USING TRADEMARKS ONLINE
Distinctive offline—descriptive online
Some trademarks which are created from ordinary words may be free to use by people other than the trademark owner, as long as they adopt a generic or descriptive meaning. Apple is a well-known trademark for computers, but is also a free word for a certain fruit. Tis is the same offline as well as online.
“IF THE ONLY PROTECTABLE COMPONENT OF A DESIGN MARK CANNOT BE REPRESENTED IN THE ALPHANUMERIC STRING OF A DOMAIN NAME, THE TRADEMARK OWNER/ COMPLAINANT RISKS LOSING THE CASE.”
However, technical limitations on how you can use your trademark as a domain name also include a risk that what is clearly distinctive offline may well be descriptive on the Internet.
‘Findus’ is a well-known Swedish trademark for food products, established in the 1940s. Te trademark owner filed a UDRP complaint in 2000, against the domain name
findus.com, registered by a Swedish-based holder. It could have been seen as a clear case: the disputed domain name was identical with what the panellist described as “one of Europe's leading European frozen food brands”, and the parties involved were both based in Sweden. However, the respondent stated that
findus.com was registered in order to set up an English search engine called ‘Find Us’. Te panellist found that the respondent had demonstrated legitimate rights to the disputed domain name (see Sudnif SA v Tulle).
How to use your online mark to protect it offline
Use of your trademark online may be a very efficient and cost-effective way to show proof of use. Te online use of trademarks as domain names can also be seen as a form of advertising. Te top-level domain connected to the mark may show that your
goods are produced in a certain country, or can also be used as a message or description of your services such as
TurnOnYour.tv (Tuvalu) or
Buy.it (Italy).
To summarise: start your protection online, to minimise the risk of falling completely out of line. n
Petter Rindforth LLM is the managing partner of Fenix Legal KB, Sweden. He can be contacted at:
petter.rindforth@fenixlegal.eu
Petter Rindforth is a trained mediator and serves as domain name dispute panellist for WIPO, NAF, the Czech Arbitration Court and .se. He is a special reporter (domain names) for the IP organisation FICPI and represents FICPI in ICANN’s Intellectual Property Constituency.
www.worldipreview.com
Trademarks Brands and the Internet Volume 1, Issue 3
47
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