Trademarks on the Web

Ed Probert puts his mark on this essential topic...

When domain names came into the public consciousness during the last years of the 1990s someone in the Web arena told me that ?Only domain names matter now ? trademarks are dead?. However, the reverse has proved true and the internet has actually fuelled an enormous increase of interest in trade marks.

Trade marks tell us a great deal about the product or service being offered ? words like Rolls Royce, Enron, Coke, Virgin, Chanel, Calvin Klein and Durex all have their own ambience. Trademarks are not limited to words either ? we all know the jingle of Direct Line, the colour that is Orange or the shape of a Jif plastic lemon. All these are registered trade marks and some may be registered worldwide.

Registration is not necessary for a trademark to exist ? all that is necessary is for it to be distinctive and if it is to be protected then it needs to acquire a reputation (or goodwill). It is often thought that a trademark is not valid if there is no ? symbol but this symbol is nothing more than a flag saying ?I am claiming that this is my trade mark?. The senior symbol is ? which means ?This is a registered trade mark?. Using it on an unregistered mark is a criminal offence.

So how do trademarks apply on the internet? Firstly domain names are easier to control if you have a registered trademark. Rather than register every extension of a name it is simpler to register the more obvious ones. Then if anyone registers any of the other variants they can be warned off, and the trademark is good evidence of bad faith.

When it comes to the use of trademarks on websites, things are not so simple. Up until a couple of weeks ago I would have probably said that any use of someone else?s trademark on your site was an infringement of that trademark. However since the Reed case (where two companies, both called Reed, were arguing over trade mark use) the position for meta tags has become confused.

Meta tags are part the hidden code of web pages, invisible to the public eye and are included ostensibly to help search engines catalogue the pages. However they have often been used to attract searchers by what might seem to be underhand means. For example a BMW dealer might add ?Mercedes? to its meta tags so that people searching for a Mercedes would be directed to its site. The idea is, of course that the searcher will be so enthralled by the BMWs available they will forget they ever wanted a Mercedes.

We had previously advised that this would be an infringement of Mercedes? trademark but this may no longer be correct. The judges in the Reed case looked at this type of use and thought that the use of a trade mark in a meta tag is not using it as a trade mark (ie to designate the quality or origin of goods) partly because it is not seen by visitors to the site and partly because, at that point, it is not part of goods or services. There was no final decision made on the point but no doubt it will come up again shortly.

If it is possible to use anyone else?s trademark in meta tags, this will undermine their value. Already many misleading terms are included ? now totally irrelevant trademarks could be permitted. To return to the car dealer, it would be possible for them to include every brand to its list in the hope that someone looking for a Land Rover or a Ford will see the BMWs and change their mind.

Despite practises like the one described above, trade marking your brand is an important first step to its protection both on and off line. The internet has increased issues for brand protection, not only regarding domain names - the globalisation caused by the internet has also raised conflicts as it is so easy to see what others are doing worldwide. This is an area that will become more important as online ?brands? become more and more valuable.

This article is no substitute for formal advice and you should refer to us before acting upon it. If you want more information or advice on these issues email us ? Edmund.probert or Marlene.naumann@foot-ansteys.co.uk.
Our direct lines are 01392 685325 and 685330.
? Foot Anstey Sargent 2004

Foot Anstey Sargent, solicitors, based in Exeter and Plymouth provide a wide range of legal services to the region. The Technology team are always involved in trade mark matters, both advising on the branding issues and carrying out registrations. One of our most interesting recent ones relate to a Jamaican company setting up a soft drinks plant in Plymouth. For a sneak preview of the tropical flavours that will be flooding the market shortly see www.lascoeurope.co.uk and have your sound turned on!