Modernisation of trade mark law in the USA
The Trademark Modernization Act of 2020 will be implemented in the USA in December 2021.
It is increasingly important to protect your brands, not only to obtain the statutory rights that are available under the Trade Marks legislation in the UK and EU, but also to protect your business online.
A registered UK and/or EU trade mark is a requirement for participation in the Amazon Brand Registry. A registration provides a strong and clear ground for a claim under Facebook’s IP Infringement policy and eBay’s VERO procedure. Without a registered trade mark, the chances of succeeding in a complaint on Amazon, Facebook or eBay against third party use of an identical or similar brand are significantly reduced.
A trade mark registration provides a quick, cost effective means to address unauthorised online use of your brand by a third party / competitor.
To enrol in the Brand Registry the applicant must hold a registered trade mark in respect of the brand which relates to the product offered for sale.
Enrolment in the Brand Registry provides a number of additional benefits in tackling unauthorised use and infringement of your trade mark. For further information, please see the information provided at https://brandservices.amazon.co.uk/benefits.
We assist many of our clients in the verification process of enrolment and with the initial searching, filing and registration of trade marks to enable the business to use the system.
Facebook is used by many retail businesses to advertise and offer for sale goods and services. It is therefore common for businesses to encounter instances of unauthorised use and infringement of their registered trade marks.
If a business has a registered trade mark and if there is a basis to claim that third party activity infringes the registration, reporting the violation of your rights to Facebook provides a quick and cost-effective way to address the issue. This is not an alternative to court but it is a useful tool in the overall strategy for tackling infringement.
A successful Facebook complaint is not a finding of infringement, it is instead a finding that the third-party activity is in breach of the Facebook Intellectual Property policy.
We are able to assist in the preparation and filing of complaints to Facebook.
Another common source of intellectual property rights infringement is the online marketplace eBay. Again, to put a business in the strongest position to protect its IP rights and enforce those rights, it is important to have the relevant registered protection in place.
This enables rights owners to object by filing a notice of infringement (NOCI) – https://ir.ebaystatic.com/pictures/aw/uk/pdf/UKNOCI1.pdf.
Although different in its nature to the online marketplace sites, Twitter can also be a source of IP rights violations.
Twitter is not generally a forum whereby businesses offer for sale goods and services. However, there are still many instances of unauthorised use of IP rights. Whilst a third party may be allowed to use a registered trade mark to identify that business and / or the goods and services provided by that business, the use must not be misleading or confusing.
Parody, fan accounts and commentary are common on Twitter and in such cases use of a third party registered trade mark may also be permissible.
In the online world this is another area that brings IP rights, and specifically registered trade marks, to the fore.
Use of a third party registered trade mark as an Ad Word or metatag is common. In some instances, such use can amount to infringement of a registered trade mark. There have been a number of well known cases reported in this area. An older but well publicised case involved Marks & Spencer Group PLC and Interflora.
Disputes in this area can be quite complicated. In cases where the registered trade mark appears in the advert text it is much more likely that there will be a finding of infringement. The circumstances of each case must be assessed carefully.
It is also relevant to make a brief comment in respect of domain names. The registration and use of a domain name can give rise to a claim of infringement of registered trade mark rights.
The infringement issue will be dependant upon the ‘use’ made of the domain name. This is something which would be addressed by correspondence between the parties / their legal representatives, and potentially court proceedings.
However, the separate issue of the ‘registration’ of the domain name can be addressed for .co.uk domains by use of the dispute resolution service provided by:
And for .com domains: WIPO/UDRP – http://www.wipo.int/amc/en/domains/
Under the Nominet procedure the complaint is based upon finding that a domain name registration constitutes an ‘abusive registration’. Whereas under the WIPO/UDRP system the complaint is based upon a finding of ‘bad faith’.
This article does not provide a comprehensive account of the issues, the aim is simply to bring to light the importance of IP rights and particularly trade mark registration in the online business world.
Wilson Gunn are able to provide assistance and advice in connection with all of the issues discussed. If you have any questions or would like further information please contact us.