INTRODUCTION
The rapid and exponential growth of e-commerce has revolutionized business, making way for new market players, increasing access to a variety of goods and services, and fostering an environment for growth and innovation. However, with these benefits to both dealers and consumers alike, it creates problems and brings in new challenges as well. One such legal challenge is the protection and enforcement of intellectual property. Trademarks in particular are directly connected to the preservation of the goodwill of a company. It helps in maintaining the business interest of the company. Trademark protection is crucial, not just to protect the goodwill of the company but also to prevent unfair competition and ultimately consumer welfare, as trademarks function as source identifiers, which aid consumers in identifying quality goods or services. The same remains true for e-commerce. To a certain extent, the challenges to trademark infringement remain the same for e-commerce businesses. However, the rapid growth of e-commerce and access to the internet has spawned new challenges.
CHALLENGES TO TRADEMARK PROTECTION
Domain Name Disputes
Domain names play a similar role in relation to e-commerce websites akin to the function a trademark has in relation to the goods or services for which it is registered. Domain names typically reflect the corporate names of e-commerce entities. This makes it easier for the average consumer to locate and identify any given e-commerce company with relative ease. Consequently, if one name is chosen that is deceptively similar to another it would likely cause confusion to the average consumer. As was held in the case of Satyam Infoway v. Sifynet Solutions, ordinary consumers seeking to purchase goods or avail the service of one website may accidentally arrive at another website that has a deceptively similar domain name thinking they it is the original website that they intended to visit. If the quality of the goods does not match those of the original platform or perhaps they do not find the goods at all as advertised by the original e-commerce platform that has sufficient goodwill and wide reputation, then consumers may lose their trust in that company, and the brand value of the company as a result is affected as a result.
Cybersquatting
Cybersquatting is another issue that persists in the orbit of domain name disputes. Cyber-squatting is said to occur when someone looking to profit reserves domain names that incorporate the trademark and then offers to sell the domain back to the trademark. It can also occur when parties may register domain names for commonly misspelled trademarks or add a geographical region to the trademark. Registration of domain names is not possible in India under the Trademark Act, 1999, but rather it must be registered with the Internet Co-operation for Assigned Names and Numbers (ICANN). Whoever registers first has the claim to the domain name. Other domain name users cannot contest the use of such even if the domain is deceptively similar. Hence, it is crucial that trademark owners register their domain names. Although the defense of prior use is applicable in the case of domain names as well, the trademark owner will have to take proactive measures to prevent cyber-squatting and the adoption of the domain name. Another remedy would be passing off. Passing off is the unauthorized use of a trademark on competing or related goods and services. Passing off gives the trademark owner the right to restrain such use of the trademark. No statutory remedy for passing-off exists but it is a common law remedy. The trademark owner can claim damages or restrain the use of the trademark by way of obtaining injunctions. Such a remedy is certainly effective; however, the fact remains that the likelihood of the potential instances of passing-off is significantly higher in the case of e-commerce entities and it is difficult to detect and cull out all the deceptively similar domain names. There is also a higher probability of confusion on the part of the average consumer.
Counterfeit goods
The sale of counterfeit products remains a serious problem for trademark owners. Although trademark owners can file a suit for infringement when a person induces another to infringe a trademark or continue to supply a product to someone whom they know is engaging in trademark infringement, i.e. contributory infringement, platforms selling counterfeit products are difficult to locate. The elusiveness of anonymous counterfeiters is further increased when it comes to e-commerce platforms that are spread out over the internet.
Counterfeit products have the potential to harm the brand value of the e-commerce entity. Counterfeit products also pose a public health risk, particularly in the case of the pharmaceutical industry. The World Health Organisation (WHO) estimates that counterfeit drugs account for 10% of all pharmaceuticals in the market and 60% in developing countries. Counterfeiting of goods pose a public health concern, even in industries other than the pharmaceutical industry. Counterfeiting also provides a more convenient form for funding of terrorist activities and the like. Due to international pressure and sanctions imposed by on terrorist groups, leveraging the goodwill of various brands terrorist groups sell counterfeit products and harp on the anonymity of the internet to evade the legal consequences of doing so. Counterfeiting has an adverse impact on the economy as a whole. Brand name companies lose significant revenue due to counterfeiters. It also has an adverse impact on competition, making it difficult for legitimate retailers to compete in the market, impacting the economy at the macro level.
CONLUSION/SUGGESTIONS
Perhaps the best pre-emptive action that could taken by trademark owners is policing e-markets. The role of policing must be given to the trademark owners themselves as is not practicable to vest this responsibility to the e-commerce brokers (for example, Amazon). Granted the vast number of members, dealers, and items for sale, it is difficult to precisely pinpoint the counterfeit goods and differentiate them from the authentic goods and may risk taking down authentic goods. The trademark owners themselves can impose costs apropos to the damages they have suffered. Furthermore, information syndication may also be effective in case counterfeiters change profiles to evade liability. Companies can extract information eclectically from a number of sources for more effective policing of the e-market, for counterfeiters.
Amendments to the current Trademark law are needed to combat the issues raised by e-commerce. Changes need to be made that are tailored to and can effectively address the issues. The current Act is not exhaustive enough with respect to e-commerce and trademark protection to address all the different intricate issues that arise. Issues like domain name disputes, need to be addressed more fully. Domain names are not even granted the status of a trademark by any statute apart from recognition by courts! Granted the challenges that arise with respect to domain names and cybersquatting as enumerated above, it is paramount that comprehensive and detailed laws are enacted to address them.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
