Search Results

Trade Marks and Passing Off

Jaani Riordan

in The Liability of Internet Intermediaries

This chapter examines the secondary liability of internet intermediaries for trade mark infringement and passing off occurring online. The internet intrinsically relies upon a functioning system ... More

This chapter examines the secondary liability of internet intermediaries for trade mark infringement and passing off occurring online. The internet intrinsically relies upon a functioning system of domain names, keyword-based search tools, and advertising. These arenas present ample opportunities for conflict over protected signs. At one extreme are territorial conflicts between legitimate traders who happen to possess parallel rights in different jurisdictions; at the other extreme lie cases of opportunistic squatting on a rivalrous keyword resource, such as a domain name, for commercial gain, or outright counterfeiting. Within the contested space that lies between, the line between honest and unfair competition is becoming increasingly blurred, as traders seek to exploit rivals’ names in keyword advertising, practise aggressive search engine optimisation, and compete for traffic, reputation, and attention. The zone of accepted commercial practices is fluid and extremely nebulous. Less

International Legal Argumentation on Intellectual PropertyTwo Snaphots from the World Intellectual Property Organization: Edward Kwakwa

Edward Kwakwa

in Talking International Law: Legal Argumentation Outside the Courtroom

This chapter focuses on international legal argumentation in the field of intellectual property law. It analyzes the Uniform Domain Name Dispute Resolution Policy (UDRP), an alternative form of ... More

This chapter focuses on international legal argumentation in the field of intellectual property law. It analyzes the Uniform Domain Name Dispute Resolution Policy (UDRP), an alternative form of dispute resolution process in which individuals and companies invoke administrative criteria to try to reverse situations where their trademarks have been hijacked by cybersquatters. The chapter concludes that an established body of jurisprudence facilitates greater certainty and predictability of decisions under the UDRP. Second, it describes the role of legal argumentation in the deliberations of the World Intellectual Property Organization’s Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore. While legal argumentation is yet to result in an international treaty, it has shaped national and regional legislation on the protection of traditional knowledge.Less

France (‘.fr’)

David Taylor

in Domain Name Law And Practice: An International Handbook

For a trade mark to enjoy protection in France, two substantive requirements must be met: first, the trade mark must be capable of being represented graphically, and secondly, the trade mark must ... More

For a trade mark to enjoy protection in France, two substantive requirements must be met: first, the trade mark must be capable of being represented graphically, and secondly, the trade mark must be capable of distinguishing the products or services of a natural or legal person. Less

Israel (‘.il’)

Ellen B Shankman

in Domain Name Law And Practice: An International Handbook

In Israel, trademarks are governed by both legislation and by common law. Rights are created by the first to file or use within the jurisdiction. Registration is not mandatory to establish rights ... More

In Israel, trademarks are governed by both legislation and by common law. Rights are created by the first to file or use within the jurisdiction. Registration is not mandatory to establish rights in a trademark, and there are no compulsory registration provisions. However, there are substantial benefits to seeking trademark registration in Israel. The Israel Trade Marks Ordinance (New Version) 5732-1972 (Trademarks Ordinance) governs the rules under which trademarks are registered. Proof of use is not required to obtain registration in Israel, although there are provisions for cancellation of trademarks for non-use. Less

Japan (‘.jp’)

Makoto Hattori and Nodoka Nakamura

in Domain Name Law And Practice: An International Handbook

Two types of trademarks are protected under Japanese law: (1) trade and service marks, protected by the Trademark Act and the Unfair Competition Prevention Act1 (hereinafter the UCA); and (2) ... More

Two types of trademarks are protected under Japanese law: (1) trade and service marks, protected by the Trademark Act and the Unfair Competition Prevention Act1 (hereinafter the UCA); and (2) business names, protected by the Companies Act, the Commercial Code, and the UCA. Less

Netherlands (‘.nl’)

Adonna Alkema

in Domain Name Law And Practice: An International Handbook

In the Netherlands, there is no legislation dealing with the registration and use of domain names. Domain name conflicts are therefore decided on the basis of existing laws, such as laws regarding ... More

In the Netherlands, there is no legislation dealing with the registration and use of domain names. Domain name conflicts are therefore decided on the basis of existing laws, such as laws regarding the protection of trademarks and trade names and tort law. Domain name conflicts often lead to court proceedings, resulting in over 500 decisions rendered by first instance courts so far and more than 90 decisions rendered by appeal courts. Less

Poland (‘.pl’)

Justyna Ożegalska-Trybalska

in Domain Name Law And Practice: An International Handbook

Protection of industrial property in Poland, including trademarks, is governed by the Industrial Property Law (Ustawa prawo własności przemysłowej), dated 30 June 2000 (hereinafter the IPL).

Portugal (‘.pt’)

Alexandre L Dias Pereira and Carla Valério

in Domain Name Law And Practice: An International Handbook

In Portugal, several intellectual property (IP) rights are protected, including both trademarks and logotypes. Personal names, as well as literary and artistic names, company names and names of ... More

In Portugal, several intellectual property (IP) rights are protected, including both trademarks and logotypes. Personal names, as well as literary and artistic names, company names and names of other legal persons, are also protected as exclusive rights which do not strictly qualify as IP rights under Portuguese law. Less

The Republic of Korea (‘.kr’)

Ho-Hyun Nahm

in Domain Name Law And Practice: An International Handbook

Trademark rights in Korea are based on registration. The Trademark Decree was promulgated in 1908 and the Trademark Act was firstly enacted and enforced on November 28, 1949. Since that time, the ... More

Trademark rights in Korea are based on registration. The Trademark Decree was promulgated in 1908 and the Trademark Act was firstly enacted and enforced on November 28, 1949. Since that time, the Trademark Act has been amended 39 times, with the most recent amendment on June 11, 2014 (this amendment took effect as of June 11, 2014). The Trademark Act is composed of ten chapters divided into General Provisions, Requirements and Application for Trademark Registration, Examination, Trademark Registration Fees and Trademark Registration, Trademark Rights, Protection of Owners of Trademark Rights, Trial, Retrial and Litigation, International Application under the Protocol, and Supplementary Provisions. Less

Russian Federation (‘.ru’ and ‘.рф’)

Iouri Kobiako von Gamm and Natalia Gulyaeva

in Domain Name Law And Practice: An International Handbook

To date, the Russian legislature has not adopted any specific statutory provisions on domain law, and therefore conflicts arising from domain names containing third-party trademarks are governed by ... More

To date, the Russian legislature has not adopted any specific statutory provisions on domain law, and therefore conflicts arising from domain names containing third-party trademarks are governed by international treaties and Russian civil and competition law regulations. The existing substantive provisions of both intellectual property (IP) and procedural law offer protection to the holders of Russian and foreign IP rights, and thus there is currently no perceived immediate need for new legislation. Less

South Africa (‘.za’)

Charné le Roux

in Domain Name Law And Practice: An International Handbook

A mark includes any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour, or container for ... More

A mark includes any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour, or container for goods or any combination of the aforementioned attributes. Less

Spain (‘.es’)

Albert Agustinoy Guilayn

in Domain Name Law And Practice: An International Handbook

Spanish protection for trademarks and distinctive signs is based on the provisions of Act No 17/2001 (hereinafter, the ‘Spanish Trademarks Act’ or ‘STA’), which has been in force since 2002.

Sweden (‘.se’)

Petter Rindforth

in Domain Name Law And Practice: An International Handbook

Trademark protection in Sweden can be obtained by use, by a national Swedish trademark registration, by a Madrid Protocol registration covering Sweden, and/or by a Community Trademark registration.

United States Of America (‘.us’)

William R Towns

in Domain Name Law And Practice: An International Handbook

The standard for trademark infringement in the United States is ‘likelihood of confusion’. Under this standard trademark infringement occurs when, dependent on the attendant circumstances, two ... More

The standard for trademark infringement in the United States is ‘likelihood of confusion’. Under this standard trademark infringement occurs when, dependent on the attendant circumstances, two parties’ use of the same or similar mark with related goods and services would be likely to cause the public mistakenly to believe: (1) that the goods and services emanate from the same source; or (2) that the parties are in some manner affiliated or that the goods and services of one party have the sponsorship, endorsement, or approval of the other party. In either case, trademark law aims to protect the public from deceit, and to prevent the diversion of reputation and goodwill from the one who has created it to another who has not. Less

Alternative Dispute Resolution for ‘.eu’

Torsten Bettinger and Allegra Waddell

in Domain Name Law And Practice: An International Handbook

After the positive impact made by the UDRP in terms of providing an expedient remedy for cases of abusive domain registration, the EU legislature was moved to consider how an ADR mechanism might be ... More

After the positive impact made by the UDRP in terms of providing an expedient remedy for cases of abusive domain registration, the EU legislature was moved to consider how an ADR mechanism might be adapted to meet the needs of the ‘.eu’ ccTLD space. Less