Credit Management magazine October 2017

OPINION
AUTHOR – ADAM BERNSTEIN
become difficult,” says Davis. “Originally
there were two ‘Apple’: the Beatles record
label and the computer company. It wasn’t
until the advent of music being sold
in digital format that litigation ensued
between these companies.”
ONLINE WORLD
So where does that leave the use of
trademarks on the internet? Where do
firms stand in a global internet age where
protection is granted on a country-bycountry
basis? What if a business uses a
trade mark lawfully in one country but
then breaches rights elsewhere? Davis
says that while there are few specific
national laws and no international
conventions dealing with the issue, many
countries legal systems, including those
of the UK and the European Union, have
tended towards the view that so long as a
website is not targeted or directed at the
second country, use of the trademark will
not be actionable in the second country.
The biggest issue at hand is that
trademarks overrule everything else –
company names, domain name, twitter
handles, or the account names of social
media businesses such as Facebook or
LinkedIn. Davis makes this further point:
“Just as in a single country there can
be several businesses who can use the
same business name (as we saw in the
Lotus example) there are often several
businesses internationally who can use
the same trade mark.” So, while you might
wish to shop online today at ‘asda.com’,
This means a trademark
can be safely used
or registered by
different businesses
simultaneously. A good
illustration of this is
the word mark ‘lotus’
which in the UK has been
successfully registered
by many companies.
originally your shopping would have
been somewhat limited as it would have
taken you to the Arizona School of Dental
Assisting who were the first to register
that web address. Similarly, computer
consultancy Boston Business Computing
eventually sold ‘bbc.com’ to the British
Broadcasting Corporation.
DISSIMILAR USE
Davis says that in the examples of ‘asda.
com’ and ‘bbc.com’ no legal wrong was
being committed, ‘since each entity was
entitled to use that trademark in the
limited manner of its use, it was simply
a case of first come, first served.’ There
could be no cause for complaint provided
the dental assistants had not begun to
sell groceries in the UK. Likewise, Boston
Business Associates was entitled to use
the domain ‘bbc.com’ since they were not
competitors of the British Broadcasting
Corporation. Because of this they can
continue to use their present web domain
name: ‘bosbbc.com’.
ENFORCEMENT COSTS
The organisations behind the common
internet domain suffixes (such as VeriSign
in the case of the ‘.com’ domain or Nominet
in the case of the ‘.co.uk’ domain) have
mandatory dispute resolution procedures
in the case of alleged trade mark
infringement. Those procedures bind
companies who have those domain name
addresses and in any event, are invariably
cheaper to invoke than national law. It
is still open for a business that owns a
trade mark to use the national courts to
prevent the misuse of a trade mark on the
internet.
There have been many examples
of where a trademark has been used
incorrectly on social media by a company
other than the registered owner. For the
most part, these are resolved by the social
media company taking action to prevent
that infringement since that use is usually
in breach of the social media companies
own terms of use. An exception can be
where the social media company is itself
commercialising the use of the trademark
– and that will usually entail expensive
litigation.
The lesson from all of this is that
firms should proactively register
their trademarks, protect those marks
appropriately, and save on cost by
pursuing only those that impinge on their
line of business. Before throwing money
at expensive and potentially PR-damaging
cases, good advice should be sought.
The Recognised Standard / www.cicm.com / October 2017 / PAGE 37