using trademarks online in australia

CCIQ Webinar

11 September 2015

Webinar Presenter

• Len Mancini

• Cullens Patent and Trade Mark Attorneys

• Trade Mark Attorney and IP litigator

• Previously practiced IP litigation in London (Herbert Smith) and

Sydney (Maxwell IP)

• Advises clients in respect of IP disputes and infringement issues

Use of TM Online

We will be looking at TM’s

and:-

• Websites

• Meta tags/HTML

• Usernames

• Keyword triggered online

advertisements

• Domain names

Use of TM Online

What makes the use of TM

online special?

• Search → Internet Traffic

• Internet Traffic → Profits

• TM’s central to modern search

• TM can be used by third parties

in non-conventional ways on the

internet to get more traffic

What is a Trade Mark

Types of TM’s

"sign " includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent .

What is a Trade Mark

Trade Mark Registration

When is a TM infringed?

s120 TM Act - Infringement

s120 (1) A person infringes a registered trade mark if the

person uses as a trade mark a sign that is substantially

identical with, or deceptively similar to, the trade mark in

relation to goods or services in respect of which the

trade mark is registered.


What is not infringement – ie not TM use To indicate the intended purpose or compatibility


What is not infringement – ie not TM use To indicate that you sell that brand of goods or resell brand of

services


What is not infringement – ie not TM use To indicate your competitive advantage

Use on websites

Use of TM on websites:

Website owner TM

Apple Inc. TM

Manufacturer TM

Disclaimer

Use on websites


Good use of other

peoples TM

Bad use of other peoples

TM

The Quicktime, Apple, iTunes, Safari

trade marks are the property of Apple Inc

and no association, relationship or

sponsorship with Apple Inc is suggested

by their use.

JAYCAR Car Charger Deluxe

(compatible with iPhone)

JAYCAR iPhone Car Charger Deluxe

JAYCAR

Jaycar are authorised resellers of Apple

Inc. products.

JAYCAR 4 APPLE

JACAR 4 APPLE are your one stop shop

for all things Apple.

Use on websites


1. Don’t make a website design that looks like the trade mark owner's own design.

2. Unless you have some special relationship set out in writing giving you authorisation don’t use graphical TM and logos (or photos) owned by TM owner. Use the plain word marks instead.

3. To be abundantly cautious, do put a disclaimer on your site stating that the [named trade marks] are the property of [trade mark owner].

4. Don’t use the TM in any product or service name (ie as your own trade mark).

5. If you are claiming compatibility or that you sell a brand – do keep the description literal.

Usenames/Brandjacking


• eBay and Amazon and countless others allow

you to choose usernames to display in

connection with commercial offerings.

• Facebook/Twitter and other social networks can

also be used to sell products/services and

YouTube can be used to generate advertising

income.

• Including a TM in a username can result in

finding of TM infringement if you offer the

registered goods/services or ones that are

closely related.

• But if the person who registered the username

is careful not to use the account to promote

infringing goods/services not much that TM law

can do.


• Where there is no TM use the Australian

Consumer Law should be effective in preventing

consumers from being misled with respect to

those offering unrelated goods or services.

• However where there is no commercial use

associated at all the consumer law will probably

not be of any help.

• In such cases the only remedy may be with the

operator of the website.

• Many website owners have policies regarding

parody accounts and brandjacking. They

generally require a registered trade mark in

order to take action.

Meta Tag / HTML

TM use in HTML Code

Meta Tag / HTML

TM use in HTML Code

content: = Harbour Lights Apartments in Cairns offer luxury private waterfront apartment accommodation for holiday letting and short term rental

TM Registration: HARBOUR LIGHTS

Class 36: Agency services for the leasing of real estate property; apartment letting agency; apartment rental services; rental of accommodation; rental of apartments; commercial real estate agency services Class 43: Accommodation letting agency services (holiday apartments); accommodation letting agency services (hotel); accommodation reservation services; booking services for accommodation; hotel accommodation services; hotel services

www.cairnsluxuryapartments.com.au/

Meta Tag / HTML

TM use in HTML Code

• Don’t use TM of other parties in underlying HTML code where at all possible; • Where such TM needs to be used, do ensure that they are not being used as a

trade mark (so descriptive use would be OK) even if no one will ever read the text;

• Do ensure that any descriptive terms are not registered as TM in overseas

country which the website may be directed; • Do be careful of image file names and names of any document linked to in the

HTML by code.

Keyword Triggered Ads

TM Use in Online Ads

eg. Google Adwords

The top organic hit is shown further below the ads

Companies that purchase keywords that when entered into search result in the ads that they pay for if someone clicks are shown here

Search term entered here


TM use in the triggered ads

Registered TM: HARBOUR LIGHTS

Cairns Luxury Accommodation – Waterfront Apartments – Harbour Lights Apartments www.cairnsluxuryapartments.com.au/ Harbour Lights Apartments in Cairns offer luxury private waterfront apartment accommodation for holiday letting and short term rental. Apartments – For Sale – Contact – Specials

HELD: Was used as a TM and therefore infringed due to services overlapping with registered services


TM use in the triggered ads

Registered TM: LIFT SHOP

Easy Living Lifts | Home Elevators | Lift Shop –

Home Elevators ... www.easy-living.com.au/

Easy Living Lifts | Home Elevators | Lift Shop –

Lift Shop www.easy-living.com.au

Held Not Infringement – TM Used Descriptively

Beware registering TM’s that are descriptive of goods/services


Australian Consumer Law

Misleading and Deceptive Conduct

Kloster Ford www.tradingpost.com.au New/Used Fords – Search 90,000 + auto ads online. Great finds daily!

KEYWORD: KLOSTER FORD

Example of Keyword Stuffing. Where the search term also becomes the headline of sponsored ad.

Trading Post held to have engaged in

misleading and deceptive conduct.

It was the headline that caused confusion


TM use in Keyword Trigger

• If there is no mention at all of the TM in the

ad or if the only use of the TM in the ad

is clearly descriptive – can the use of

the Keyword alone result in a finding of

trade mark infringement?

• In USA – No – invisible use not TM use

• In New Zealand No – invisible use not TM Use

• In UK – No– people not confused

• In Europe – up until 2010, Yes in favour of TM owners

• In Australia - one case held no TM infringement


If you do engage in a keyword triggered ad

campaign:

• Do check to see whether any of the words are registered trade

marks

• Don’t use keyword stuffing where the keyword gets inserted into

the ad heading automatically

• If you do need to use the TM in the ad do ensure that it is used in a

non-trade mark fashion – ie descriptively or to indicate

purpose/availability

• Don’t make any misleading statements or bait&switch tactics to

drive traffic to your website

Domain Names

Domain names

Domain Names

Cybersquatting and TM infringement

Domain Names

auDRP TM Dispute Policy

(i) The domain name is identical or

confusingly similar to a name, trademark or

service mark in which the complainant has

rights; and

(ii) the registrant has no rights or legitimate

interests in respect of the domain name; and

(iii) the domain name has been registered or

subsequently used in bad faith.

Domain Names

How to Demonstrate Rights to and Legitimate

Interests in the Domain Name in Responding to a

Complaint.

(i) Before notice of the dispute the use of or preparations to use the domain name or a name corresponding to the domain name in connection with an offering of goods or services; or

(ii) Being commonly known by the domain name; or

(iii)making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.

Domain Names

Oki - Principles In relation to the question as to whether the Respondent has rights or legitimate interests in the disputed domain name: That is are they making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue. Oki Data Americas, Inc v. ASD, Inc, WIPO Case No. D2001-0903 which are that: 1. the Respondent must be actually offering the goods or services in question; 2. the Respondent must use the website to sell only goods which bear the

trade mark; 3. the website must disclose that it is not connected with the trade mark

owner; and 4. the Respondent must not have tried to obtain domain name registrations of

all of the domain names which include the particular trade mark.

http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0903.html





Domain Names

Evidence of Registration or Use in Bad Faith

(i) registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or

(iii) registered the domain name primarily for the purpose of disrupting the business or activities of another person; or

(iv) you have intentionally attempted to attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location.

Domain Names

Domain not same as Business Name • Domain: cashconvertersloans.com.au

• TM: Trade Mark : 818553 for CASH CONVERTORS for “financial

and financing including loan services”

• No relationship between the parties

• Website offered loans by a business using another name

Similar to a TM

with rights

Yes – Australian Registered TM✔

No Legitimate

Interest

“Cash Convertor” not descriptive of services and

not name of a business being conducted ✔

Registered or

Used in Bad

Faith

As there was no legitimate interest in using TM

found to be used in Bad Faith – diverting traffic for

profit✔

Domain Names

Domain misspelt - typosquatting • Domain<danmerfie.com.au>, <danmerphy.com.au>, <danmurfy.com.au>

• TM: Trade Mark : 1457720 for DAN MURPHY’S for “wholesaling and retailing of alcoholic and non-alcoholic beverages including online wholesaling and retailing of these products”

• No relationship between the parties

• Website resolved to 3rd party site that offered alcohol

Similar to a TM

with rights

Yes – Australian Registered TM – phonetic

variations are still “similar” ✔

No Legitimate

Interest

Domains resolved to a 3rd party site not trading

under domain names. Not Descriptive use ✔

Registered or

Used in Bad

Faith



profit✔

Domain Names

Ex -Distributor • Domain: <illy.com.au>

• TM: Trade Mark : 599985 for ILLY for coffee and related products

• Distributor from 1992 to 2013.

• Domain resolved to website under that domain that sold Illy coffee and other products.

Similar to a TM

with rights

Yes – Australian Registered TM – ✔

No Legitimate

Interest

Didn’t satisfy the Oki principles – website sold other

products beside Illy and no disclaimer of relationship

or lack thereof – so no legitimate interest✔

Registered or

Used in Bad

Faith



profit✔

Domain Names

Buying agent – website offers discounted Holdens • Domain: <holdendiscounts.com.au>

• Registered Trade Mark: HOLDEN for cars and related goods and services

• Website offered to sell visitors a holden at a discount through relationships with authorised Holden resellers.

Similar to a TM

with rights

Yes – Australian Registered TM – ✔

No Legitimate

Interest

Satisfied the Oki principles – had disclaimers, only

offered Holden branded goods, didn't have a stack

of domains – legitimate interested made out - X

Registered or

Used in Bad

Faith

As there was a legitimate interest no need to look for

bad faith - X

Domain Names

AU Trade Mark Application filed after Domains • Domain: <sitecore.com.au>

• Both the Registrant and a foreign TM owner filed Australian TM applications after the domains were registered in Australia.

Similar to a TM

with rights

No – Australian TM application (especially when

behind TM application by domain name holder) does

not have the necessary “rights” X

No Legitimate

Interest

Australian domain owner files own AU TM

application for SITECORE and appeared to be using

it as a business name. X

Registered or

Used in Bad

Faith

Failed to prove bad faith – although narrowly missed

this finding when allegations of requesting payment

for transfer was adduced (but not accepted) X

Domain Names

Foreign Trade Mark Registration • Domain: <massnutrition.com.au>

• TM: US Registered Trade Mark: 2,558,817 for MASS NUTRITION

• Domain resolved to website under that domain that sold supplements and other goods covered by the registration.

Similar to a TM

with rights

Yes – Despite NO Australian Registered TM - US

Registration sufficient– ✔

No Legitimate

Interest

Australian domain owner obtained own AU TM

Registration for massnutrition.com.au, US Applicant

could not prove significant enough reputation to

allege passing off. Wouldn’t hear arguments as to

first use/ownership in Au in light of TM- Not proven X

Registered or

Used in Bad

Faith

Second limb not made out so bad faith not looked at

- X

Domain Names

• Don’t use other peoples TM’s in any domain you register unless you have a legitimate interest to the name in the domain.

• If there is no relationship with TM owner do adhere to the OKI principles – sell that branded product only, put on clear disclaimers and don’t register every different domain variant possible.

• Domains registered before trade marks are registered are still vulnerable if there is an overseas registration OR some use in Australia that predates the domain registration – Do your homework!

• Do register an Australian Trade Mark Registration for the domain or the distinctive

portion of it as that may provide evidence of a legitimate interest in the domain.

• There is no requirement for bad faith at registration AND at time of dispute. Bad faith at time of dispute sufficient – don’t make demands or even offer to be paid for transfer of the disputed domain if above costs.

Summary

• Be very careful when using the trade marks of others online.

• Don’t use trade marks of others as a badge of origin – that is don’t

use them as a trade mark.

• If you must use a trade mark owned by someone else online do so

descriptively and without causing any confusion.

• If you buy trade marks as keywords for triggered ads don’t include

the trade mark in the Ad unless you are using it to say that you sell

those goods/services.

• If you do use a domain or marketplace username incorporating the

TM of others do so only where you can demonstrate your legitimate

interests to the brand. Usually as an unauthorised reseller.

• Don’t offer to transfer domain for $ beyond costs - as that will be

evidence of bad faith.

Questions

Do you have any questions?

Please send through your questions by typing them into the question box.

Thank you

Please phone us for a complementary consultation to discuss your intellectual

property requirements including the benefits of protecting your brand

with registered trade marks.

Len Mancini

Cullens' Trade Marks Attorney T: 0755883000 E: [email protected]

57-59 Scarborough Street Southport QLD

www.cullens.com.au