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Trademark Infringement on the Internet

Updated: Jul 11

A trade mark is defined as any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of another.[1] A trade mark may consist of words, designs, letters, numerals or the shape of goods or their packaging.[2] Section 9 TMA provides 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. Section 10 TMA provides for what constitutes infringement.

The internet provides a huge market for trade and services. It is thus a veritable avenue for infringement of trade mark. When infringement occur, internet intermediaries are sometimes held liable jointly with the infringer. The ground for intermediaries’ liability include contributory infringement, vicarious liability, authorisation or accountability the last ground based on the fact that they are best placed to bring infringing activities to an end.[3] In appropriate cases, injunctive relief may be ordered against the intermediary.[4]

Search engines such as Google provides a unique means of advertising goods and services through the use of AdWords. AdWords are referencing service that enables its operators to reserve keywords in order to obtain placing when internet users conduct search for goods and services. When the search term is typed into the universal resource locator (url) two results are displayed: the natural result which contains the list of relevant results of the search. There is however another set of result called the sponsored links. The sponsored link is displayed separately which is the result of the AdWords that had been purchased by its sponsors. The use of this service creates a potential for trade mark infringement.

From the case law, there are instances where the use of AdWords has been held to amount to legitimate use. In Wilson v Yahoo Uk [2000] EWHC 361 (Ch) the claimant brought an action for copyright infringement against the defendant under Section 9(1) Community Trade Mark Regulations. The claimant had carried on trade under the trade name “Mr Spicy”. He complained that in 2006 when he typed his trade name “Mr Spicy” into the Yahoo browser or any other search engine, the search result displays sponsored links for Sainsbury Supermarket thus enabling him to be redirected to the website of Sainsbury Supermarket. It was established that when the search term is “Mr Spicy” is typed into the url, it triggers Sainsbury as sponsor only because the term included the word spicy and not just because “Mr Spicy” is the search term. It was established that Sainsbury Supermarket had not acquired the trade mark “Mr Spicy” as AdWord. The court reaffirmed the purpose of trade mark a “guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin.”[5] The court further affirmed that “However, the exercise must be reserved to cases in which a third party's use of the sign affects or is liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods.”[6] The court rejected the claimant’s claim and granted summary judgement to the defendant.

The Directive on Electronic Commerce provides a buffer for internet intermediaries in that they are generally not liable when they are functioning as mere conduit,[7] or for catching[8] or for hosting.[9] Furthermore, there is no general obligation of to monitor their customer information transmitted or stored.[10] Internet intermediaries would however be held liable when they have constructive knowledge of the infringement[11] or where they have knowledge or control of the infringing activity.[12]

In L’Oreal v eBay[13] the L’Oreal brought the action as a test case against eBay. eBay is an internet marketplace with presence around the world. Part of the claim of L’Oreal was that eBay had bought keywords which consists of Link Marks which serves to trigger sponsored links on search engines. L’Oreal claims that eBay acquire and uses sings which are identical to its trade marks, and the use of these links has the effect of directing customers to sites and good which infringes its trade mark. The court held, distinguishing the case of Wilson above, that the sponsored link include signs which are admittedly identical to the relevant trade mark and that the defendant who have made the infringing use of the links are the advertisers rather than the search engine provider.

[1] Sec. 1(1) Trade Marks Act 1994 [2] Sec. 1(1) TMA [3] Rec. 60, Information Society Directive. [4] See for example Art. 8(3) Information Society Directive. [5] Para. 59 [6] Para 60 [7] See Art. 12 Directive of Electronic Commerce [8] Id Art. 13 [9] Id Art. 14 [10] Id Art. 15 [11] See for example Case C-324/08 L’Oreal v eBay [12] See Case C-236/08 Google France v Louis Vuitton [13] C-324/09

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