Author: Christopher Hamel-Smith
If having made use of the available free Internet resources we have discovered no obvious conflicts, we should immediately move to secure our company's rights in our prospective trademarks and domain names. This means commissioning a professional trademark search, and registering our trademarks and domain names, in as many countries as possible, depending upon our e-commerce strategy and potential target markets.
A professional trademark search is relatively inexpensive, even though it will usually be necessary to cover a number of countries once we plan to do business on the Internet. Certainly, it will be far less expensive to discover any potential conflicts by conducting a search before we invest in branding our trademarks and domain names into the minds of our e-customers as certificates of the source and quality of our products and services. The costly alternatives to this up-front investment may be international litigation, or having to abandon our use of our trademarks and domain names altogether.
This not a theoretical problem. Even Amazon.com, probably the world's most famous Internet retailer, found itself in dispute with a local feminist bookstore that had been using the same name. Fortunately, a settlement of this dispute was eventually reached, allowing Amazon.com to continue to use its name on the Internet.
Another example was in the news last week, when it was reported that a company called Double Click Australia is suing the world's leading on-line advertising agency, DoubleClick Inc. The Australian company, which was established twelve years ago, is claiming that the US company, established three years ago, is using its name without authority and is guilty of false and misleading conduct.
Recently, Disney also found itself at the wrong end of an injunction stopping it from using a particular trademark - a logo - on its Web site at go.com. This was on the basis that it was too similar to the logo already being used at another Web site at goto.com. Disney was reported to have estimated that it would cost some US$40 million to comply with the injunction. Presumably, this included the cost of an extensive marketing campaign to re-brand Disney's Internet offering. Disney was later able to persuade an appeal court to suspend the injunction but the final outcome of this dispute remains uncertain. We can be sure, however, that it will be an expensive exercise.
Naturally, the disputes over trademarks and domain names in e-commerce that get widely reported tend to feature well-known and wealthy companies. However, the same problems are posed for companies of all sizes as we move into e-commerce. Unlike a Disney or Amazon, our business may not be able to afford this type of dispute. In almost all cases, therefore, a professional trademark search provides us with tremendous value for money.
The real question is how wide should our search be. In theory, because our company's Web site can be accessed from just about every country, we should conduct a search across the entire globe, before we begin using our trademarks and domain names on the Internet. In practice, this will not usually be possible or necessary.
Certainly, we should conduct a professional trademark search in every country that we see as a potential target for our e-commerce offerings. At minimum, for most companies that plan to do business on the Internet, this will mean covering the US, Europe and Caricom. The extent to which we extend our search beyond this requires specific consideration in the context of our company's strategy for e-commerce.
Once we have tried to eliminate potential conflicts, by conducting a professional search, we should take immediate steps to register our trademarks and domain names. Again, in theory, we should apply for registrations in every country from which our Web site can be accessed. However, in practice, most companies will want to secure registrations at least in the US, Europe and Caricom and to consider what other countries to add, based on our e-commerce strategy and potential target markets. Fortunately, a single Federal registration can cover all of the US, and it has recently become possible to secure a single registration covering 15 countries within the EEC.
Having secured registrations, we need to renew these at the appropriate intervals, depending on the laws of each territory, and to patrol the use of our trademarks on the Internet and elsewhere to guard against infringing use and dilution of our rights.
Additional information about trademarks in the US can be obtained at uspto.gov, in Europe at oami.eu.int and in Trinidad & Tobago at trinidadlaw.com. For a broader international perspective, we can search the Hieros Gamos Web site at hg.org. This will supplement my attempt in these articles to highlight some of the implications of the law affecting trademarks and domain names that may be most relevant as we move into e-commerce. We shall next turn our attention to other types of intellectual property, including copyrights and patents, which we can use to gain a strategic advantage when doing business on the Internet.
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.
