context: “there
was no misrepresentation, and if there had been, there was no confusion, or association drawn
by consumers (due to their understanding of the fallibility of search engines), or any
association that was not legitimate as comparative advertising”.
Likewise, Smith suggests that on the basis of the Reed case, judges in the UK ought to be
unwilling to find that confusion exists where a user is taken to a website as a result of a search
engine hit generated by use of a third party’s trade mark in a metatag, if it is clear when the
user reaches the site that it is not connected with that of the trade mark owner25. There is a
difficulty in showing confusion because the web user does not expect only to receive hits for
sites connected with the company whose name he has entered into the search engine. As
23
15 USC s1114, 1125.
24
“Pre-sale misrepresentations in passing off: an idea whose time has come or unfair competition by
the back door”, JIPL&P, Vol. 1, No. 6, p.413.
25
Op. cit n.15.
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Smith points out26, a website can appear as a hit in a search results table for a number of
reasons: misuse of a metatag, an idiosyncrasy of the search algorithm, or an innocent
reference to the word in e.g. a news report. The user is unlikely to assume that every hit on the
list emanates from the trade mark owner, so why, Smith asks, should he make such an
assumption in cases where the hit appears as a result of a misused metatag?
Bainbridge echoes this view27. Where infringement under s10(2) is alleged, initial interest
confusion is not sufficient in the UK because confusion for the purposes of that section must
be confusion as to origin. Persons picking up the wrong website because of its embedded
metatags will quickly realise that it is not the website they were seeking.
Judicial treatment of the initial interest confusion doctrine of the UK is very limited. Initial
interest confusion was raised at first instance in L'Oreal SA and others v Bellure NV and
others28, but the conduct complained of was not internet based. The defendants produced
cheap, smell-alikes of famous perfumes with allegedly infringingly similar packaging and
names. The allegation in this context was that that consumers were initially attracted to the
defendants' products because they were confused by similarities in the combination of
fragrance, names and packaging into the mistaken belief that they were, or were connected
with, the original perfumes (e.g. when looking on internet sites); that before they purchased
they realised that they were mistaken; but nonetheless bought the products in order to give
them a try (to assess how close they are to the original perfumes and whether they could be
substituted for the original perfumes). However, the allegation was not pressed at trial as there
was no evidence to support it, and therefore the Court did not comment on it.
iv.
Enforcement of a registered trademark will be limited if the trademark owner fails to
use the trademark for a certain amount of time. On the Internet, however, will a
trademark owner be excused from nonuse as long as he/she publishes the trademark
on a website? Please explain, focusing on relevant decisions on cancellation
proceedings based on nonuse and court decisions.
26
at para 3-101.
27
Intellectual Property, 5th Edition, 2007, Longman.
28
[2006] EWHC 2355.
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Under the TMA, a registered trade mark may be revoked for non-use. We set out below the
relevant section of the TMA in full. The non-use provisions are highlighted in bold:
“46. - (1) The registration of a trade mark may be revoked on any of the following grounds(a) that within the period of five years following the date of completion of the
registration procedure it has not been put to genuine use in the United Kingdom,
by the proprietor or with his consent, in relation to the goods or services for
which it is registered, and there are no proper reasons for non-use;
(b) that such use has been suspended for an uninterrupted period of five years,
and there are no proper reasons for non-use;
(c) that, in consequence of acts or inactivity of the proprietor, it has become the
common name in the trade for a product or service for which it is registered;
(d) that in consequence of the use made of it by the proprietor or with his consent in
relation to the goods or services for which it is registered, it is liable to mislead the
public, particularly as to the nature, quality or geographical origin of those goods or
services.
(2) For the purpose of subsection (1) use of a trade mark includes use in a form
differing in elements which do not alter the distinctive character of the mark in
the form in which it was registered, and use in the United Kingdom includes
affixing the trade mark to goods or to the packaging of goods in the United
Kingdom solely for export purposes.
(3) The registration of a trade mark shall not be revoked on the ground
mentioned in subsection (1)(a) or (b) if such use as in referred to in that
paragraph is commenced or resumed after the expiry of the five year period and
before the application for revocation is made.
Provided that, any such commencement or resumption of use after the expiry of
the five year period but within the period of three months before the making of
the application shall be disregarded unless preparations for the commencement
or resumption began before the proprietor became aware that the application
might be made.
(4) An application for revocation may be made by any person, and may be made either
to the registrar or to the court, except that (a) if proceedings concerning the trade mark in question are pending in the
court, the application must be made to the court; and
(b) if in any other case the application is made to the registrar, he may at any
stage of the proceedings refer the application to the court.
(5) Where grounds for revocation exist in respect of only some of the goods or
services for which the trade mark is registered, revocation shall relate to those goods
or services only.
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(6) Where the registration of a trade mark is revoked to any extent, the rights of the
proprietor shall be deemed to have ceased to that extent as from(a) the date of the application for revocation, or
(b) if the registrar or court is satisfied that the grounds for revocation existing
at an earlier date, that date.”
The factors around revocation for non-use are set out in the Ansul case29, as amplified in La
Mer30 in the ECJ, and in the subsequent appeal to the English Court of Appeal31. In Ansul, the
ECJ held that “genuine use” must be use that is not merely token and must be consistent with
the essential function of a trade mark to identify the origin of goods/services. Further, use
must be in the marketplace for the relevant goods/services and not merely internal use. Is the
use “viewed as warranted in the economic sector concerned to maintain or create a share in
the market for the goods/services protected by the mark”? However, following the Court of
Appeal’s judgment the position in the UK according to Kerly would appear to be that any use
of a mark which is: (a) non-sham; and (b) external to the registered proprietor’s undertaking
will constitute genuine use.
According to the Trade Mark Handbook32, it appears clear that use of a registered trade mark
on the proprietor’s internally accessed intranet would not be sufficient to save a mark from
revocation. Further, the Handbook submits that the following types of use would not be
enough either: (i) mere registration of a domain name for a simple holding page which states
e.g. “the domain name X has been registered”; or (ii) registration of a domain name (e.g.
www.X.com) for a site of the trade mark owner branded by reference to a different sign (e.g.
‘Y’), where no reference is made on the site accessed to the registered trade mark X.
However, the Handbook considers registration of a domain name for an informational site
branded by reference to the registered mark itself should be enough to show genuine use,
especially where the site contains references to the goods/services for which the mark is
registered, and the mark itself is displayed on the home page or goods themselves. By
29
Ansul v Ajax [2003] ECRI-2349 (C40/01).
30
La Mer Technology Inc v Laboratoires Goemar SA [2004] ETMR 640
31
[2006] FSR 5.
32
R.30: August 2006, Sweet & Maxwell, at para 106-013.
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extension, use of a mark on a site from which goods/services covered by the registration can
be purchased would be enough to defeat a non-use application for revocation.
It is worth pointing out that use must be: trade mark use (i.e. acting as an indicator of origin);
on the relevant goods/services; and in the relevant territory. In respect of trade mark use, it
will be recalled that the Reed judgment left open whether use of a trade mark as a metatag
would constitute use for the purposes of defeating a revocation action for non-use. Kerly33
suggests it is difficult in this regard to see how “invisible” or metatag use could be use in
order to create or preserve an outlet for goods and services as required by Ansul. As regards
territory, where the use of the mark is in website advertising for a business whose physical
location is outside the UK, the question arises as to whether that suffices to maintain a
registration in the UK. It has been held in this context that the answer depends on an intention
by the person using the mark to attract customers from the UK34. The website on which use of
the mark is made must be specifically aimed at and used by consumers in the UK.
As to providing evidence of use on the internet, please refer to the answer to question (4) (ii)
below.
(2)
What are the typical requirements for establishing dilution on the Internet? Please
explain the historical transition of protection against dilution while referring to court
decisions that provide a basis for the interpretation of statutory provisions and court
decisions that have brought changes to the interpretation of legal protection on the
Internet.
There are no special requirements concerning the internet for a claimant to establish dilution
as a head of trade mark infringement. Nor are we aware of any cases that deal with the
interpretation of legal protection on the internet in this context. The claimant must therefore
satisfy the court that the ordinary dilution requirements set out in s10(3) are fulfilled:
“(3) A person infringes a registered trade mark if he uses in the course of trade in relation
to goods or services a sign which –
(a) is identical with or similar to the trade mark,…
33
Op.cit. n.6, para 23-067.
34
Euromarket Designs v Peters, op. cit. n.4.
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where the trade mark has a reputation in the United Kingdom and the use of the sign,
being without due cause, takes unfair advantage of, or is detrimental to, the distinctive
character or the repute of the trade mark.”
This section may be relied on by owners of trade marks with a reputation, whether the sign is
used in relation to goods or services which are the same, similar or dissimilar to those in
respect of which the trade mark is registered. Although there is no requirement to prove
confusion35, the ECJ has held that there must be elements of visual, aural or conceptual
similarity between the marks in question, and that it is sufficient that the relevant section of
the public establishes a link between the sign and the mark as a result of the similarity
between the two without necessarily confusing them36.
So, for example, if a pornographic website displays the registered trade mark SONY on its
pages in a way that causes the mark to become tarnished in the mind of the consumer,
infringement under s10(3) is likely to be made out.
The provision was previously limited to use of the sign in relation to goods or services which
were dissimilar to those in respect of which the trade mark was registered. However, in
Adidas-Salomon and Davidoff37 the ECJ changed this, holding that if such were the case, this
meant well-known marks were afforded less protection where the infringing sign was used for
identical/similar goods, where the claimant would have to prove confusion under section
10(2), than when it was used for non-similar goods. The TMA was amended to remove
reference to dissimilar goods following these ECJ rulings by Regulation 7 of The Trade Mark
(Proof of Use, etc.) Regulations 200438.
There have been two recent references to the ECJ by English Courts in this area. The first is
in the L'Oréal case, involving "look-alike" and "smell-alike" perfumes39. In particular, Jacob
LJ on appeal has asked the ECJ to rule on the meaning of the term "unfair advantage" in
35
Premier Brands UK Ltd v Typhoon Europe Ltd and another [2000] FSR 767.
36
Adidas-Salomon AG and others v Fitnessworld Trading Ltd, [2004] E.T.M.R. 10.
37
Ibid; Davidoff SA and Zino Davidoff SA v Gofkind Ltd, [2003] E.T.M.R. 42.
38
SI 2004/946.
39
L'Oréal SA and others v Bellure NV and others [2006] EWCH 2355.
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s10(3). The first instance decision was thought to have made it easier for brand owners to use
this section to prevent the sale of cheap imitation products, but we must now await the ECJ’s
decision in this case.
The second reference by the Court of Appeal was in the Intel case40. Note that in this case the
questions referred relate to the interpretation of Article 4(4)(a) of the Trade Marks Directive
(which is equivalent to section 5(3) of the TMA). S5(3) mirrors s10(3), but concerns
registrability of trade marks as opposed to infringement:
“5. (3) A trade mark which –
(a) is identical with or similar to an earlier trade mark,…
shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the
United Kingdom (or, in the case of a Community trade mark or international trade mark
(EC) in the European Community) and the use of the later mark without due cause would
take unfair advantage of, or be detrimental to, the distinctive character or the repute of the
earlier trade mark.”
The questions referred by the Court concern the nature of the link that must be found between
two marks in order to give grounds for a declaration of invalidity of the later mark, and the
circumstances required to justify a finding of detriment to the distinctive character of the
earlier mark.
The mark TOYS AREN'T US for a charity promoting the welfare of dogs was refused
registration under s5(3) as it was held to be detrimental to the TOYS 'R' US mark. It was
decided that this particular use would have resulted in TOYS 'R' US becoming associated
with cruelty to animals41. Since then, the High Court confirmed that there must be a real, as
opposed to a theoretical, possibility of unfair advantage or detriment resulting from the use of
the mark applied for, and this must be supported by evidence42. We await further guidance
from the ECJ.
40
Intel Corporation Inc v CPM United Kingdom Limited [2007] EWCA Civ 43.
41
Application no 2281390 by the National Canine Defence League to Register a Trade Mark and
Opposition under No 90127 by Geoffrey, Inc, 29 July 2003. Note there is no objection in principle to
parody trade marks.
42
Mastercard International Inc v Hitachi Credit (UK) Plc [2004] EWHC 1623.
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The ECJ has considered the meaning of “reputation” under ss5(3) and 10(3), holding that in
order to have "reputation", a mark must be known to a significant part of the public concerned
in respect of the products or services covered by the mark43. The make up of the relevant
public depends on the product or service being marketed. When considering the relevant
public, the national courts should consider factors such as the market share associated with
the trade mark, the intensity, geographical extent and duration of its use and the size of the
investment made by the undertaking promoting the mark. There is no reason why use on the
internet cannot count in this context, provided the requirements discussed in the answer to
question (1) (iv) are met.
Infringement by use of metatags by dilution under section 10(3) may be more likely to occur
than in the Reed case, which was decided under section 10(2). This is because there is no
requirement to show confusion under s10(3). The claimant would, as discussed in the answer
to question (1)(ii) above, first have to persuade the Court that metatag use is trade mark use at
all for the purposes of infringement. Assuming he does this, where use by a defendant of a
metatag leads consumers to a website resulting in an association (though not necessarily
confusion as to origin) between the claimant’s and defendant’s trade (‘blurring’) or where the
material available on the defendant’s website tarnishes the claimant’s trade mark
(‘tarnishing’), the claimant would be able to bring an action.
So, to adapt the previous example, if a third party used SONY as a metatag on a pornographic
website, although this would not give rise to confusion, Sony might be able to bring an action
under s10(3) if it could show (in addition to the necessary substantial reputation) e.g. that the
listing of a pornographic website in a search results table following a search for ‘SONY’ were
detrimental to the SONY mark. Nevertheless, Bainbridge acknowledges that this may be more
difficult to show than in non-internet cases given the nature of the internet, the frequency of
spurious hits in search results tables and the fact that users of search engines are probably
more likely to make distinctions between different websites44. The kinds of questions to ask
are whether the presence of a pornographic website alongside ‘genuine’ Sony and other
43
General Motors Corp v Yplon SA , Case C-375/97, 14 September 1999, discussing the mark
CHEVY.
44
Op.cit. note 24.
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consumer electronics websites in a search results list make the consumer think any worse of
the Sony mark, or whether they simply ignore that listing, thinking it due to a searching
anachronism?
(3)
Please explain in detail (e.g., the provisions of laws or regulations applied) cases in
which a criminal penalty was imposed for the infringement of intellectual property
rights on the Internet, if any. In particular, have there been any cases in which a
criminal penalty has been imposed for trademark infringement (either a registered or
unregistered trademark)? If so, please outline the requirements based on which
criminal penalty was applied in such cases.
The nature of the English system is such that civil and criminal remedies are largely kept
separate. Accordingly, the main body of case law in respect of online infringement of
intellectual property rights has been brought in order to claim commercially useful civil
remedies such as an injunction or damages rather than for criminal punishment. There are no
reported cases setting out infringement of intellectual property rights on the internet to our
knowledge.
Nonetheless the TMA does have provisions for criminal infringement and these are set out at
s.92 in relation to unauthorised use of the trade mark in relation to goods (this does not apply
to services) as follows:
(1)
A person commits an offence who with a view to gain for himself or
another, or with intent to cause loss to another, and without the consent of the
proprietor—
(a)
applies to goods or their packaging a sign identical to, or likely
to be mistaken for, a registered trade mark, or
(b)
sells or lets for hire, offers or exposes for sale or hire or
distributes goods which bear, or the packaging of which bears, such a
sign, or
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(c)
has in his possession, custody or control in the course of a business any
such goods with a view to the doing of anything, by himself or another, which
would be an offence under paragraph (b).
(2)
A person commits an offence who with a view to gain for himself or another, or
with intent to cause loss to another, and without the consent of the proprietor—
(a)
applies a sign identical to, or likely to be mistaken for, a registered
trade mark to material intended to be used—
(b)
(i)
for labelling or packaging goods,
(ii)
as a business paper in relation to goods, or
(iii)
for advertising goods, or
uses in the course of a business material bearing such a sign for
labelling or packaging goods, as a business paper in relation to goods, or for
advertising goods, or
(c)
has in his possession, custody or control in the course of a business any
such material with a view to the doing of anything, by himself or another,
which would be an offence under paragraph (b).
(3)
A person commits an offence who with a view to gain for himself or another, or
with intent to cause loss to another, and without the consent of the proprietor—
(a)
makes an article specifically designed or adapted for making copies of
a sign identical to, or likely to be mistaken for, a registered trade mark, or
(b)
has such an article in his possession, custody or control in the course of
a business,
knowing or having reason to believe that it has been, or is to be, used to produce
goods, or material for labelling or packaging goods, as a business paper in relation to
goods, or for advertising goods.
(4)
A person does not commit an offence under this section unless—
(a)
the goods are goods in respect of which the trade mark is registered, or
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(b)
the trade mark has a reputation in the United Kingdom and the use of
the sign takes or would take unfair advantage of, or is or would be
detrimental to, the distinctive character or the repute of the trade mark.
s.93 TMA confers powers on the local weights and measures authorities to enforce the
provisions of s.92.
In order for an offence to be committed under s.92, there must be a civil infringement of the
trade mark45. In contrast to the requirements for civil infringement under s.10 TMA, s.92 does
not specify that the infringing use must be in the course of trade. However, Lord Nicholls
noted in R v Johnstone that in practice, proof of use in the course of trade is likely to be
required under s.92 to show that the infringing act is carried out “with a view to gain for
himself or another, or with intent to cause loss to another”. This necessarily involves some
kind of commercial act.
The test for infringement in s.92, referring to the mark as used by the defendant being ‘likely
to be mistaken’ for the registered mark, is a narrower test than that set out in s.10 (although
both tests must be satisfied). However, the burden of proof to be satisfied in criminal
proceedings is that of “beyond resonable doubt” which is higher than the civil burden of
proof, “on the balance of probabilities”.
Under s.6(1) of the Prosecution of Offences Act 1985 any person can bring a prosecution
under s.92 TMA. However, there has been some disagreement as to whether a corporate body
would constitute a person for the purposes of this provision46. The Director of Public
Prosecution may take over any such prosecution and is under no obligation to continue to
pursue the case47.
45
House of Lords case of R v Johnstone [2003] FSR 42
46
R v Ealing Justices, ex p Dixon [1990] 2 QB 91
47
s.6(2) Prosecution of Offences Act 1985
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Under s.92 commission of an offence can only be found in respect of a registered mark and
accordingly, any mark which is revoked for invalidity would prevent the commission of such
an offence.
Although, to our knowledge there are no reported cases to date in respect of criminal
infringement of intellectual property rights on the internet, actions to use criminal sanctions to
prosecute online infringers by local weights and measures authorities are beginning to be used
in practice in the UK. Reports were published in the media in October 2007 in relation to TV
Links, a website providing links to sites providing illegal film content48. The infringing film
content had been recorded using handheld devices at cinemas in breach of copyright. This led
to the arrest of one individual. However, to our knowledge to date no reports of the court case
have been published and therefore it is unclear whether the arrest was made under the
provisions of Copyright, Designs and Patents Act 1988 (“CDPA”) or under other legislation.
S.107 and s.109 of the CDPA set out similar provisions to s.92 and s.93 TMA in respect of
criminal offences relating to copyright.
We are also aware of reports of search warrants and arrests being undertaken in relation to
material sold through eBay in infringement of intellectual property rights49. A recent example
of cross border criminal enforcement was the closure of the file-sharing site OiNK.cd for
copyright infringement in October 2007. One person was arrested on suspicion of conspiracy
to defraud and copyright infringement in the UK while the site’s servers were seized in
Amsterdam. No details of the criminal charges have been published and accordingly, it is not
clear whether the criminal charges were brought under the criminal provisions of the CDPA
or otherwise.
48
See www.fact-uk.org.uk/site/latest_news/index.htm for the press report
49
High Court Case of Heidelburg Graphic Equipment Ltd and another v Hogan and others [2004]
EWHC 3090
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(4)
In addition to the points mentioned above, if there are any matters that are considered
to be problematic in the UK, please explain. For example, please explain the following
points.
i.
Are there any arguments on the need to regulate the use of trademarks, etc. in a
virtual society on the Internet such as “Second Life” or on the need to apply the
provisions on dilution against such use? Or can the current legal system sufficiently
deal with such use? Please explain by citing academic theories and court decisions.
(If there are any differences between registered trademarks and unregistered
trademarks in that regard, please explain such differences.)
The increasing popularity of virtual societies/virtual worlds such as Second Life, The Sims
Online, 3B and the recently released Halo 3 has given rise to much attention in the media,
some of which has focused on the pertinent legal issues. As virtual societies are a relatively
new phenomenon, there is no UK case law providing specific guidance on these legal
questions. Neither is the law at all settled as regards these issues in the US, although to our
knowledge at least two sets of proceedings have now been brought there concerning activities
within Second Life.
In the US, proceedings have been brought by Eros LLC in relation to ‘in-world conduct’, i.e.
conduct taking place within the virtual society. Eros is accusing an entity known as ‘Catteneo’
of infringing its copyright and trade mark rights by selling an imitation of its virtual bed, the
‘Eros SexGen Platinum Base Unit’ bed, under its ‘SexGen’ mark (an application for which
was filed at the US Trade Marks and Patent Office in June 2007)50. The claimant had been
selling the bed on Second Life and discovered he was being undercut by an alleged copy of
that bed, also being commercialised on the Second Life platform.
Unusually for internet platform providers, Second Life's terms of use make clear that players
"retain copyright and other intellectual property rights with respect to Content [they] create in
Second Life". Eros claims that by selling an imitation bed under the SexGen mark, Catteneo
is, in contravention of the Lanham Act in the US, falsely designating the origin of the beds,
and making false and misleading descriptions and representations of fact in the course of
selling these beds, which has caused confusion, mistake and deception as to the origin,
sponsorship or approval by Eros of the beds.
50
Eros LLC vs. John Doe a/k/a Volkov Catteneo.
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Quite apart from the legal issues, the case illustrates the practical difficulty in identifying the
correct defendant in an action for infringement in a virtual society where most users operate
anonymously. It has been reported that the claimant’s legal team spent four months
employing Internet Protocol address traces and private investigators to try to track down the
defendant, who is nevertheless still denying being the person behind Catteneo. We understand
the claimant had previously served subpoenas on Linden Research Incorporated in San
Francisco and Paypal Incorporated in San Jose to ask for information to enable them to
identify the defendant. Though Linden’s terms of service reserve the right for Linden to
disclose all information provided by or relating to Second Life users to third parties in
Linden’s sole discretion, this clearly does not create on obligation on Linden. We understand
Linden produced documents to comply with the subpoena, and Paypal indicated it would also
do so. However, the matter is apparently still at the pre-action disclosure stage, and the
defendant has missed the deadline to respond to the court papers. In another more recent
action relating to ‘in-world’ activity on Second Life, six major content creators have also filed
a suit in the US claiming copyright and trade mark infringement51. Neither of these suits has
yet proceeded to substantive argument on the merits, let alone judgment.
Discovering the true identify of virtual society users may require cooperation from a third
party, who will likely be one or more of: the host or operator of the virtual society; the
defendant’s ISP; and/or the provider of a related service (e.g. if the defendant provided an
email address in order to register as a user of the virtual society, the defendant’s email service
provider).
In the UK, a method exists for obtaining the identity of alleged infringers: the Norwich
Pharmacal order52. Even where a third party, such as those listed above, is not itself
committing trade mark infringement, it may be possible to obtain a court order against them
for disclosure of an infringer’s identity. In such a case, the third party will have some link to
the infringing activities, but will be otherwise innocent. As such, the claimant will normally
have to pay the third party’s legal costs and other costs of complying with the order. It should
51
Eros LLC and others v Thomas Simon aka Rase Kenzo
52
This type of order was first awarded in Norwich Pharmacal Co v Customs and Excise
Commissioners [1974] 1 AC 133.
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be noted that it is not possible to obtain a Norwich Pharmacal order: (i) against a third party
with no connection with the infringing acts; (ii) where an advance disclosure order is
available against the intended defendant; or (iii) where the court is not satisfied that making
the order would be a necessary and proportionate response in all the circumstances.
In Totalis v Motley Fool53 the Court of Appeal considered a general approach that courts
should follow in relation to disclosure applications such as Norwich Pharmacal orders. These
are that a court should: consider the rights and freedoms or legitimate interests of the ‘data
subject’ (within the meaning of the Data Protection Act 1998 – in these cases, the alleged
infringer); be satisfied that disclosure is necessary in the interests of justice; and not make an
order which unjustifiably invades the rights of an individual to respect for his private life,
especially when that individual is not before the court. Additionally, it is seen by the courts as
legitimate for a website operator who has reasonably agreed to keep information confidential
and who is not implicated or involved in a wrongful act to refuse to voluntarily hand over that
information. It is for the applicant to satisfy the court that an order should be made, not for a
defendant to take a view which could turn out to be wrong.
Linden’s terms of service also provide that use of Second Life is governed by California law
and that disputes between Linden Lab and its users must be settled by arbitration in
California. However, the terms are silent on the issue of dispute resolution between users
themselves, and would not apply to claimants who are not Second Life users. According to
Britton54, Linden Lab recently modified Second Life’s terms of service to permit residents to
settle minor disputes with the company by a variety of means, including in-world legal
proceedings. These new provisions have yet to be tested, and no further guidance is given on
which law applies.
On a practical level, claimants may be more likely to start suing the virtual world operators
direct (as opposed to suing them in order to obtaining disclosure under Norwich Pharmacal),
rather than suing the ‘virtual’ pirates. This can be more attractive for claimants as the virtual
world operators are usually identifiable and have greater resources if found liable for
53
[2001] 4 EMLR 750.
54
“Reality check: what is the law of virtual reality?”, Practical Law Company, 6 Nov 2007.
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damages55. However, there are two difficulties with this approach in the UK: first, the
claimant would have to pin an infringing act on the provider itself, such as e.g. authorising
infringement, which may be difficult in a trade mark context; and second, the potential for the
provider to shelter behind the ‘hosting’ provision in Regulation 17 of the Electronic
Commerce (EC Directive) Regulations 2002. That provision might enable a provider to
escape liability for damages or criminal sanctions (though not injunctions) where it does not
have actual knowledge of unlawful activity or information and, where a claim for damages is
made, is not aware of facts or circumstances from which it would have been apparent to the
provider that the activity or information was unlawful. Note also that under that Regulation
the provider would, upon obtaining knowledge or awareness of unlawful activity, need to act
expeditiously to remove or to disable access to the information (i.e. comply with ‘take down’
notices). The liability of a virtual world operator for the infringing conduct of its users is still
rather uncertain, according to Naylor and Jaworski56.
It might be that practical factors make some, but by no means all, of the legal arguments
irrelevant, as under the terms of service of Second Life, Linden has broad contractual rights to
modify the system at will, and to eject users for bad behaviour. This will of course depend on
the provider’s level of cooperation, which may be compromised where it is being asked to act
by content owners in respect of activities which may well not yet have been held by a court to
be unlawful (though note the obligation to comply with valid take down notices referred to
above). For example, Linden recently on its own initiative modified the software code that
runs Second Life to give users a full suite of digital rights management options, including the
ability to prevent their assets from being copied by others for any reason. Note that although a
Second Life Patent & Trademark Office has recently opened, it has no legal authority and it is
very doubtful what effective remedies virtual trade mark registrations could provide,
especially in the real world.
The question also arises what virtual uses of trade marks might amount to trade mark
infringement in the real world. Second Life users can buy all sorts of unauthorised digital
55
“A virtual reality”, Naylor, Legal Week, 7 June 2007.
56
“The tangled web of virtual marks”, Trademark World, June 2007.
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replicas of real world products, often in virtual outlets with the same branding as real world
shops. In most cases the seller does not have the authority of the trade mark owner. A trade
mark does not cease to be a trade mark just because it appears in an online dimension.
However, it might well be more difficult for a claimant to fulfil the requirements needed to
bring a successful trade mark infringement action in relation to virtual uses of marks for a
number of reasons. We refer to the answer to question 1(i) for the full text of s10 TMA which
governs trade mark infringement in the UK.
First, to bring an action based on a registered trade mark, the claimant would need to show
use of the mark by the defendant in the territory in which the mark is registered. So, for a UK
registered trade mark, the defendant’s use would have to take place in the UK. Current case
law suggests that to do this the infringing mark must be placed on a website by someone who
actively pursues commercial activities in the territory where the mark is registered57. In
relation to Second Life, a claimant could argue that sales by a user to other users based in the
jurisdiction fulfils this requirement.
Second, the claimant must establish that the defendant is using the mark in a trade mark sense,
i.e. in a way which indicates origin or which creates a material trade link in the consumer’s
mind between the goods/services and the trade mark owner. So, for example, if a defendant
sold a virtual Ferrari in Second Life bearing the Ferrari registered trade mark, does the use of
the mark indicate to the consumer that the virtual car originates from Ferrari or an
organisation economically linked to it (i.e. that the seller has been licensed by Ferrari)? A
defendant could seek to argue it is using the mark in a decorative manner, as an
embellishment, and/or to indicate that the virtual car is a faithful (albeit virtual) replica of the
full-sized car, rather than to indicate the virtual car came from Ferrari. Note in this regard the
ECJ in Adam Opel58 said that if use by a toy car manufacturer (the defendant) of the Opel
trade mark on toy cars was not perceived by the relevant public as an indication that the
products come from Adam Opel (the claimant trade mark owner) or an undertaking
economically linked to it, the referring court would have to conclude that use by the toy
57
Euromarket Designs Inc v Peters [2002] FSR 20; 1-800 Flowers Inc v Phonenames Ltd [2000]
ETMR 369.
58
Adam Opel v Autec AG [2007] E.T.M.R. 33.
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maker did not affect the essential function of the Opel trade mark as a trade mark registered
for inter alia toys (and was therefore not trade mark use). In that case, the evidence showed
that relevant German consumers took the mark as a reference to the life size car but not as
origin-identifying (i.e. they didn’t think the toy car came from Opel). This being the case with
‘real’ toy cars, it may be difficult to show consumers are deceived as to the origin of virtual
cars, though this will depend on the evidence.
Third, the claimant must show the defendant’s use is in the course of trade. In a Second Life
context this may not be overly problematic where items are traded every day in exchange for
Linden Dollars. The claimant’s argument is bolstered by the fact that Linden Dollars have an
exchange rate with, and can be sold in exchange for, a real life currency (the US Dollar).
Fourth, the claimant must show the mark is being used in relation to goods or services that are
identical or similar to the goods or services for which the allegedly infringed mark is
registered. A car manufacturer will have a trade mark registration for real life cars, and
perhaps also real life toy cars, but almost certainly not for virtual cars. It has not yet been
tested in court whether virtual goods or services are identical or similar to their real life
counterparts. However, it may be difficult for claimants who own a trade mark registration for
certain goods to show that the digital equivalents of those goods are covered by the
registration59. If the ECJ has held that a motor vehicle and a scale model of that vehicle are
not similar products60, it might be hard to argue that a motor vehicle and a virtual version of
that vehicle are similar.
The owner of a trade mark with the requisite reputation in the UK may be able to circumvent
some of the above difficulties by bringing an infringement claim under the dilution provision
contained in s10(3)61. This section may enable the owner to prevent others from using the
same or a similar trade mark even if the goods or services are unrelated. For more information
please refer to the answer to question (2) above. Indeed, the ECJ suggested in Adam Opel62
59
See Naylor and Jaworski in “The tangled web of virtual marks”, Trademark World, June 2007.
60
See paragraph 34 of Adam Opel.
61
Please refer to the answer to question (1)(i) for the full text of this provision.
62
At paragraph 34.
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that the use by the toy car manufacturer may have been susceptible to prevention under
Article 5(2) of the Trade Mark Directive63, the equivalent of s10(3) in the UK. Although there
are additional pitfalls, such as the need to show sufficient reputation and unfair
advantage/detriment, the suggestion is that trade mark owners in this context may be better
off bringing a claim under the relevant dilution provision.
Naylor and Jaworski64 suggest trade mark owners may also improve their position by filing
any new marks in additional classes such as electronically delivered games (class 9), games or
playthings (class 28) or entertainment services by way of online interactive games (class 41).
It is worth recalling however that once registered, the mark might at a later date be vulnerable
to revocation where there is non-use in respect of some or all of the goods or services in
respect of which the mark is registered.
In relation to unregistered rights, please refer to the answer to question (1)(i) for an
explanation of their protection under the law of passing off in the UK. It will be recalled that
there must be a relevant misrepresentation, or conduct that is likely to mislead or deceive the
relevant section of the public. The analysis is similar to that for trade mark use discussed
above in relation to cars. Would the sale of a virtual Ferrari cause relevant consumers to be
confused into thinking the virtual car emanated from Ferrari or was connected in some
economic way to that company? Even then it may be difficult for Ferrari to show what loss
they have suffered in this regard if they do not themselves have a virtual car selling presence,
though Ferrari would presumably seek damages in the form of a reasonable licence fee.
ii.
Can a trademark acquire a secondary meaning as a result of being used on the
Internet alone? If so, please explain what kinds of conditions are required on the
Internet by indicating actual case examples (e.g., a large number of accesses from a
wide area).
We take this question to be an inquiry into whether a trade mark can acquire distinctive
character as a result of its being used solely on the internet. As will be recalled from our
responses to Part 1 in relation to unconventional trade marks, a trade mark which is devoid of
any distinctive character will not be granted registration (section 3(1)(b) TMA). However, a
63
Council Directive 89/104/EEC.
64
Op.cit. n.53.
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trade mark shall not be refused registration by virtue of that provision if, before the date of the
application for registration, it has in fact acquired a distinctive character as a result of the use
of made of it – section 3 TMA.
“3. - (1) The following shall not be registered (a) signs which do not satisfy the requirements of section 1(1),
(b) trade marks which are devoid of any distinctive character,
(c) trade marks which consist exclusively of signs or indications which may serve, in
trade, to designate the kind, quality, quantity, intended purpose, value,
geographical origin, the time of production of goods or of rendering of services, or
other characteristics of goods or services,
(d) trade marks which consist exclusively of signs or indications which have become
customary in the current language or in the bona fide and established practices of the
trade:
Provided that, a trade mark shall not be refused registration by virtue of paragraph (b),
(c) or (d) above if, before the date of application for registration, it has in fact acquired a
distinctive character as a result of the use made of it.”
Once an objection to registration is made out the onus is on the applicant to show the
requirements of this proviso are satisfied. We are not aware of any Court or Registry
decisions concerning the conditions required for use solely on the internet to satisfy the
proviso. The general test is set out in Windsurfing Chiemsee v Boots and others65, in which
the ECJ provided guidance as to the conditions which should result in a finding that a trade
mark has acquired a distinctive character through use. The court found that: “If the competent
authority finds that a significant proportion of the relevant class of persons identify goods as
originating from a particular undertaking because of the trade mark, it must hold the
requirement for registering the mark to be satisfied.” The court also stated that:
“In assessing the distinctive character of a mark in respect of which registration has been
applied for, the following may also be taken into account:
a) the market share held by the mark;
b) how intensive, geographically widespread and long-standing use of the mark has been;
c) the amount invested by the undertaking in promoting the mark;
65
[1999] ETMR 585.
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d) the proportion of the relevant class of persons who, because of the
mark, identify goods as originating from a particular undertaking;
e) statements from chambers of commerce and industry or other trade
and professional associations”.
The relevant criteria are set out and discussed in detail at paragraph 45, chapter 3 of the UK
Registry Practice Manual.
Clearly, mere use as a metatag will not be sufficient as the consumer will not see the mark –
no distinctiveness will be accruing to it. The Handbook suggests use as part of a domain name
will not assist unless there is evidence that the goods/services have been offered for sale under
the domain name, e.g. by use of the mark on the website itself66. It would appear that the use
must now be in the whole of the UK (rather than a local part of it)67, and the distinctiveness
ought to be acquired through use of the mark as a trade mark, rather than e.g. in a descriptive
or decorative manner68. According to the ECJ in Societe des produits Nestle SA v Mars UK
Ltd69, this means “use of the mark for the purposes of the identification, by the relevant class
of persons, of the product or services as originating from a given undertaking.” So the views
of the consumer must be taken into account. Further, the use must be in relation to the
goods/services covered by the registration70. As to what amount of acquired distinctive
character is necessary to show, according to Morcom et al71, this will depend to some extent
on such matters as the nature of the mark (how non-distinctive is it before the cited use) and
the goods/services concerned, as well as the period, extent and amount of use.
The evidence of use necessary to be shown will vary, depending on the facts of each case, and
the burden of establishing factual distinctiveness will generally be proportionate to the
66
At para 107-27.
67
Bovemij Verzekeringen NV v Benelux Merkenbureau Case C-108/05; Registry Practice Amendment
Note PAN 6/07.
68
Philips v Remington [2003] RPC 2.
69
[2005] E.T.M.R. 96.
70
The Handbook, Op. cit. n.29, para 107-27.
71
Op.cit. n.3.
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strength of the prima facie objection. Generally speaking, evidence of internet use of trade
marks can be difficult to demonstrate in a meaningful manner. This is because it can be hard
to show exactly what get-up/branding was used on a website at a particular time, as website
owners do not routinely take historical snapshots of their site. Further, although servers can
show the numbers of hits a website has had in a given period, this information is sometimes
artificially inflated for technical reasons. This is because most web servers record as a hit the
delivery to a client machine of any discrete file, of which there may be as many as 100 on one
web page. It is therefore difficult to know the number of times a particular page, and therefore
a particular trade mark, on a website has been displayed. Further, automatic or internal
generation of hits (which would not count for these purposes) are not always distinguished
from ‘outside’ hits. Even if, instead, the number of IP addresses used to access a website is
taken as the indicator, this can also suffer from technical imperfections, such as the fact that
more than one user could share an IP address. The Handbook72 suggests generating visitor
statistics using cookies may be a better way to obtain reliable statistics on a user-by-user
basis.
To conclude, there is no reason in principle why use of the mark solely on the internet cannot
result in its acquiring distinctive character, provided the criteria detailed above are fulfilled
and the applicant/registrant can overcome the evidential difficulties. The applicant’s position
is likely to be improved if he can demonstrate sales of the relevant goods or services from a
website on which the trade mark is displayed.
72
Op.cit., n.29.
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II.
(1)
Dealing with Trademark Infringement Across National Borders
When a UK court is to determine whether or not information transmitted on the
Internet from a server located in a foreign country infringes a trademark used in UK,
the court must first indicate whether or not it has jurisdiction. While also referring to
these court decisions, please explain the trend of the UK courts’ determination on
jurisdiction over such cases and any related academic theories.
The Brussels Jurisdiction and Judgments Regulation (the “Regulation”)73 is directly
applicable to all European states and was incorporated into the UK Civil Jurisdiction and
Judgments Act 1982 by amendment74. S16 Civil Jurisdiction and Judgments Act 1982 refers
to the Regulation in respect of allocation of jurisdiction. Art. 2 of the Regulation governs
determination of jurisdiction across Europe and provides that where a defendant is domiciled
in a particular Member State, the courts of that Member State must assume jurisdiction. The
court has no discretion in this regard.
Art. 5(3) of the Regulation is a limited exception to Art. 2 and provides that in the case of a
tort, the courts of the state in which the tort was committed or the harmful event occurred
must accept jurisdiction75. Trade mark infringement is a tort and as such Art. 5(3) will apply.
As a territorial right, infringement of a UK trade mark necessarily means that the tort and the
harmful event (damage to the goodwill in the trade mark or loss of business) will both occur
in the UK. The harmful event has been interpreted as only extending to the immediate victim
and does not include indirect victims suffering damage76.
The wording of Art. 5(3) of the Regulation stated that an action could be brought against a
foreign defendant “in the courts in the place where the harmful event occurred or may occur”.
73
Council Regulation No 44/2001 of 22 December 2000 on jurisdiction and the recognition and
enforcement of judgments in civil and commercial matters
74
Civil Jurisdiction and Judgments Regulations 2007 amended the definition of “Regulation” under
the Civil Jurisdiction and Judgments Act 1982 to refer to Council Regulation No 44/2001
75
Dumez France v Hessische Landesbank [1990] ECR 49 ECJ
76
Mecklermedia Corp v DC Congress GmbH [1998] 1 All ER 148 – Jacob J in the High Court
referring to the European Court of Justice case of Dumez France v Hessische Landesbank [1990]
ECR 49.
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However, Art. 5(3) of the Brussels and Lugano Conventions77 which were incorporated into
the Civil Jurisdiction and Judgments Act 1982 do not include the wording “or may occur” and
it was therefore unclear whether the UK Courts would have jurisdiction in respect of a
threatened infringement. This was clarified by the Scottish court78 in Bonnier Media Ltd v
Greg Lloyd Smith and Kestrel Trading Corp79 which confirmed that Article 5(3) also applies
to threatened infringement.
In interpreting Art. 5(3), the English courts have only accepted jurisdiction where the
claimant can show that there is a “good arguable case” under Art. 5(3). A “good arguable
case” has been defined as “a strong probability that the claim falls within the letter and spirit”
of the requirements for trade mark infringement80. Where a claimant is unable to show that it
has a good arguable case, the court will decline jurisdiction.
The factors required to establish trade mark infringement are set out in the national
legislation. S.9(1) TMA states that “The proprietor of a registered trade mark has exclusive
rights in the trade mark which are infringed by use of the trade mark in the United Kingdom
without his consent”. This differs from Art.5 of the Trade Marks Directive81 (“Directive”) and
s.10(1) TMA (set out in full above at Part I, Q1(i)) which states “A person infringes a
registered trade mark if he uses in the course of trade…”. The requirement for use to be ‘in
the course of trade’ is omitted from s.9 TMA. The High Court has adopted an interpretation of
the TMA consistent with the Directive by stating that s.9 TMA is merely a preamble to s.10
which sets out the substantive provisions82. Accordingly, ‘use in the course of trade’ is an
77
Brussels Convention of 27 September 1968 and The Lugano Convention of 16 September 1988 on
jurisdiction and the enforcement of judgments in civil and commercial matters
78
Court of Session, Outer House
79
[2002] IPLR 13
80
Albon v Naza Motor Trading SDN BHD [2007] EWHC 9 (Ch) – although this referred to a good
arguable case in the context of CPR6.20, this will equally apply to a case brought under the
Regulation. CPR6.20 applies to cases in which the Regulation does not apply but provides similar
rules as to jurisdiction.
81
Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States
relating to trademarks.
82
British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281
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essential element of trade mark infringement and is a factor in determining whether the UK
courts can accept jurisdiction. There is a small body of case law, which is analysed below, in
which the courts have considered what constitutes ‘use in the course of trade’ of an identical
mark on a website outside the jurisdiction in order to determine whether they must accept
jurisdiction.
The Court of Appeal has confirmed that merely placing a sign on a website outside the
jurisdiction is not sufficient to constitute ‘use in the course of trade’83. In 1-800 Flowers Inc v
Phonenames Ltd Buxton LJ stated that “use” requires an active step on the part of the website
proprietor and that merely posting the mark on the website and waiting for an individual to
access the site, hence bringing the mark into the UK, was not sufficient to establish use. The
Court of Appeal confirmed that a mere ability to place an order from the UK was not
sufficient and that an objective assessment of the website in issue should be carried out in
order to establish whether the defendant is intending to trade into a particular jurisdiction.
The test of intention of the defendant was applied by the High Court in Euromarket Designs
Inc v Peters and Crate & Barrel84. Use of the trade mark on a website for a shop in Ireland
and a magazine advertisement did not constitute use. The High Court drew a distinction
between commercial information of a general kind and information which has been
specifically targeted at a particular group or country. The Defendant had not sold any goods in
the UK and there was no intention to do so. However, in British Telecommunications Plc v
One in a Million85 ‘use’ was found where the defendant had threatened to sell a domain name
consisting of the trade mark in the UK. The Defendant’s business was domain name sales and
accordingly, attempted sale of the domain name embodying the trade mark was held to be
‘use in the course of trade’.
83
1-800 FLOWERS Inc v Phonenames Ltd [2002] FSR 12 CA
84
[1996] RPC 281
85
[1999] FSR 1 CA.
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In Bonnier Media Ltd v Greg Lloyd Smith and Kestrel Trading Corp86 the Outer House of the
Court of Session in Scotland considered the impact of the website in the UK when assessing
use of the trade mark in the UK.
In KK Sony Computer Entertainment et. al. v Pacific Game Technology (Holding) Ltd87 the
High Court set out a number of features of the Defendant’s website which were relevant in
assessing whether the Defendant was targeting the UK:
i.
default language of the site;
ii.
whether prices quoted on the site are in pounds sterling or not;
iii.
whether the prices of promotions are given in sterling or not;
iv.
whether manuals for the goods are available in English
The High Court rejected submissions as irrelevant that the Defendant had no trading
presence in the UK and that title to the goods delivered to customers in the UK had passed
abroad.
In Dearlove v Combs88 the High Court stated that there was ‘use in the course of trade’ where
the main website does not include the trade mark in dispute but directs consumers to websites
which do include the trade mark and offer goods for sale under that mark.
In light of the underdeveloped case law in relation to ‘use in the course of trade’ of a similar
mark to the trade mark, academic opinion is that the definition of ‘genuine use’ and the case
law relating to revocation for non-use under s.46(1) TMA (please refer to Part I Q.1(iv)
86
[2002] IPLR 13
87
[2006] All ER D 208
88
Dearlove (trading and professionally known as ‘Diddy’) v Combs (trading and professionally
known as ‘Sean ‘Puffy’ Combs’, ‘Puffy’ and ‘P. Diddy’) [2007] All ER (D) 367
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above) can be used as an indicator of the approach of the UK Courts89. S46(2) TMA (see
q1(iv) above) defines use as follows:
use of a trade mark includes use in a form differing in elements which do not
alter the distinctive character of the mark in the form in which it was
registered, and use in the United Kingdom includes affixing the trade mark to
goods or to the packaging of goods in the United Kingdom solely for export
purposes.
In Re ELLE Trade Mark the High Court held that where the registered mark and the mark
used are similar use must be such so as not to alter the distinctive features of the mark90.
The case law has primarily centred on infringement of registered rights. However, in Pearce v
Ove Arup Partnership Ltd91 the Court of Appeal accepted jurisdiction under Art. 2 of the
Regulation over an infringement of Dutch copyright where the defendant was resident in the
UK. The Court of Appeal stated that in addition to jurisdiction it must consider actionability.
It stated that where a tort has occurred outside the jurisdiction, the claimant must establish to
the English court that its complaint will give rise to a cause of action recognised by that court.
This approach has been taken in respect of registered trade marks, as outlined above, where
the English courts consider whether the claimant has a “good arguable case”. Although
Pearce v Ove Arup was not a case of internet infringement, the Court’s approach to
establishing jurisdiction is consistent with its approach in relation to internet infringement.
89
Bainbridge, D, ‘Trademark Infringement, the Internet and Jurisdiction’, 2003 (1) The Journal of
Information, Law and Technology (JILT)
90
Re ELLE Trade Mark [1997] FSR 529
91
[1999] 1 All ER 769
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(2)
Please explain the regulations under the current law (federal law, state law) against
an act of infringement in the case where a UK trademark (registered or unregistered)
is found to be infringed by the transmission of information on the Internet from a
server located in a foreign country, as well as any related court decisions (including
whether the details of the protection differ between a registered trademark and an
unregistered trademark).
The general provisions of the TMA in relation to registered trademark infringement and the
rules of passing off in relation to infringement of unregistered trademarks apply to
infringement by transmission of information on the internet and there are no special
provisions in this regard. S.9 and 10 TMA are set out above at Part I Q.1(i) and Part II Q.1
and the requirements for unregistered trademark infringement are set out at Part I Q.1(i)
above. As discussed above it is necessary to show use in the course of trade in the UK as an
element of trademark infringement. s.103(1) TMA defines ‘trade’ as including any business
or profession. The case law considering ‘use’ is set out at Part II Q.1 above.
Under s.10(3) use of a sign which is similar or identical to a registered trademark which has a
reputation in the UK will be an act of infringement. This applies to trademark infringement by
a domain name as considered in British Telecommunications Plc v One in a Million Ltd92. In
this case the defendant had registered domain names corresponding to a number of
trademarks of repute. It was held that the domain name “marksandspencer” was infringement
of the similar trademark “Marks & Spencer”. Although there have been conflicting decisions
outside the internet as to whether use of a sign must be use in the trademark sense, it is clear
that use of a trademark as part of a domain name will constitute use provided that use is in the
course of trade in the UK.
S.11(2)(b) provides that a registered trademark is not infringed by:
(a)
the use by a person of his own name or address,
(b)
the use of indications concerning the kind, quality, quantity, intended
purpose, value, geographical origin, the time of production of goods or of
rendering of services, or other characteristics of goods or services, or
92
[1999] FSR 1 CA
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(c)
the use of the trade mark where it is necessary to indicate the intended
purpose of a product or service (in particular, as accessories or spare parts),
provided the use is in accordance with honest practices in industrial or commercial
matters.
Accordingly, where the trademark has been used in describing the characteristics of
the goods, such use will not be an infringement.
The requirement to show confusion in the UK is relevant in establishing trademark
infringement except in the case of use of an identical mark on identical goods or where the
mark has a reputation in the UK (s.10(3) TMA). It has been established in the US that it is
more likely that a likelihood of confusion will be found in internet cases than in cases outside
the internet. To our knowledge there have been no UK cases which consider likelihood of
confusion in respect of online infringement, however, Bainbridge suggests that the UK
approach will be similar to that of the US93.
One of the principal challenges in bringing and enforcing a claim for trademark infringement
on the internet is in establishing the identity of the defendant. Identification of certain
commercial entities has been assisted by Regulation 6 of the Electronic Commerce (EC
Directive) Regulations 2006 (please refer to Part I Q.1(ii) which requires certain commercial
websites to make information available regarding the trader’s name, geographical location
and email address.
As set out in question 4(i) above, the English courts have developed mechanisms to assist in
the identification of internet infringers. In Norwich Pharmacal Co v Customs and Excise
Commissioners94 the House of Lords held that where there is a third party host situated within
the UK, an order for disclosure of the identity of an alleged infringer can be made against that
host. Such an order, designated a Norwich Pharmacal order, is only available where the host
or service provider is faciliting the commission of the tort but is otherwise an innocent party.
93
D. Bainbridge, Intellectual Property, 5th Edition
94
[1974] 1 AC 133
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A Norwich Pharmacal order was made by the High Court in Grant v Google95 in locating an
alleged online copyright infringer.
(3)
Have there been any cases where a criminal penalty has been imposed under UK law
against infringement in the case where a UK trademark (registered or unregistered)
has been found to be infringed by the transmission of information on the Internet
from a server located in a foreign country? If so, what kinds of procedures are
followed to execute such criminal penalty?
To our knowledge there have not been any cases where a criminal penalty has been imposed
for infringement of a UK trademark, whether registered or unregistered, by the transmission
of information on the Internet from a server located in a foreign country.
(4)
No international convention exists as a means for settling disputes between trademark
owners who are entitled to legitimate rights in different countries for identical or
similar trademarks. However, though not legally binding, WIPO has compiled the
Joint Recommendation Concerning Provisions on the Protection of Marks, and Other
Industrial Property Rights in Signs, on the Internet, which was adopted by the
General Assembly in October 2001, with regard to the use of trademarks on the
Internet.
This recommendation recognizes that the use of a sign on the Internet constitutes use
in a Member State only if the use has a commercial effect in that Member State
(Article 2). Since such commercial effect could prove to be irrelevant to the intention
of the trademark user, the recommendation provides for exemption measures to
exempt a user from being held liable for infringement with regard to use prior to and
after receipt of a notification of infringement (Article 9, Article 10).
Has the UK legal system been changed in any way with regard to use of trademarks
on the Internet (e.g., provisions concerning commercial use or exemption measures)
based on said recommendation? In addition, has the recommendation been taken into
consideration in the examination of trademark applications or in litigation against a
decision of the Trademark Trial and Appeal Board or infringement litigation? Please
explain the measures currently taken or planned to be taken in the future by UK to
deal with the recommendation. If there have been court decisions in which the
handling differs from the recommendation, please explain in detail (including
95
[2006] All ER D 243
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whether the handling of the protection differs between a registered trademark and an
unregistered trademark). Please explain based on your responses for (1) to (3) above.
Although there has been no express reference to the Joint Recommendation by the UK
Courts, the Courts interpret the TMA in a manner consistent with the Joint Recommendation
both prior96 and subsequent97 to 2001. The UK Intellectual Property Office has confirmed that
there are no proposals for amendments to trademark law in the UK arising out of the Joint
Recommendation and to their knowledge there have been no direct amendments made in light
of the approach of the UK courts in adopting a consistent interpretation of the TMA.
Art.2 of the Joint Recommendation provides that “Use of a sign on the Internet shall
constitute use in a Member State for the purposes of these provisions, only if the use has a
commercial effect in that Member State as described in Article 3.” Art. 3 of the Joint
Recommendation sets out a non-exhaustive list of factors to consider in assessing use.
Referring to the cases set out above at Part II Question 1, the UK courts are operating in the
spirit of the WIPO “commercial effect” recommendation with the application of the
actionability requirements of showing “a good arguable case” which implicitly includes the
requirement to show “use in the course of trade” in the UK.
*
96
*
*
Euromarket Designs Inc v Peters and Crate & Barrel[1996] RPC 281.
97
KK Sony Computer Entertainment et. al. v Pacific Game Technology (Holding) Ltd [2006] All ER D
208.
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（６）ドイツ
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(Trademark Protection on the Internet)
Definitions – Abbreviations – Abbreviated Literature
BT-Drs.
Drucksache des Bundestages = Bundestag printed matter
BVerfG
Bundesverfassungsgericht = Federal Constitutional Court
ECJ
European Court of Justice
FCJ
Bundesgerichtshof = Federal Court of Justice
Fezer
Karl-Heinz Fezer, Markengesetz, 3rd edition (2001), C.H. Beck
Verlag, Munich
GRUR
Gewerblicher Rechtsschutz und Urheberrecht (Legal Journal)
GRUR-RR
Gewerblicher Rechtsschutz und Urheberrecht Rechtsprechungsreport (Legal Journal)
Ingerl/Rohnke
Reinhard Ingerl/Christian Rohnke, MarkenG, 2nd edition (2003),
Verlag C.H. Beck, Munich
KG
Kammergericht Berlin = Regional Court of Appeal of Berlin
LG
Landgericht = Regional Court
MMR
Multimedia und Recht (Legal Journal)
NJOZ
Neue Juristische Online-Zeitschrift (Legal Journal)
OLG
Oberlandesgericht = Regional Court of Appeal
Ströbele/Hacker
Paul Ströbele/Franz Hacker, MarkenG, 8th edition (2006), CarlHeymanns Verlag, Cologne
Trade Mark Act
Gesetz über den Schutz von Marken und sonstigen Kennzeichen
– MarkenG = Act on the protection of trademarks and other
designations, of 25.10.1994, published BGBl. 1994, I, page
3082 et seqq. (as last amended by the Act of 17.12.2006, BGBl.
2006 I, page 3171 et seqq.)
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IIC
International Review of Intellectual Property and Competition
Law (Legal Journal)
WRP
Wettbewerb in Recht und Praxis (Legal Journal)
2.
Trademark Protection on the Internet
I.
Trade Mark Protection on the Internet
In the area of the Internet, which is easily accessible around the world, there is a need to
solve the problem of the use of trademarks across national borders since the territoriality
principle that controls the effects of rights cannot be applied. Various aspects need to be
discussed including the requirements for establishing certain uses as use of a trademark on
the Internet and an Internet-specific discipline that differs from that of the real world.
Based on an awareness of such issue, please explain the following matters.
(1)
Please provide a detailed explanation on the course of the development and the
current situation of German trademark act with regard to trademark protection on
the Internet. Please elaborate on the following points.
(i)
Do intangible goods that are traded as digital content over the Internet correspond
to “goods (or services)” under German trademark act? Is an act of attaching a
trademark to intangible goods in such transactions over the Internet regarded as
“use of a trademark”? Please explain by citing specific provisions of law. Please
also explain the differences in the details of the protection between a case where the
trademark attached to intangible goods is an unregistered trademark and a case
where it is a registered trademark, if any.
[General Remarks] The Trade Mark Act does not distinguish between registered and
unregistered trade marks when it comes to infringement. Besides, there are no differences
between the legal treatment of goods and services. Furthermore, in general, the legal
assessment of trade mark use on the Internet shall follow the same principles as in offline
scenarios in order to prevent inconsistencies1. This also reflects WIPO’s integrative approach
with regard to the use of signs on the Internet2. Hence, the German Trade Mark Act does not
1
OLG of Düsseldorf, decision of 23.9.2003, Case I-20 U 158/02, MMR 2004, p. 491 et seqq.
2
WIPO, Protection of Marks and other Industrial Property Rights in Signs, on the Internet, 6th session,
Geneva, March 12 to 16, 2001, Doc. SCT/6/2,
http://www.wipo.int/export/sites/www/sct/fr/meetings/session_6/doc/ sct6_6p.doc- 173.0KB - sct: 11,
6/2: 1.
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contain Internet-specific provisions, in particular neither rules on domain names nor on digital
content as goods or services. However, it is agreed to that particularities of the medium shall
be taken into account when applying trade mark law to online cases, although this may not
lead to a separation into an online/offline interpretation of existing laws3.
[Legal framework] Consequently, the Trade Mark Act does not comprise provisions which
particularly address the use of trade marks with regard to intangible goods and/or digital data.
However, there are several provisions which deal with the use of a trademark for a good or a
service. The central provision is Sec. 14 ss. 2 – 4 of the Trade Mark Act, which reads as
follows:
Exclusive Right of the Proprietor of a Trade Mark; Injunctive Relief; Damages
(2) Third parties shall be prohibited from using in the course of trade, without the
consent of the proprietor of the trade mark,
1. any sign which is identical with the trade mark in relation to goods or
services which are identical with those for which the trade mark is protected;
2. any sign where, because of its identity with, or similarity to, the trade mark
and the identity or similarity of the goods or services covered by the trade mark
and the sign, there exists a likelihood of confusion on the part of the public,
including the likelihood of association between the sign and the trade mark; or
3. any sign which is identical with or similar to the trade mark in relation to
goods or services which are not similar to those for which the trade mark is
protected; where the trade mark has a reputation in the Federal Republic of
Germany and where the use of that sign without due cause takes unfair advantage
of, or is detrimental to, the distinctive character or the repute of such trade mark.
(3) If the prerequisites specified in subsection (2) are met, the following, in particular,
shall be prohibited:
1.
affixing the sign to goods or to their packaging or wrapping;
2. offering the goods, putting them on the market or stocking them for these
purposes under that sign;
3
3.
offering or supplying services under that sign;
4.
importing or exporting the goods under that sign;
Ingerl/Rohnke, after Sec. 15, margin No 97 and 94.
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5.
using the sign on business papers or in advertising.
(4) Without having the consent of the proprietor of the trade mark, third parties shall be
prohibited in the course of trade from
1.
affixing a sign which is identical with or similar to the trade mark to
packaging or wrappings or to means of marking such as labels, tags, sewn-on
labels or the like;
2. offering packaging, wrappings or the means of marking under a sign which
is identical with or similar to the trade mark, putting them on the market or
stocking them for these purposes under that sign; or
3. importing or exporting packaging, wrappings or means of marking under a
sign which is identical with or similar to the trade mark,
if there is a risk that the packaging or wrappings are being used for the packaging or
the wrapping of goods or services, or the means of marking for marking goods or
services, in respect of which, pursuant to subsections (2) and (3), third parties would be
prohibited from using that sign.
Besides, Sec. 26, ss. 1-4 of the Trade Mark Act sets out the requirements for a rightmaintaining use:
Use of a Trade Mark
(1) Insofar as the assertion of claims resulting from a registered trade mark or the
maintenance of the registration depends on the use of the trade mark, the proprietor
must have put the trade mark to genuine use in this country in connection with the
goods and services in respect of which it is registered, unless there are proper reasons
for non-use.
(2) Use of the trade mark with the consent of the proprietor shall be deemed to
constitute use by the proprietor.
(3) Use of the trade mark in a form differing from the form in which it was registered
shall also be deemed to constitute use of a registered trade mark, provided that the
differing elements do not alter the distinctive character of the trade mark. Sentence 1
shall also apply if the trade mark is also registered in the form in which it has been put
to use.
(4) Affixing of the trade mark to goods or to their packaging or wrapping in this
country solely for export purposes shall also be deemed to constitute use of the trade
mark in this country.
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[Definition of use] Subsections 3 and 4 of Sec. 14 and also subsections 2, 3 and 4 of Sec. 26
specify and clarify the acts which the law perceives as “use of a trademark in relation to
goods/services”. The wording of these provisions clarifies that the decisive relation is the one
between the sign and the good/service in question, not the form (Internet, digital data) in
which a good is delivered or a service is rendered. As trade marks for services are recognized
under German law since 1979, a physical connection of the sign and the product is not
required anymore. Furthermore, the law does not differentiate between trade marks for goods
and those for services anymore. Each activity/product of economic relevance is capable of
serving as subject matter of trade mark protection4.
[Application to intangible goods in Internet transactions] Thus, the virtual, non-haptic
quality of digital content does not hinder its designation to be regarded as a trade mark.
Instead, the decisive factor is whether the relevant public regards the sign as standing for the
product in question – taking into account the situation of perception; i.e. the use of the sign
has to appear functional with regard to the product in question. Therefore, the interpretation of
the term “use” very much depends on the individual circumstances of the case – and also on
the regulatory context as infringing use is not the same as right’s maintaining use5. That is
why there is no general definition of “trade mark use” in the German Trade Mark Act – and a
general classification of attaching a trade mark to intangible goods in transactions over the
Internet is not possible.
If one looks at a digital version of a newsletter which is sent via email to the customer,
sending of information or distribution of news appears to be the service/asset as subject matter
of trade mark protection. If – in this context – the sender uses a trade mark, e.g. a logo
integrated in the email, this would clearly constitute trade mark use (see Sec 14 ss. 3 No. 3 of
the Trade Mark Act). However, this use of the trade mark occurs in relation to the
service/asset, not to the intangible good or the data file as such.
4
Ingerl/Rohnke, Sec. 3, margin No 19.
5
FCJ, decision of 30.03.2000, Case I ZB 41/97 – Kornkammer, GRUR 2000, p. 1038 et seqq.
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(ii)
While the purpose of trademark act is to prevent confusion as to the source with
regard to the goods/services provided by business operators, does Germany have any
special regulations for preventing confusion as to the source regarding trademarks
on the Internet?
Please explain the outline, criteria for application, academic theories and court
decisions concerning cases where unconventional uses of trademarks (Internetspecific uses such as meta tags and keyword buying) constitute trademark
infringement.
(Reference information: We understand that, in the United States, use of a
trademark as a meta tag was found by the court to constitute trademark
infringement in Brookfield Communications, Inc. v. West Coast Entertainment
Corp., 174 F.3d 1036 (9th Cir.1999). There are two problems with regard to keyword
buying: (i) the problem of search engine operators selling specific keywords
beforehand; and (ii) the problem of keyword purchasers publishing banner ads
corresponding to their keywords. Whether or not these two cases constitute
trademark infringement is a matter to be discussed.)
[General remarks] As already mentioned above, there are no special provisions in the
German Trade Mark Act as to the infringing use of signs on the Internet. As in online
constellations, infringement requires the use of identical or sufficiently similar signs in the
course of trade – either for identical/similar goods/services or infringement refers to a well
known trade mark. The starting point for assessing the infringing quality of a use of a sign is
whether the relevant public perceives that use as distinguishing the products from one
undertaking of those of another (trade mark genuine use); only then the use occurs “in relation
to goods or services” as set out in Sec. 14 ss. 2 of the Trade Mark Act (see above). The exact
delineation between infringing trade mark genuine use and non-infringing use is still and has
ever since been a heavily discussed issue. At least in cases of well-known trade marks,
German courts consider the requirement of “trade mark genuine” use as being fulfilled, if the
attacked sign is capable of evoking associations with a well-known trade mark6. Furthermore,
it is established German case law that use of a designation as company name (e.g. “Porsche
Aktiengesellschaft”) or business designation (e.g. “Mercedes”) is of infringing quality.
6
FCJ, decision of 3.2.2005, Case I ZR 159/02 – Lila-Postkarte, GRUR 2005, p. 2856 et seqq; the FCJ
expressly refers to the ECJ, decision of 23. 10. 2003, Case C-408/01 – Adidas/Fitnessworld, at para.
38.
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[Meta tags/“white on white”-characters] Two recent FCJ decisions ended the lasting
academic discussion on whether “unconventional uses”, such as the employment of meta tags
or “white on white”-characters on a website, constitute trade mark genuine use. A part of the
academic literature was of the opinion that a trade mark infringement requires visibility of the
attacked sign for the average Internet user – due to the sign’s very nature as a symbol. As
meta tags did not fulfill the visibility criteria their application did not constitute trade mark
genuine use and should only be attacked under unfair competition rules7. The FCJ however
held against the visibility requirement. The FCJ considered the use of a trade mark as a meta
tag 8 or as “white on white”-characters 9 as capable of distinguishing goods/services of one
undertaking from those of another: the sign was used in a way to denote products/services
since the results of an electronic selection process were affected and thereby the user was lead
to third party’s website.
[Keyword advertising] As to keyword advertising the German discussion is still in full
swing. The OLG of Braunschweig followed FCJ’s meta tag argumentation and considered the
employment of third party’s designations for Google AdWords as an infringement 10 . The
OLG of Stuttgart argues likewise11.
The OLG of Düsseldorf12 and the OLG of Cologne13 negated any trademark encroachment. In
contrast to meta tags which may manipulate the hit list of search engines the application of
keywords just brings about a banner on the margin of the operator’s website – clearly
identified as advertisement. From the average user’s perspective this advertisement is
obviously separated from the results of the search engine. In all probability, users do not
7
For example Viefhues, „Internet und Kennzeichenrecht: Meta Tags“, MMR 1999, p. 336 et seqq.;
Kaufmann, „Metatagging: Markenrecht oder reformiertes UWG“, MMR 2005, p. 348 et seqq.
8
FCJ, decision of 18.5.2006, Case I ZR 183/03 – Impuls, GRUR 2007, p. 65 et seqq.
9
FCJ, decision of 8.2.2007, Case I ZR 77/04 – ADIOL, GRUR 2007, p. 784 et seqq.
10
OLG of Braunschweig, decision of 12.7.2007, Case 2 U 24/07, NJOZ 2007, p. 4281et seqq.; also for
a trademark infringement: LG of München I, decision of 27.10.2005, Case 9 HK O 20800/05.
11
OLG of Stuttgart, decision of 9.8.2007, Case 2 U 23/07, MMR 2007, p. 649 et seqq.
12
OLG of Düsseldorf, decision of 23.1.2007, Case I-20 U 79/06, MMR 2007, p. 247 et seqq.
13
OLG of Cologne, decision of 3.8.2007, Case 6 U 48/07.
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reflect on the reasons for the appearance of a specific banner when carrying out a computer
search. Even if they did this, it would be very unlikely, that they would see a connection
between the search term and the products advertised in the margin. Thus, such keywords do
not indicate the product’s origin14. There is no danger of confusion15. Some authors come to
the same conclusion but argue that keyword advertising does not constitute trade mark
genuine use as the relevant public would recognize that the advertisement is not connected
with the trade mark typed into the search engine’s input box16. Others argue search engine
user regularly do not expect all results on the hit list emanate from the owner of the trade
mark in question. All the more this should apply to the advertisement in the margin of the
operator’s website17. Since the revision against the Düsseldorf decision is pending, the FCJ is
expected to clarify the keyword advertising issue for Germany in the near future.
[Liability for selling/buying keywords] Firstly, the liability for applying third parties’ trade
marks for keyword advertising depends on whether there is an infringement at all. However,
even if courts deny trade mark genuine use keyword advertising might constitute an unfair
practice according to the Unfair Competition Act, particularly if there is an exploitation of the
reputation of the trade mark in question18. This is also a controversial issue. Nonetheless, if
one assumes trade mark infringement or unfair practices the buyer of the keyword is held
liable19.
The search engine operator usually does not infringe as he does not select the keywords and
therefore does not “use” the designation in question. However, he might be held liable with
14
OLG of Cologne, decision of 3.8.2007, Case 6 U 48/07.
15
OLG of Düsseldorf, decision of 23.1.2007, Case I-20 U 79/06, MMR 2007, p. 247 et seqq.
16
Eike Ullmann, ”Wer sucht, der findet - Kennzeichenverletzung im Internet“, GRUR 2007, p. 633, et
seqq; Martin Illmer, ”Keyword Advertising – Quo vadis?”, WRP 2007, p. 399 et seqq.
17
Stephan Ott, “Impressumspflicht für Webseiten - Die Neuregelungen nach § 5 TMG, § 55 RStV“
MMR 2007, p. 354 et seqq.
18
OLG of Cologne, decision of 8.6.2004, Case 6 W 59/04.
19
KG of Berlin, decision of 18.8.2006, Case 5 W 190/06, GRUR-RR 2007, p. 68 et seqq.
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regard to the concept of “disturbance liability”. “Disturbance liability” requires breach of due
diligence. The scope of liability is limited; e. g. the disturber is not liable as to damages.
The only court which regarded Google as disturber due to the sale of keywords – the LG of
Hamburg in preliminary injunction proceedings – corrected itself in the following main
proceedings. Confirmed by the OLG of Hamburg 20 , it declared that according to the
principles of press law a search engine operator has no duty to check all keywords for
trademark infringements21. The LG of Munich argued that due to the exceeding number of
participants in the AdWords-program a pre-check is not feasible for Google22. With reference
to FCJ’s “ebay”-jurisdiction23, the only liability that may hit search engine operators is their
obligation to delete specific keywords – and essentially equal terms – once being notified
about their infringing character.
(iii)
One category of confusion on the Internet is “initial interest confusion.” Please
explain the details of initial interest confusion and the cases to which it applies. In
particular, please explain any major court decisions related to initial interest
confusion. What is the generally accepted idea on the relationship between initial
interest confusion and free-riding?
Under German law, the “initial interest confusion” doctrine does not exist as such.
Consequently, there are no provisions dealing with the issue. Nonetheless, you can find the
basic ideas of initial interest confusion in the case law on meta tags and keyword advertising
mentioned above (cf. ii), particularly with regard to aspects of unfair competition in terms of
exploitation of a well-known trade mark. If the traditional trade mark analysis as to –
continuing (!) – danger of confusion does not apply to constellations which would be regarded
as initial interest confusion in other jurisdictions, German court would refer to the provisions
of the Unfair Competition Act.
20
OLG of Hamburg, decision of 4.5.2006, Case 3 U 180/04, MMR 2006, p. 754 et seqq.
21
LG of Hamburg, decision of 21.9.2004, Case 312 O 324/04, MMR 2005, p. 631et seqq.
22
LG of Munich, decision of 3.12.2003, Case 33 O 21461/03, MMR 2004, p. 261 et seqq.
23
FCJ, decision of 11.3.2004, Case I ZR 304/01 - Internetversteigerung - ROLEX , MMR 2004, p.
668 et seqq.
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Besides, the FCJ indirectly addresses “initial interest confusion” in its “shell.de” ruling24:
“Such use of another’s name [as domain name] generally leads to confusion, even if
the Internet user, when the homepage opens, immediately realizes that he has not
landed at the name bearer’s Internet page. An unauthorized use of a name - leading to
confusion of identity - is also to be upheld if the unauthorized party has hitherto only
registered the domain name. The effect of excluding the authorized party already
commences upon registration where the name is to be used as an Internet address.”
(iv)
Enforcement of a registered trademark will be limited if the trademark owner fails
to use the trademark for a certain amount of time. On the Internet, however, will a
trademark owner be excused from nonuse as long as he/she publishes the trademark
on a website? Please explain, focusing on relevant decisions on cancellation
proceedings based on nonuse and court decisions.
[Basic case law] Again, there are not special provisions addressing the so-called right
maintaining use on the Internet, the general provisions and principles apply. The relevant
provision is Sec. 26 of the Trade Mark Act as displayed above (cf. (i)). With reference to the
established case law of ECJ and FCJ “genuine use” of the trade mark requires use for the
purpose of distinguishing goods/services of one undertaking from those of another. In
addition, the use of the trade mark must be reasonable in terms of economic as to maintaining
and/or enhancing business under the designation in question. The leading case is ECJ’s
decision “Ansul/Ajax”. The court explains the following25:
“36.
Genuine use must therefore be understood to denote use that is not merely
token, serving solely to preserve the rights conferred by the mark. Such use
must be consistent with the essential function of a trade mark, which is to
guarantee the identity of the origin of goods or services to the consumer or end
user by enabling him, without any possibility of confusion, to distinguish the
product or service from others which have another origin.
37.
It follows that genuine use of the mark entails use of the mark on the market
for the goods or services protected by that mark and not just internal use by the
undertaking concerned. The protection the mark confers and the consequences
of registering it in terms of enforceability vis-à-vis third parties cannot
continue to operate if the mark loses its commercial raison d'être, which is to
24
FCJ, decision of 22.11.2001, Case I ZR 138/99 – shell.de, MMR 2002, p. 382 seqq. (abbreviated
English version: IIC 2003, 315).
25
ECJ, decision of 11.3.2003, Case C 40/01 – Ansul/Ajax, at paras. 36 to 39.
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create or preserve an outlet for the goods or services that bear the sign of
which it is composed, as distinct from the goods or services of other
undertakings. Use of the mark must therefore relate to goods or services
already marketed or about to be marketed and for which preparations by the
undertaking to secure customers are under way, particularly in the form of
advertising campaigns. Such use may be either by the trade mark proprietor or,
as envisaged in Article 10(3) of the Directive, by a third party with authority to
use the mark.
38.
Finally, when assessing whether there has been genuine use of the trade mark,
regard must be had to all the facts and circumstances relevant to establishing
whether the commercial exploitation of the mark is real, in particular whether
such use is viewed as warranted in the economic sector concerned to maintain
or create a share in the market for the goods or services protected by the mark.
39.
Assessing the circumstances of the case may thus include giving consideration,
inter alia, to the nature of the goods or service at issue, the characteristics of
the market concerned and the scale and frequency of use of the mark. Use of
the mark need not, therefore, always be quantitatively significant for it to be
deemed genuine, as that depends on the characteristics of the goods or service
concerned on the corresponding market.”
Therefore, for example the use of a trade mark in order to designate an undertaking (use as a
business name) is insufficient as a right-maintaining measure as a concrete relation of the
trade mark use to the products (goods/services) for which it is protected is missing.
[Examples] According to the “Ansul/Ajax” decision, the individual circumstances of the case
are decisive. Thus, the use of a mark registered for luxurious old-timer cars in the context of
an Internet offer for such cars, which lasts for two years without a car being sold, could
therefore be regarded as sufficient, since such goods are rarely purchased. If cigarettes were at
issue, courts may find a two year period of mere Internet use without trading the cigarettes
sufficient. Besides, the mere existence of a domain name displaying the trade mark could
hardly be regarded as right-maintaining. If the domain is connected to a website displaying
the products in question courts would probably come to a different conclusion.
[International aspects] Taking into account the global and boundless character of the
Internet in contrast to the territory-based protection of trade marks (principle of territoriality),
right-maintaining use on the Internet also requires an economic relation to Germany, e. g. by
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offering delivery to Germany or the use of German language. The mere accessibility of the
marked product via Internet does not fulfill these criteria. In a case which addressed the
question under which circumstances the use of sings on the Internet can be infringing use, the
FCJ held that the mere offering of rooms in a Copenhagen hotel to German customers (in
German!) and even the possibility to order brochures in German were insufficient 26 . FCJ
explicitly referred to the WIPO criteria of “commercial effect”27. The ratio of this decision
shall also apply to right-maintaining use28.
(2)
What are the typical requirements for establishing dilution on the Internet? Please
explain the historical transition of protection against dilution while referring to
court decisions that provide the basis for the interpretation of statutory provisions
and court decisions that have brought changes to the interpretation of legal
protection on the Internet.
Again, there are no special provisions for Internet-related acts of dilution. The relevant
provision for dilution is Sec. 14 ss. 2 No. 3 of the Trade Mark Act:
Exclusive Right of the Proprietor of a Trade Mark; Injunctive Relief; Damages
(2) Third parties shall be prohibited from using in the course of trade, without the
consent of the proprietor of the trade mark,
…
3. any sign which is identical with or similar to the trade mark in relation to
goods or services which are not similar to those for which the trade mark is
protected; where the trade mark has a reputation in the Federal Republic of
Germany and where the use of that sign without due cause takes unfair advantage
of, or is detrimental to, the distinctive character or the repute of such trade mark.
General dilution principles also apply to Internet scenarios. The FCJ held inter alia the
following in its fundamental ruling on “shell.de”29:
26
FCJ, decision of 13.10.2004, Case I ZR 163/02 – HOTEL MARITIM, GRUR 2005, p. 431et seqq.
27
Cf. http://www.wipo.int/about-ip/en/development_iplaw/pub845-04.htm.
28
Ströbele/Hacker, Sec. 26 margin No 120.
29
FCJ, decision of 22.11.2001, Case I ZR 138/99, MMR 2002, p. 382 et seqq. (abbreviated English
version: IIC 2003, 315).
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“The use by an unauthorized party of a well-known mark as a domain name for
business purposes constitutes an impairment of the distinctive character of the wellknown mark pursuant to Secs. 14 ss. 2 No 3 and 15 ss.3 of the Trademark Act.”
The basic facts of the case were as follows:
The dispute between the parties concerned the Internet address „shell.de“, which is
registered in the name of the defendant.
The plaintiff was Deutsche Shell GmbH, a subsidiary of the world-famous Shell oil
company. The plaintiff’s parent company held two word marks „Shell,“ one registered
inter alia for fuels of all kinds (priority March 31, 1955), the other registered for a
range of services inter alia in the field of marketing, data processing and training
(priority April 2, 1997). The defendant was called Andreas Shell and bought the
domain from a company involved in the purchase and sale of Internet domains. As a
part-time activity, Mr. Shell conducted a business that inter alia offered translations
and the preparation of press texts. He set up a homepage in the colors red and yellow
to refer to his undertaking under the address „shell.de “.
(3)
Please explain in detail (e.g., the provisions of laws or regulations applied) cases in
which a criminal penalty was imposed for the infringement of intellectual property
rights on the Internet, if any. In particular, have there been any cases in which a
criminal penalty has been imposed for trademark infringement (either a registered
or unregistered trademark)? If so, please outline the requirements based on which
criminal penalty was applied in such cases.
To our knowledge there is no case law of the higher courts dealing with criminal penalty for
infringing trade mark rights.
(4)
In addition to the points mentioned above, if there are any matters that are
considered to be problematic in Germany, please explain. For example, please
explain the following points.
(i)
Are there any arguments on the need to regulate the use of trademarks, etc. in a
virtual society on the Internet such as “Second Life” or on the need to apply the
provisions on dilution against such use? Or can the current legal system sufficiently
deal with such use? Please explain by citing academic theories and court decisions.
(If there are any differences between registered trademarks and unregistered
trademarks in that regard, please explain such differences.)
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With regard to trade mark use in “Second Life” the academic literature does not stress the
need for special rules. We are not aware of court decisions in this field. Some authors talk
about “virtual product piracy”, e. g. when an avatar wears branded clothes. However, due to
the abstract character of the current provisions of the Trade Mark Act there seems to be no
relevant problem in applying established trade mark law on virtual communities and the
accompanying phenomena.
(ii)
Can a trademark acquire a secondary meaning as a result of being used on the
Internet alone? If so, please explain what kinds of conditions are required on the
Internet by indicating actual case examples (e.g., a large number of accesses from a
wide area).
We are not aware of any decisions dealing with this issue. Once again, with reference to the
legal framework and the relevant case law, Internet based use has to follow the same rules as
offline use. However, a domain name may fulfill a kind of double function – as an Internet
address and as a designation for the products (e. g. online services such as a newsletter) on the
website which it is addressing. But according to a ruling of the BVerfG these two functions
have to be regarded separately from a legal perspective30. Hence the Internet address function
– even if there is no offline use of the domain and/or the sign it consists of – is unlikely to
lead to the acquisition of a secondary meaning.
30
BVerfG, decision of 24.11.2004, Case 1 BvR 1306/02, MMR 2005, p. 165 et seqq.
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II.
Dealing with Trademark Infringement Across National Borders
(1)
When a German court is to determine whether or not information transmitted on
the Internet from a server located in a foreign country infringes a trademark used in
Germany, the court must first indicate whether or not it has jurisdiction. While also
referring to these court decisions, please explain the trend of the German courts’
determination on jurisdiction over such cases and any related academic theories.
[Legal framework] The German Trade Mark Act does not include special provisions for the
determination of jurisdiction. Sec. 141 of the Trade Mark Act says explicitly that there are no
special regulations so that the general provisions which are included in the German Code of
Civil Procedure apply. Sec. 12 et seqq. of the German Code of Civil Procedure provide that
the place of habitual residence generally is relevant to determine the court’s territorial
jurisdiction. Another way to determine whether the court has jurisdiction is by finding out the
locus delicti. For all tortuous acts including trademark infringements, the special locus delicti
jurisdiction applies (Sec. 32 of the German Code of Civil Procedure). The European Council
Regulation No 44/2001 31 offers the same possibilities in Art. 2 et seqq. This Regulation
directs the international jurisdiction within the European Union32. According to Art. 5 ss. 2
and 3 of the EC it is also the place of habitual residence or the locus delicti, meaning the place
where the harmful event occurred, which are relevant.
[Court decisions] Generally, the locus delicti can be both the place of performance and the
place of effect. For trademark infringements the principle of territoriality brings about some
particularities. A national registered trademark only affords protection in the country of origin.
Hence the place of performance and the place of effect coincide with each other. Relevant for
determining jurisdiction is the place where the conflict of interests between competitors
arises33. In the “Hotel Maritime” decision the FCJ stated that, in order for German courts to
31
Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and
enforcement of judgments in civil and commercial matters.
32
Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and
enforcement of judgments in civil and commercial matters.
33
Fezer, Preliminaries, margin No 214.
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obtain international jurisdiction, a mere claim of trademark infringement is sufficient34. An
actual infringement is not required.
The question whether the data medium must be purposefully directed at the specific territory
is still in dispute. One view is that this limitation is required because otherwise the number of
possible jurisdictions is boundless35. This opinion is based upon the “Tampax” decision of the
FCJ36 which answers a competition law question. Another view is that there is no need for
such requirement 37 and instead that the locus delicti could be each place where the
information is made available to third persons38. Referring to trademark infringements on the
Internet these general principles also apply. For trademark infringements on the Internet the
FCJ decided in the “Hotel Maritime” decision that a limitation is necessary. The website must
be continuously available instead of being made available out of a mere coincidence. The data
must be purposefully available within the territory and the web layout must also be tailored to
the German market39. Purposeful availability can be found for example through the language
used on the website, the currency in which the prices are declared or if it is a website with a
“.de”- domain 40 . Consequently, the FCJ explicitly referred to the WIPO criteria on
“commercial effect”41.
[Community trade marks] With regard to Community trade marks the determination of
international jurisdiction is stipulated by Art. 93 of the CTMR42. After this, it is the court
34
FCJ, decision of 13.10.2004, Case I ZR 163/02 – Hotel Maritime, GRUR 2005, p. 431 et seqq.
35
Fezer, Preliminaries, margin No 216; Hoeren, Internet und Recht, NJW 1998, p. 2849 et seqq.; LG
of Düsseldorf, decision of 4.4.1997, Case 34 O 191/96 – Epson, GRUR 1998, p. 159 et seqq.
36
FCJ, decision of 23.10.1970, Case I ZR 86/69 – Tampax, GRUR 1971, p. 153 et seqq.
37
Ströbele/Hacker, Sec. 141 margin No 4; Bettinger/Thum, Territoriales Markenrecht im Global
Village, GRUR Int 1999, p. 659 et seqq.
38
LG of Duesseldorf, decision of 4.4.1997, Case 34 O 191/96 – Epson, GRUR 1998, p. 159 et seqq.
39
FCJ, decision of 13.10.2004, Case I ZR 163/02 – Hotel Maritime, GRUR 2005, p. 431 et seqq.
40
Bettinger/Thum, Territoriales Markenrecht im Global Village, GRUR Int 1999, p. 659 et seqq.
41
Accessible at http://www.wipo.int/about-ip/en/development_iplaw/pub845-04.htm.
42
Community Trade Mark Regulation, Council Regulation (EC) No 40/94 of 20 December 1993 on
the Community trade mark
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where the defendant lives which has jurisdiction (Art. 93 ss. 1 to 4) and furthermore the court
where the infringement or the use happened (Art. 93 ss. 5). In the ss. 5 the jurisdiction is
limited to the activities within the territory43. To determine the territorial jurisdiction in such
cases, Art. 125g of the Trade Mark Act is relevant. Thereafter the national provisions apply
(see above). Please note: due to the protection of Community trade marks all over the
European Union and the possibility to sue infringers where they reside, infringement actions
may be brought before a German court although the infringement took place in another
Member State of the European Union.
(2)
Please explain the regulations under the current law (federal law, state law) against
an act of infringement in the case where a German trademark (registered or
unregistered) is found to be infringed by the transmission of information on the
Internet from a server located in a foreign country, as well as any related court
decisions (including whether the details of the protection differ between a registered
trademark and an unregistered trademark).
[Server Location] Firstly, please note: Under German law the location of the server as the
mere technical source for the trade mark infringement is not relevant.44 Instead, the criteria of
“commercial effect” which refer to the content of the website and other – more material than
technical – circumstances apply (see above).
[Legal Framework] Again, there are no special provisions for trademark infringements
which happen by the transmission of information on the Internet. The relevant legal
consequences for trademark infringements are provided in Sec. 14 et seqq. of the Trade Mark
Act. The basic requirement for each claim is regulated in Sec. 14 ss. 2 of the Trade Mark Act
(see above). More important provisions are Sec. 14 ss. 5, Sec. 14 ss. 6, Sec. 18 ss. 1 and Sec.
19 ss. 1 of the Trade Mark Act which offer the proprietor a number of rights and read as
follows:
43
Ströbele/Hacker, Sec. 125 g, margin No 3
44
LG of Hamburg, decision of 5.9.2003, Case 308 O 449/03 – Thumbnails, GRUR-RR 2004, p. 313 et
seqq.
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Sec. 14 ss. 5 of the Trade Mark Act:
The user of a sign in violation of ss. 2 to 4, may be subject to an injunctive relief if so
demanded by the proprietor.
Sec. 14 ss. 6 of the Trade Mark Act:
Who is committing intentional or careless infringement, maybe liable for damages.
Sec. 18 ss. 1 of the Trade Mark Act:
The proprietor of a trademark or a commercial name can – in the cases of Sec. 14, 15 and 17 –
demand that the illegally marked articles in possession of the assets of the violator be
destroyed unless there is another way to remedy the illegal situation or unless the destruction
would be disproportional for the violator or the owner in that particular case.
Sec. 19 ss. 1 of the Trade Mark Act:
The proprietor of a trademark or a commercial name can – in the cases of Sec. 14, 15 and 17 –
demand the violator to disclose the origin and the distribution channel immediately unless it
would be disproportional in that particular case.
These rights are available to the proprietor of a trademark regardless of whether it is
registered or unregistered. This is the result of Sec. 4 ss. 2 of the Trade Mark Act which offers
trademark protection even for unregistered trademarks as long as they are used in commerce.
The sole difference between registered trademarks and unregistered trademarks used in
commerce is that in the second case the use has to be proven by the proprietor whereas it is
assumed for registered trademarks.
[Identification of the violator] A main problem concerning trademark infringement on the
Internet is the identification of the responsible violator. According to Sec. 1004 of the German
Civil Code liability is imposed on every possible disturber independent of actual guilt. To
restrict this broad interpretation the FCJ generated the principle that liability is dependent on
the infringement of the duty of checking the truthfulness of the matters asserted. This
principle was created in the decisions “Pressehaftung” and “Pressehaftung II”45. With regard
to trade mark law the FCJ confirmed the requirement of this restriction in the decisions “kurt-
45
FCJ, decision of 26.4.1990, Case I ZR 127/88 – Pressehaftung, GRUR 1990, p. 1012 et seqq.; FCJ,
decision of 7.5.1992, Case I ZR 119/90 – Pressehaftung II, GRUR 1992, p. 618 et seqq.
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biedenkopf.de”, “Internet-Versteigerung” and “Internet-Versteigerung II” 46 . In the “kurtbiedenkopf.de” decision the FCJ stated that “DENIC”, which distributes “.de”-domains to
users, does not have to verify the information of a reservation or first registration of a domain
name 47 . In the “Internet-Versteigerung” and “Internet-Versteigerung II” decisions the FCJ
decided that the provider of an Internet auction house is not liable for the individual offers,
especially if the provider does not have the intension to infringe on the proprietor’s rights48.
It has to be considered that German court decisions only have a standing for the German
territory. This results from the principle of territoriality.
(3)
Have there been any cases where a criminal penalty has been imposed under
German law against infringement in the case where a German trademark
(registered or unregistered) has been found to be infringed by the transmission of
information on the Internet from a server located in a foreign country? If so, what
kinds of procedures are followed to execute such criminal penalty?
To our knowledge there are no cases where a criminal penalty has been imposed under
German law against infringement in the case where a German trademark (registered or
unregistered) has been found to be infringed by the transmission of information on the
Internet from a server located in a foreign country.
46
FCJ, decision of 19.2.2004, Case I ZR 82/01 – kurt-biedenkopf.de, GRUR 2004, p. 619 et seqq.;
FCJ, decision of 11.3.2004, Case I ZR 304/01 – Internet-Versteigerung, GRUR 2004, p. 860 et seqq.;
FCJ, decision of 19.4.2007, Case I ZR 35/04 – Internet-Versteigerung II, GRUR 2007, p. 708 et seqq.
47
FCJ, decision of 19.2.2004, Case I ZR 82/01 – kurt-biedenkopf.de, GRUR 2004, p. 619 et seqq.
48
FCJ, decision of 11.3.2004, Case I ZR 304/01 – Internet-Versteigerung, GRUR 2004, p. 860 et seqq.;
FCJ, decision of 19.4.2007, Case I ZR 35/04 – Internet-Versteigerung II, GRUR 2007, p. 708 et seqq.
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(4)
No international convention exists as a means for settling disputes between
trademark owners who are entitled to legitimate rights in different countries for
identical or similar trademarks. However, though not legally binding, WIPO has
compiled the Joint Recommendation Concerning Provisions on the Protection of
Marks, and Other Industrial Property Rights in Signs, on the Internet, which was
adopted by the General Assembly in October 2001, with regard to the use of
trademarks on the Internet.
This recommendation recognizes that the use of a sign on the Internet constitutes
use in a Member State only if the use has a commercial effect in that Member State
(Article 2). Since such commercial effect could prove to be irrelevant to the intention
of the trademark user, the recommendation provides for exemption measures to
exempt a user from being held liable for infringement with regard to use prior to
and after receipt of a notification of infringement (Article 9, Article 10).
Has the German legal system been changed in any way with regard to use of
trademarks on the Internet (e.g., provisions concerning commercial use or
exemption measures) based on said recommendation? In addition, has the
recommendation been taken into consideration in the examination of trademark
applications or in litigation against a decision of the Trademark Trial and Appeal
Board or infringement litigation? Please explain the measures currently taken or
planned to be taken in the future by Germany to deal with the recommendation. If
there have been court decisions in which the handling differs from the
recommendation, please explain in detail (including whether the handling of the
protection differs between a registered trademark and an unregistered trademark).
Please explain based on your responses for (1) to (3) above.
In 2001 the WIPO compiled the Joint Recommendation Concerning Provisions on the
Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet. Article 2
of this Recommendation recognizes that the use of a sign on the Internet constitutes use in a
Member State only, if the use has a commercial effect in that Member State. There was no
change in the German legal system based on the Joint Recommendation. But there is also no
conflict between the Trade Mark Act and the WIPO criteria.
The German legal practice adapted these criteria. In the explanatory memorandum of the
current Trade Mark Act the legislator expresses the willingness to consider international trade
mark law developments, explicitly referring to WIPO’s recommendations.49 As mentioned
49
BT-Drs. 12/6581, p. 59.
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above a nationally registered trademark only affords protection in the country of origin.
Hence the FCJ stated in the “Hotel Maritime” decision that all rights which are based on an
infringement require a connection to that specific country 50 . The “commercial effect”
guarantees balance between the protection of nationally registered trademarks and freedom of
services which is provided in Art. 49 of the Treaty establishing the European Community.
To our knowledge Germany is not planning on taking any legislative measures in the future
dealing with the recommendation. The recommendation shall be implemented by interpreting
the existing laws; e. g. Sec. 26 ss. 1 of the Trade Mark Act requires “genuine use in this
country”. In this context “commercial effect” describes the results of such domestic use.
*
50
*
*
FCJ, decision of 13.10.2004, Case I ZR 163/02 – Hotel Maritime, GRUR 2005, p. 431 et seqq.
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（７）フランス
IIP trademark survey: France
(Trademark Protection on the Internet)
Definitions – Abbreviations – Abbreviated Literature
Ann. Prop. Ind.
Annales de la Propriété Industrielle (Legal Journal)
CCE
Communication Commerce Electronique (Legal Journal)
CPI
French Code of Intellectual Property
D.
Dalloz (Legal Journal)
Gaz. Pal.
Gazette du Palais (Legal Journal)
PIBD
Propriété Industrielle Bulletin Documentaire (Legal Journal)
2.
Trademark Protection on the Internet
I.
Trade Mark Protection on the Internet
In the area of the Internet, which is easily accessible around the world, there is a
need to solve the problem of the use of trademarks across national borders since the
territoriality principle that controls the effects of rights cannot be applied. Various
aspects need to be discussed including the requirements for establishing certain uses
as use of a trademark on the Internet and an Internet-specific discipline that differs
from that of the real world.
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Based on an awareness of such issue, please explain the following matters.
(1)
Please provide a detailed explanation on the course of the development and
the current situation of German trademark act with regard to trademark
protection on the Internet. Please elaborate on the following points.
(i)
Do intangible goods that are traded as digital content over the Internet
correspond to “goods (or services)” under German trademark act? Is an act
of attaching a trademark to intangible goods in such transactions over the
Internet regarded as “use of a trademark”? Please explain by citing specific
provisions of law. Please also explain the differences in the details of the
protection between a case where the trademark attached to intangible goods is
an unregistered trademark and a case where it is a registered trademark, if
any.
[General Remarks] Pursuant to article L.712-1 of the CPI, “ownership of a trademark
shall be acquired by registration”. Therefore, as registration is required for trademark
protection (except for well-known trademarks in the meaning of article 6 of the Paris
Convention), unregistered trademark are not protected under French law.
Moreover, as the CPI does not contain any provision specific to the Internet, the general
rules of trademark protection are construed by French Courts to adapt the “traditional”
solutions to that particular medium.
[Legal framework] Consequently, the CPI does not comprise provisions specific to the
use of trade marks with regard to intangible goods and/or digital data. It shall also be
noted that there is no general definition of “goods” or “services” in the CPI. However,
there are several provisions which deal with the use of a trademark for a good or a
service, namely articles L.713-2 and L. 713-3 of the CPI which provide that the
following acts/uses shall be prohibited unless authorized by the owner:
(article L. 713-2)
“a) The reproduction, use or affixing of a mark, even with the addition of words
such as: “formula, manner, system, imitation, type, method,” or the use of a
reproduced mark for goods or services that are identical to those designated in the
registration;
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b) The suppression or modification of a duly affixed mark.”
(article L. 713-3)
“If there is a likelihood of confusion in the mind of the public:
a) The reproduction, use or affixing of a mark or use of a reproduced mark for
goods or services that are similar to those designated in the registration;
b) The imitation of a mark and the use of an imitated mark for goods or services that
are identical or similar to those designated in the registration.”
French case law with respect to conflicts between domain names and trademarks is
helpful to clarify the notion of goods and services in relation with the Internet. Indeed,
since the “Alice” case (Paris Court of First Instance, 23 March 1999, Alice v/Alice,
available on www.juriscom.net), French judges examine the content of the website
corresponding to the domain name in order to determine if this content is similar or
identical to the products or services designated by the trademark. They consider that
“the products or services traded on a website are the information made available to the
public on the website and not the communication medium itself” (Paris Court of First
Instance, 9 July 2002, SA Le Tourisme Moderne Compagnie Parisienne du Tourisme v/
SA Soficar, available on www.legalis.net).
Therefore, intangible goods that are traded as digital content on the Internet correspond
to “goods or services” under French trademark law.
[Is an act of attaching a trademark to intangible goods in such transactions over
the Internet regarded as “use of a trademark”?] There is no definition of the “use of
a trademark” in the CPI. This notion can be appraised from two angles, i.e. the
illegitimate use by a third party or the legitimate use of a trademark by its owner.
In the first hypothesis, the CPI only mentions the use of a “reproduced mark” or of an
“imitated mark” (see articles L. 713-2 and 713-3 above). Therefore, the notion of use is
construed by case law.
From general standpoint, the following acts have been considered as infringement by
use of a trademark:
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-
-
the reference to a trademark for goods identical to those produced by the owner
of the trademark (Paris Court of Appeal, 7 December 1992, PIBD 1993 III p.
265),
the reproduction of a trademark on an advertisement (Paris Court of Appeal, 29
March 1989, D. 1993 Somm. 113),
the reference to a trademark in commercial papers (Paris Court of Appeal, 18
June 1992, D.1994 Somm. 56).
On the other hand, the Paris Court of Appeal (30 April 2003, Olivier M. v. Danone
available on www.juriscom.net), held that an association which had reproduced the
trademark DANONE on its website available at ‘www.jeboycottedanone.net’ (i.e. ‘I
boycott Danone’), on which the company’s social and restructuring policies were
criticized, was not guilty of trademark infringement as the reproduction of the
DANONE trademark neither aimed to promote the commercialization of competitive
goods or services nor disparaged Danone’s goods.
The French judges consider that the notion of use is linked to the essential function of a
trade mark, which is to guarantee the identity of the origin of goods or services to the
consumer or end user by enabling him, without any likelihood of confusion, to
distinguish the product or service of the trademark owner from others which have
another origin (Paris Court of Appeal, 5 November 2003, PIBD 204 III p. 135).
The second hypothesis is linked to article L.714-5 of the CPI which provides that:
“ An owner who has not put his mark to genuine use in connection with the goods or
services referred to in the registration during an uninterrupted period of five years,
without good reason, shall be liable to revocation of his rights.
The following shall be assimilated to such use:
a) Use made with the consent of the owner of the mark or, in the case of collective
marks, in compliance with the regulations;
b) Use of the mark in a modified form which does not alter its distinctive nature;
c) Affixing of the mark on goods or their packaging exclusively for export.”
The genuine use implies that the sign registered as trademark fulfills its function, which
is to distinguish the origin of goods sold, either by being affixed on the goods, or by
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being attached to them in a manner which does not leave any doubt as to said function
(Paris Court of Appeal, 25 May 1989, “Pronuptia”, PIBD 1989 III p. 599).
Therefore, the act of attaching a trademark to intangible goods can be regarded as a
“use of trademark”, in both hypotheses, as far as it is used for the purpose of
distinguishing the origin of the goods or services.
(ii)
While the purpose of trademark law to prevent confusion as to the source with
regard to the goods/services provided by business operators, does France have
any special regulations for preventing confusion as to the source regarding
trademarks on the Internet?
Please explain the outline, criteria for application, academic theories and
court decisions concerning cases where unconventional uses of trademarks
(Internet-specific uses such as meta tags and keyword buying) constitute
trademark infringement.
(Reference information: We understand that, in the United States, use of a
trademark as a meta tag was found by the court to constitute trademark
infringement in Brookfield Communications, Inc. v. West Coast
Entertainment Corp., 174 F.3d 1036 (9th Cir.1999). There are two problems
with regard to keyword buying: (i) the problem of search engine operators
selling specific keywords beforehand; and (ii) the problem of keyword
purchasers publishing banner ads corresponding to their keywords. Whether
or not these two cases constitute trademark infringement is a matter to be
discussed.)
[General remarks] The CPI has no special provision relating to the prevention of
confusion as to the source regarding trademarks on the Internet.
Since the “Evora” ECJ decision (ECJ, 4 November 1997, PIBD 1998 III p. 105), French
judges take into consideration the essential function of the trademark which is to
guarantee the origin of the product in order to enable the consumers to avoid confusion
with products from another origin. Thus, for example, they considered that a retailer
selling authentic products lawfully acquired from the owner of the trademark was
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entitled to use this trademark in relation to these products (Court of Appeal Paris 5
November 2003, PIBD 2004 III p. 135).
[Meta tags] Pursuant to article L.713-6 of the CPI:
“Registration of a mark shall not prevent use of the same sign or a similar sign as:
[…]
b) The necessary reference to state the intended purpose of the product or service,
in particular as an accessory or spare part, provided no confusion exists as to their
origin.”
According to French case law, the use of a trademark as meta tag is constitutive of
trademark infringement when the use of the trademark is not a necessary reference (for
example for the manufacturer of accessory products using the trademark of the
principal product for promotion purposes), this use creates a likelihood of confusion
from a consumers standpoint, regarding the origin of the products or services provided
on the website and causes damages to the owner of the trademark.
Thus, in the “Distrimart” case (Paris Court of Appeal, 14 March 2001, available on
juriscom.net), the Paris Court of Appeal held that a meta tag using the plaintiff’s
trademark was constitutive of trademark infringement on the ground that this use
created a likelihood of confusion.
In another case, the Paris Court of Appeal (3 March 2000, available on juriscom.net)
held that the reproduction of trademarks owned by Chanel (i.e. “CHANEL” and
“COCO”) in meta tags located in the site of another company selling Chanel products
outside Chanel’s distribution network was an infringement.
[Keywords] Regarding to the “unconvential use” of trademarks as keywords, the
liability of search engine in connection with AdWords services has been clarified in the
“Google saga”.
Whereas the Paris Court of Appeal, (28 June 2006, “Google vs. Louis Vuitton
Malletier”, available on www.juriscom.net) had found that Google’s AdWords services
infringed Louis Vuitton’s trade marks as such use amounted to infringement, regardless
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of the fact that Google had only associated the trade marks with the products of the
owner, a series of decisions from the Paris Court of First Instance has recently judged
that such activity was not trade mark infringement but an act of unfair competition.
Hence, the Paris Court of First Instance (Tribunal de Grande Instance, 11 October,
2006, Citadines vs Google, available on www.legalis.net) ruled that where a search
engine proposed to an advertiser a keyword corresponding to third party’s trade marks,
there was no trade mark infringement. The Court relied on the principle of speciality
according to which a trade mark is only protected against its use for products or
services which are identical or similar to those covered by its registration. Yet, the
Court considered in this case that, as Google did not offer services which were identical
or similar to those registered under Citadine’s trade marks (it offered internet services),
Google did not infringe Citadine’s trade marks.
Nevertheless, Google was liable of tort. Indeed, the Court considered that, by proposing
to its clients a keyword protected by trade marks and not carrying out any prior
screening to avoid infringement, Google had assisted in infringement and was therefore
liable in tort for this activity.
The Paris Court of First Instance adopted the same approach in several decisions
(Tribunal de Grande Instance de Paris, “Gifam vs Google” of 12 July 2006, “Iliad vs
Google and Helios” of 31 October 2006, “Kertel vs Google” of 8 December 2005,
“Auto Ies vs Google” of Paris, 27 April 2006, available on www.juriscom.net), ruling
that Google was only liable in tort.
This position is however contrary to the case law of the Paris and Versailles Court of
Appeal, notably in the decision of the latter dated of 23 March 2006, in which it has
been ruled that Google was liable for trade mark infringement because of its AdWords
services (Versailles Court of Appeal, 23 March 2006, Google vs. SARL CNRRH No
05/00342, available on www.juriscom.net).
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(iii)
One category of confusion on the Internet is “initial interest confusion.”
Please explain the details of initial interest confusion and the cases to which
it applies. In particular, please explain any major court decisions related to
initial interest confusion. What is the generally accepted idea on the
relationship between initial interest confusion and free-riding?
In our understanding, the “initial interest confusion” doctrine has been created by
American case law and is about the use of a mark calculated to capture initial consumer
attention, even though no actual sale is finally completed as a result of the confusion.
Although this theory neither exists under French law nor under case law, it seems to us
that this category of confusion could be connected with typosquatting. Typosquatting is
a form of cybersquatting that relies on typographical mistakes made by Internet users
when inputting a website address into a web browser. Most typosquatters are either in
the practice of tricking or diverting Internet users to alternative websites or attempting
to sell the domain name back to the trademark owner.
In one of the most recent cases, known as the “Rue du commerce” case, the Paris Court
of First Instance (Tribunal de Grande Instance de Paris, 10 April 2006, available on
www.juriscom.net) ordered the transfer of the domain names “rueducommerc.com” and
“rueducommrece.com” to the owner of the trademarks "RUE DU COMMERCE",
"WWW.RUEDUCOMMERCE.COM", "WWW.RUEDUCOMMERCE.FR", "RDC.FR
RUE DU COMMERCE", "LARUEDUCOMMERCE", "LARUEDUCOMMERCE.COM",
because the domain names “rueducommerc.com” and “rueducommrece.com” diverted
Internet users to competitors’ websites.
It shall be noted that the Court condemned not only the typosquatter but also the
registrar in order to make the order enforceable against the latter.
This decision is based on the fact that the “alternative” websites were displaying
services which were similar to those of the “official” websites and on the existence of a
likelihood of confusion (even though no actual sale was finally completed).
(iv)
Enforcement of a registered trademark will be limited if the trademark owner
fails to use the trademark for a certain amount of time. On the Internet,
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however, will a trademark owner be excused from non-use as long as he/she
publishes the trademark on a website? Please explain, focusing on relevant
decisions on cancellation proceedings based on non-use and court decisions.
French law, namely article L.714-5 of the CPI (see (i) above), does not give any
definition of the notion of use.
French case law considers that genuine use implies that the sign is used “as a mark”, i.e.
it must be used to present or accompany the offer or sale of a product or service (that is
to say for a commercial purpose), although it does not necessarily require the trademark
to be reproduced on the product itself.
Therefore, the sole publication of a trademark on a website without any offer or sale of
a product or service will not be considered as “genuine use”. Thus, French case law
decided that the registration of a trademark as a domain name was not a genuine use as
far as the website was not worked (Court of Appeal Paris, Gaz. Pal. 2001, 2 somm. p.
1341). Moreover, the reproduction of a trademark on promotional papers is not a
genuine use (Cour de Cassation, 30 November 2004, No 02-18731) when the trademark
is not used on the market to designate goods or services.
Concerning more specifically the use on the Internet, the Paris Court of Appeal (22 June
2006, No 04/09761, available on www.legalis.net) decided that AOL FRANCE was not
likely to revocation of its rights on the figurative trademark composed of a smiley
(French trademark registration No 97 668 059) as the smiley logo had been used on a
website in connection with the services referred to in the registration (i.e.
telecommunications by way of computer and e-mailing) and came before or together
with the name of the website.
Therefore, the publication of a trademark on a website is not sufficient to excuse nonuse, as long as this trademark is not used to offer or sale goods or services.
(2)
What are the typical requirements for establishing dilution on the Internet?
Please explain the historical transition of protection against dilution while
referring to court decisions that provide the basis for the interpretation of
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statutory provisions and court decisions that have brought changes to the
interpretation of legal protection on the Internet.
Dilution is a concept of common law used for the first time by French judges in a case
where Champagne producers claimed for the cancellation of the trademarks “BAIN DE
CHAMPAGNE” and “ROYAL BAIN DE CHAMPAGNE” from Caron. The Paris Court
of Appeal (12 September 2001, Ann. Prop. Ind. 2001 p 297) considered that the use of
the word Champagne, which has an evocative nature, leads to a risk of dilution of the
fame of this appellation.
Dilution is not mentioned in the CPI and is not often mentioned per se by French case
law. From a general standpoint, the concept of dilution is linked to article L. 713-5 of
the CPI which provides that:
“Any person who uses a mark enjoying repute for goods or services that are not
similar to those designated in the registration shall be liable under civil law if such
use is likely to cause a prejudice to the owner of the mark or if such use constitutes
unjustified exploitation of the mark.
The foregoing paragraph shall apply to the use of a mark that is well known within
the meaning of Article 6bis of the Paris Convention for the Protection of Industrial
Property referred to above.”
According to French case law, the prejudice referred to in this provision is constituted
when the consequence of the use of a well-known trademark leads to the degradation or
to weakness of its distinctive or attractive nature and causes damages to its economical
value (Paris Court of Appeal, 25 March 1998, “Petrossian”, PIBD 1998 III p. 257).
In the “Milka” case, the Versailles Court of Appeal (27 April 2006, PIBD 2006 III p.
505) considered that, by choosing the domain name “milka.fr” in association with the
mauve colour as wallpaper, Ms. Milka B. tried to make an illegitimate profit from the
fame of the Milka trademark and the mauve colour by attracting a large number of web
users in order to be known all over the territory.
To our knowledge, there is no specific change to the interpretation of legal protection
against dilution on the Internet. But it shall be noted that the weakness of
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distinctiveness has been claimed in the keywords cases mentioned above and that the
amounts of damages allocated were quite high (compared to the amounts usually
allocated by French judges).
(3)
Please explain in detail (e.g., the provisions of laws or regulations applied)
cases in which a criminal penalty was imposed for the infringement of
intellectual property rights on the Internet, if any. In particular, have there
been any cases in which a criminal penalty has been imposed for trademark
infringement (either a registered or unregistered trademark)? If so, please
outline the requirements based on which criminal penalty was applied in such
cases.
[Copyright] Copyright infringement by inducement is not defined as such in the French
Intellectual Property Code (the “CPI”).
Article L.335-3 of the CPI states that any “reproduction, performance or
dissemination of a work of the mind, by any means whatsoever, in violation of the
author’s rights as defined and regulated by law shall also constitute an infringement”.
Infringement by inducement is neither dealt with in more general civil or criminal
provisions. Further, such ground of infringement has never been dealt with by the
courts, so no decision already rendered by French courts could be considered as
equivalent to Grokster case.
The concept which could help a French judge faced with a similar case to render a
decision would probably be the ground of “complicity”, already used by French
jurisdictions in cases of copyright infringement. Article 121-7 of the French criminal
code states, as a principle, that “accomplice to a felony or a misdemeanour is the
person who knowingly, by aiding and abetting, facilitates its preparation or
commission. Any person who, by means of a gift, promise, threat, order, or an abuse
of authority or powers, provokes the commission of an offence or gives instructions to
commit it, is also an accomplice”. An accomplice, who has provided means to commit
the infringement, must have been aware of their infringing use (decrypting software,
engraver of CDs…).
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Evidence of the knowledge by the defendant that the use of the means is fraudulent is
essential, as the Paris Court of Appeal stated in a decision rendered on 13 October
1998 (Ministère Public v. Boccara & Lericque - confirmed by a decision of the French
Supreme Court in 9 November 1999), about resale of copiers of video games. The
company Nintendo brought action against two individuals, whose situations were
different:
The first defendant was a professional salesman of video games, who legally bought
and sold the equipment at issue. The Court decided that he was not an accomplice of
infringement, even though copies, beyond their function of saving pending games,
allowed unlimited copying of software. In fact, he could not know the effective use
which would be made of copiers by buyers. Thus, he was in the same situation as
video recorders or blank video cassette sellers.
The second defendant was a student who resold the same copiers within a piracy
network. The Court considered that he was an accomplice of infringement; "since he
was perfectly aware that copiers would be used for other purposes than saving games
and by selling them in large quantities, he allowed development of infringing acts".
Another decision rendered by the Paris Court of Appeal, dated 20 October 1988
(Artware and others v. Commande Electronique), may be of some interest, based on
civil liability. A software dealer brought an action against a company which sold
decrypting software which overcame the protection developed by the software dealer.
Such acts have been adjudicated as “unfair competition acts by inducement to
infringement of software.” In other words, inducement, in this case, was not
sanctioned by copyright law but by unfair competition provisions, based on facts
different from copyright infringement.
Despite the absence of any decision which could be considered as parallel to Grokster,
many French protagonists have given their opinion following the Supreme Court’s
decision. In particular, French Minister for Culture has ordered a legal study of the
American decision, considering that it may improve the debate relating to the struggle
against digital infringement and to development of securitised legal offers.
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But various bodies involved in the debate over peer-to-peer software, such as some
collecting societies, view the Grokster decision as a special case since it found the
defendants liable on specific grounds, which could not be generalised (picking users
of Napster and promoting the existence of protected works on their networks in order
to increase their revenues). Consequently, in their opinion, it would not change
anything with respect to the practice of file sharing in the world, including in France.
Moreover, the action brought before Paris First Instance Court, brought by two
producers of the French blockbuster “Les Choristes” (“The Chorus”) on the basis of
conspiracy for piracy because their advertisements were available on peer-to-peer
websites where Les Choristes was offered for illegal downloading. Notably, the
plaintiffs have attacked advertisers and internet access providers, alleging that they
have financed, by their investments, alleged illicit downloading networks of movies.
Such acts may be considered as complicit to infringement and to provoke
infringement. On June 21 2006, the Criminal Court of Paris ruled against the
plaintiffs.
On 9 March 2005, the French Court of Appeal of Montpellier released a 22 years old
Internet user free of charges after he was sued for copying nearly 500 movies on
Internet, burning them on CDs and sharing them with friends. The Court based its
decision on the article L-122-5 of the French Intellectual Property Code stating that
“authors can’t forbid copies or reproductions that are only intended for the private use
of the copyist”.
In a similar case in January however, the Pontoise Cour of First Instance (2 February
2005, D. 2005 No21 p. 1435) found another Internet user guilty and condemned him to
pay more than 15 000 euros.
[Designs] We are not aware of criminal penalty imposed for infringement of registered
designs on the Internet. For information, the applicable provisions are the followings:
Article L.521-4:
“Any knowingly committed infringement of the rights guaranteed by this Book shall
be liable to a three-year imprisonment and a fine of € 300.000. Where the offence is
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committed by an organised criminal group, the penalties shall be increased to fiveyear imprisonment and a fine of € 500.000.
In addition, the court may order the total or partial, permanent or temporary
closure, for a period not exceeding five years, of the establishment that has served
for the commission of the offence.
Temporary closure may not be a cause of either termination or suspension of
employment contracts, or of any pecuniary detriment to the employees concerned.
Where permanent closure causes the dismissal of staff, it will give rise, over and
above the compensation in lieu of notice and the dismissal compensation, to
damages as provided in Articles L122-14-4 and L122-14-5 of the Labour Code for
the breach of employment contracts. Failure to pay those compensations shall be
liable to a six-month imprisonment and a fine of € 3.500.”
Article L.521-5:
“Legal entities may be declared criminally liable, in the manner specified in Article
121-2 of the Penal Code, for the offences defined in Article L521-4 of this Code.
The penalties to which legal entities are liable are:
1°.fines in accordance with the procedure laid down in Article 131-38 of the Penal
Code;
2°.the penalties mentioned in Article 131-39 of the same Code.
The prohibition mentioned in Article 131-39 under 2 shall relate to the activity in
the exercise of which or on the occasion of the exercise of which the offence was
committed”.
[Patents] We are not aware of criminal penalty imposed for infringement of patents on
the Internet. For information, the applicable provisions are the followings:
Article L.615-12:
“Any person improperly claiming to be the owner of a patent or of a patent
application shall be liable to a fine of FRF 50,000. In the event of a repeated
offence, the fine may be doubled. An offence shall be deemed to be repeated within
the meaning of this Article if the offender has been convicted for the same offence
within the preceding five years.”
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Article L.615-13:
“Notwithstanding the heavier penalties provided for with regard to violation of
State security, any person who knowingly violates any of the prohibitions laid down
in Articles L612-9 and L612-10 shall be liable to a fine of FRF 30,000. Where the
violation has prejudiced national defence, imprisonment of five years may also be
ordered.”
Article L.615-14:
“Any person who has knowingly infringed the rights of the owner of a patent as
defined in Articles L613-3 to L613-6 shall be liable to a three-year imprisonment
and a fine of € 300.000. Where the offence was committed by an organised criminal
group, the penalties will be increased to a five-year imprisonment and a fine of €
500.00.”
[Trademarks] We are not aware of criminal penalty imposed for infringement of
trademarks on the Internet. For information, the applicable provisions are the
followings:
Article L.716-9:
“Any person, who, for the purpose of selling, supplying, offering for sale or lending
goods under an infringing mark,
a) imports, under any customs regime, exports, re-exports or tranships goods
presented under an infringing mark.
b) reproduces industrially goods presented under an infringing mark,
c) gives instructions or orders to commit the acts provided for at (a) and (b) shall be
liable to a four-year imprisonment and a fine of € 400.000.
Where the offences provided for under this article have been committed by an
organised criminal group, the penalties will be increased to a five-year
imprisonment and a fine of € 500.000.”
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Article L.716-10:
“A person who:
a) holds without legitimate reason, imports under all customs procedures or exports
goods presented under an infringing mark;
b) offers for sale or sells goods presented under an infringing mark;
c) reproduces, imitates, uses, affixes, removes, modifies a mark, a collective mark or
a collective mark of certification in violation of the rights conferred by its
registration and of prohibitions which rise from this;
d) delivers knowingly a product or provides a service other than that which is
required of him under a registered mark shall be liable to a three-year imprisonment
and a fine of € 300.000.
The infringement, under the conditions provided for at (d), shall not be considered
constituted if a pharmacist exercises the faculty of substitution provided for under
Article L. 5125-23 of the Public Health Code.
Where the offences provided for at (a) to (b) have been committed by an organised
criminal group, the penalties shall be increased to a five-year of imprisonment and a
fine of € 500 000.”
Article L.716-11:
“Any person who:
a) Has knowingly made any use whatsoever of a registered collective certification
mark in a manner other than that laid down in the regulations accompanying the
registration;
b) Has knowingly sold or offered for sale a product bearing a collective certification
mark employed in an irregular manner;
c) Within a period of 10 years as from the date on which protection of a collective
certification mark that has been used has terminated, has knowingly used a mark
that constitutes a reproduction or imitation of such mark or sold or offered for sale,
furnished or offered to furnish goods or services under such mark, shall be liable to
the same penalties.
This Article shall apply to trade union marks under Chapter III of Title I of Book IV
of the Labor Code.”
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Article L.716-11-1:
“In addition to the sanctions provided for in Articles L716-9 and L716-10, the court
may order the total or partial, permanent or temporary closure, for a period not
exceeding five years, of the establishment that has served for the commission of the
offence.
Temporary closure may not be a cause of either the termination or the suspension of
employment contracts or of any monetary consequence prejudicial to the employees
concerned. Where permanent closure causes the dismissal of staff, it shall give rise,
over and above the indemnity in lieu of notice and the termination indemnity, to
damages as provided in Articles L122-14-4 and L122-14-5 of the Labor Code for the
breach of employment contracts. Failure to pay those indemnities shall be
punishable with a six-month prison term and a fine of FRF 25,000.”
Article L.716-12:
“Legal entities may be declared criminally liable, in the manner specified in Article
121-2 of the Penal Code, for the offences defined in Articles L716-9 to L716-11 of
this Code.
The penalties to which legal entities are liable are:
1°. Fines in accordance with the procedure laid down in Article 131-38 of the Penal
Code.
2°. The penalties mentioned in Article 131-39 of the same Code.
The prohibition mentioned in Article 131-39 under 2 shall relate to the activity in
the exercise of which or on the occasion of the exercise of which the offence was
committed.”
(4)
In addition to the points mentioned above, if there are any matters that are
considered to be problematic in France, please explain. For example, please
explain the following points.
(i)
Are there any arguments on the need to regulate the use of trademarks, etc. in
a virtual society on the Internet such as “Second Life” or on the need to apply
the provisions on dilution against such use? Or can the current legal system
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sufficiently deal with such use? Please explain by citing academic theories
and court decisions. (If there are any differences between registered
trademarks and unregistered trademarks in that regard, please explain such
differences.)
No case law is currently available in France concerning Intellectual Property
infringement in relation to “Second Life”. The sole decision available concerning
Second Life is a summary order of the Paris Court of First Instance (2 July 2007
available on www.legalis.net) dismissing (on procedural grounds) a claim brought by a
family association to stop the broadcasting on “Second Life” of pornographic content.
It shall be noted that “Second Life” is not very popular in France at the present time. It
is probably the reason why there is no case law in relation with this virtual society.
In our opinion, French judges would apply traditional trademark rules to “Second Life”,
as they did with respect to other issues on the Internet.
(ii)
Can a trademark acquire a secondary meaning as a result of being used on
the Internet alone? If so, please explain what kinds of conditions are required
on the Internet by indicating actual case examples (e.g., a large number of
accesses from a wide area).
In our understanding, the term “secondary meaning” corresponds to acquired
distinctiveness.
To our knowledge, there is no French case law where a sign has acquired distinctiveness
as a result of being used on the Internet alone.
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II.
Dealing with Trademark Infringement Across National Borders
Please explain the following matters regarding the use of trademarks on the Internet
in other countries and the regulation of such use.
(1)
When a French court is to determine whether or not information transmitted
on the Internet from a server located in a foreign country infringes a
trademark used in France, the court must first indicate whether or not it has
jurisdiction.
While also referring to these court decisions, please explain the trend of
French courts’ determination on jurisdiction over such cases and any related
academic theories.
As to infringement on the Internet, and more particularly in the light of trade mark
law, French case law has always been in favour of the territorial jurisdiction of the
French courts. For this purpose, French courts have relied upon Article 46 of the New
French Code of Civil Procedure and Article 5 §3 of the EU Regulation No. 44/2001 of
22 December 2000 on jurisdiction and the recognition and enforcement of judgments
in civil and commercial matters, and have considered that if the website on which a
trademark is infringed is accessible from France, "the place where the harmful event
occurred" is the French territory. The first decision to deal with this issue was the
decision of the Nanterre Court of First Instance (Tribunal de Grande Instance de
Nanterre, 13 October 1997, "Payline", available on www.juriscom.net) which held that
the mere reproduction of a French trade mark in a domain name accessible from
France was a harmful event and an infringement although services bearing the trade
mark were not marketed in France. Other decisions followed the same lines (Tribunal
de Grande Instance de Paris, 11 February 2003, "Intermind", available on
www.juriscom.net), applying thus the case law developed in defamation by the written
press to intellectual property rights.
Then, the simple fact that the website was accessible from France was sufficient to
justify an infringement act by offering for sale products or services within the French
territory. Therefore, the French judges have almost always jurisdiction over an action
for infringement of a French trade mark by a website hosted abroad.
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Things have changed with the “Hugo Boss” case.
In this decision, the French Supreme Court (Cour de Cassation, 11 January 2005 No 0218381) decided that the use of the names "Boss" and "Hugo Boss" on an Internet
website of the company Reemtsma was not infringing the French registered trademarks
"Boss" and "Hugo Boss" belonging to the company Hugo Boss in France. In the
decision, the Supreme Court confirmed the decision of the Court of Appeal of Paris (27
June 2002) according to which, since the website in question was in English and not in
French, said website could not be considered as directed to the public in France. The
decision is taken notwithstanding the fact that the entry page of the website in question
comprised the word "Bienvenue" in French, which seemed to indicate that the website
was indeed also directed to the French speaking public and, in particular, the French
public.
According to the new position taken by the Supreme Court, the presentation and
specific indications given on the website must be considered before a decision can be
taken as to whether the website can be effectively considered as directed toward the
French public. If the answer is no, there is no trademark infringement in France. Such a
determination will have to be made on a case-by-case basis, so that use of registered
trademarks on web sites no longer constitutes an automatic act of trademark
infringement in France.
This solution has been applied once again in a recent case, in which the Court of Appeal
of Paris (6 June 2007, Google v/ AXA, available on www.legalis.net) considered Paris
the Court of First Instance incompetent to rule on a claim filed by Axa against Google’s
Adwords system. Considering that the links at dispute did not appear on google.fr, but
on google.ca, google.de and google.co.uk, the Court of Appeal considered that there
was no substantial relation between the facts of the case and the alleged damage.
This solution shows a will to avoid forum shopping and to require substantial or
significant relations between the facts of the case and the alleged damage seems to be a
move in the right direction.
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2. Trademark Protection on the Internet
02.12.2007
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(2)
Please explain the regulations under the current law (federal law, state law)
against an act of infringement in the case where a French trademark
(registered or unregistered) is found to be infringed by the transmission of
information on the Internet from a server located in a foreign country, as
well as any related court decisions (including whether the details of the
protection differ between a registered trademark and an unregistered
trademark).
[Server Location] Under French law the location of the server as the mere technical
source for the trade mark infringement is not relevant, as far as the relevant criteria is
the relations between the public to which the information transmitted are directed and
the place where the damages are suffered.
[Legal Framework] Again, there are no special provisions for trademark
infringements which would be constituted by the transmission of information on the
Internet.
[Identification of the violator] The French law No 2004-575 of 21 June 2004 for
confidence in the numerical economy (LEN) provides that:
“ 2. The persons or entities which ensure, even on a purely free basis, for
provision of the public by services of communication to the public on line, the
storage of signals, writings, images, sounds or messages of any nature provided by
recipients of these services, cannot be held liable because of the activities or the
information stored at the request of a recipient of these services if they did not
have indeed knowledge of their illicit nature or facts and circumstances revealing
this character or if, at the very moment when they were informed of it, they acted
promptly to withdraw these data or to prevent any access to them”.
The judges can order the supplier of lodging or the provider to cease the diffusion of
contents considered to be illicit, in order to prevent or cease the alleged damage.
Therefore, this provision could be used to request the cease of the diffusion of a content
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2. Trademark Protection on the Internet
02.12.2007
Page 22 of 24
considered to be infringing (and then illicit), even when the server is located in a
foreign country.
However, to our knowledge, there is no French case law in relation with this particular
point.
(3)
Have there been any cases where a criminal penalty has been imposed under
French law against infringement in the case where a French trademark
(registered or unregistered) has been found to be infringed by the
transmission of information on the Internet from a server located in a foreign
country? If so, what kinds of procedures are followed to execute such
criminal penalty?
To our knowledge, there is no French case law where a criminal penalty has been
imposed against infringement in the case where a French trademark has been found to
be infringed by the transmission of information on the Internet from a server located in
a foreign country.
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2. Trademark Protection on the Internet
02.12.2007
Page 23 of 24
(4)
No international convention exists as a means for settling disputes between
trademark owners who are entitled to legitimate rights in different countries
for identical or similar trademarks. However, though not legally binding,
WIPO has compiled the Joint Recommendation Concerning Provisions on the
Protection of Marks, and Other Industrial Property Rights in Signs, on the
Internet, which was adopted by the General Assembly in October 2001, with
regard to the use of trademarks on the Internet.
This recommendation recognizes that the use of a sign on the Internet
constitutes use in a Member State only if the use has a commercial effect in
that Member State (Article 2). Since such commercial effect could prove to be
irrelevant to the intention of the trademark user, the recommendation
provides for exemption measures to exempt a user from being held liable for
infringement with regard to use prior to and after receipt of a notification of
infringement (Article 9, Article 10).
Has the French legal system been changed in any way with regard to use of
trademarks on the Internet (e.g., provisions concerning commercial use or
exemption measures) based on said recommendation? In addition, has the
recommendation been taken into consideration in the examination of
trademark applications or in litigation against a decision of the Trademark
Trial and Appeal Board or infringement litigation? Please explain the
measures currently taken or planned to be taken in the future by France to
deal with the recommendation. If there have been court decisions in which
the handling differs from the recommendation, please explain in detail
(including whether the handling of the protection differs between a registered
trademark and an unregistered trademark). Please explain based on your
responses for (1) to (3) above
There was no modification of French trademark law based on the Joint
Recommendation. To our knowledge, France is not planning on taking any legislative
measures in the future dealing with the recommendation.
We cannot assert that these recommendations have been taken into consideration in the
examination of trademark applications or in litigation against a decision of the
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Trademark Trial and Appeal Board or infringement litigation. To our knowledge, the
notion of commercial effect is not used by French judges. However, it can be observed
that French case law has changed after 2001 with the “Boss” case mentioned above (see
(II.1)), in order to take into account the occurrence of a damage within the French
territory by reference to the French public.
*
*
*
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