Protecting intellectual property on the Internet is a very urgent task for many brand and trademark owners. How to do this is the subject of this article.
Intellectual property is the results of human intellectual labor and means of individualization, which are protected by law. Unlike other types of property, intellectual property makes it possible to earn a profit for its use over a long period of time.
Intellectual property characteristics:
a) Intangibility of objects of intellectual property. For example, if you own a thing, then you can use it yourself or transfer it to another person. It cannot be used at the same time. The same object of intellectual property can be used by millions of people at one time if the owner grants them this right.
b) Absoluteness of intellectual property. For example, exclusive rights to intellectual property can only belong to its owner. Everyone else is not entitled to use the object without permission. The absence of a prohibition on use is also not a permission.
c) Embodiment of intangible objects of intellectual property in tangible ones. For example, a piece of music is intangible, but can be recorded on a disk - a material object. The owner of the disc is not the owner of the musical work. He can't change the music, arrange it, but he can do whatever he wants to do with the disc.
d) The belonging of the results of intellectual work to objects of intellectual property should be spelled out in the legislation. For example, such a means of individualizing a site on the Internet as a domain name is not intellectual property, although it has its features, since it is not mentioned in the legislation of many countries.
Objects of intellectual property belong to the institutions of intellectual property law. This:
• Copyright and related rights (literary and musical works, painting, photo and video art, performance of musical works, etc.)
• Patent law (inventions, industrial designs, etc.).
• Non-traditional objects of intellectual property (selection inventions).
• Means of individualization of legal entities, enterprises, goods and services (trademarks, commercial designations, geographical names).
Trademark (trademark) is one of the types of intellectual property that identifies goods and services as belonging to certain companies. A trademark is expressed as an easily recognizable graphic symbol, phrase or word and legally distinguishes a product or service from all similar ones on the market.
The concept of "trademark" came from the English trademark along with its symbol ™ and is more often used in the domestic sphere. Russian legislation defines the concept of "trademark" and the symbol ®.
The first trademark protection legislation is believed to have been enacted in 1266 in England. The law required all bakers to brand their products. And in 1373, in addition to the brand of the manufacturer, as a distinguishing feature, it was necessary to establish the brand of the guild in which the master was a member. Individual hallmarks could be inherited or bequeathed. And for the falsification of the sign, death or cutting off of the right hand threatened.
Trademarks can be bought and sold. For example, the world famous Swoosh symbol. Nike (NKE) purchased in 1971 from a design student for $35. Trademarks may also be licensed to other companies for an agreed period or under certain conditions.
Trademarks are an effective way to market brands. In fact, the power of branding in business is critical, and the use of brands in marketing is legendary.
For example, the brand name Kleenex has practically replaced the noun "wipes". . Kimberly Clark (KMB) owns the Kleenex trademark and launched the brand in 1924 as a disposable makeup remover wipe. In 1930, the company launched a new product, paper handkerchiefs. Since then, Kleenex wipes have ranked first in the world in sales of facial wipes and paper handkerchiefs.
A trademark may not be used by others without the permission of its owner. It is also forbidden to use any signs that can be confused with existing ones. This means that a company cannot use a symbol or trademark if it looks or sounds similar to or has the same meaning as an already registered trademark, especially if the products or services are related.A trademark may not be used by others without the permission of its owner. It is also forbidden to use any signs that can be confused with existing ones. This means that a company cannot use a symbol or trademark if it looks or sounds similar to or has the same meaning as an already registered trademark, especially if the products or services are related.
For example, a soft drink company cannot legally use a symbol that looks like the Coca-Cola symbol and cannot use a name that sounds like Coca-Cola.
The illegal exploitation of trademarks in trade is not uncommon. This is especially common on the Internet. Well-known brand names are used to sell fakes, replicas and contraband.
Violations occur both in the content of sites and their addresses (domain names). That is why the protection of the trademark becomes one of the priority tasks. The first step is to identify and then stop inconsistent use of the brand. Sounds simple, but how to put it into practice and where to start?
Many sellers and manufacturers are not always able to assess the risks and consequences that entail cases of misuse of a trademark name. At first glance, this may even seem like a plus: additional free advertising and brand promotion. However, after a while, you will find that sales of the original product have fallen due to the proliferation of fakes. Due to the abundance of replicas, the brand's reputation has become dubious, traffic on the official websites of the manufacturer and their representatives has decreased.
Millions of trademarks have already been registered all over the world and every year their number is only increasing. During quarantine, many of them went online.
During the quarantine, luxury brands have also moved online.
The growth of the e-commerce market is progressing and with it the danger of illegal use of well-known trademarks is increasing.
Manufacturers of clothing and footwear, equipment and gadgets, and household goods are most susceptible to encroachment by unscrupulous entrepreneurs. Negative consequences from the actions of violators:
• brand reputation damage
• drop in sales of original products
• decrease in traffic on official websites;
• distribution of fakes.
There are two forms of protection of intellectual property rights: non-jurisdictional and jurisdictional.
The non-jurisdictional form of protection of rights involves independent actions of the right holder or his representatives (patent attorneys, trustees) to eliminate violations.
In the second case, the right holder, whose intellectual rights have been violated, can apply to state regulatory authorities or to the court.
Before you get involved in a trademark war, you need to understand "is the game worth the candle." Calculate how cost-effective it can be to go to court. It is clear that the winning party is compensated for legal costs (payment of state duty, services of lawyers, etc.), but the court may decide to reduce the final amount of compensation if it considers it disproportionately overpriced. In judicial practice, this is a fairly common phenomenon.
Do not be mistaken that the whole matter is limited to filing a lawsuit and its consideration in court. One of the first expenses of the right holder will be the cost of collecting and fixing evidence (for example, using a test purchase). They will consist of payment for the services of lawyers, notaries and other specialists. If the production of the disputed goods is located in another state, then in order to clear the domestic market, it will be necessary to enter a trademark in a special customs register. This will stop the import of dubious products into the country. You also need to be prepared for your opponent to counterclaim your trademark, which will double the burden on your lawyers.
Most often on the Internet, the following types of intellectual property suffer from encroachments by unscrupulous users:
- trademarks (trademarks, brand logos);
- patent documents;
- objects of copyright.
The protection of intellectual property rights on the Internet is a set of non-jurisdictional and jurisdic measures to eliminate violations related to the illegal use of intellectual property objects on web pages of sites.
The main problem of protection of intellectual rights on the Internet is the collection of necessary evidence of the illegal use of an intellectual property object.
- it is almost impossible to prove copyright if the work has been published electronically on the web;
- illegal placement of goods on the website of an online store is difficult to prove if the goods were put into circulation;
- companies that provide electronic services (hosting) are difficult to hold liable if their clients are infringers of intellectual rights.
As mentioned above, a domain name is not an object of intellectual property under the laws of many countries, including Ukraine. But at the same time, in Western countries, litigation regarding the copying of domain names of sites is not uncommon.
Most of the lawsuits are related to the use of the names of world famous brands in the domain name of the site to attract customers.
Features of a domain name that distinguish it from a trademark:
• an indication of the site address in the visitor's search query;
• business promotion;
• individualization of the company owning the site.
Domain name plagiarism misleads users who would like to go, for example, to the site of a well-known brand, and as a result end up on the pages of unknown companies. In other words, assigning a domain name that is confusingly similar to the site name of a company of another brand can be considered copyright infringement.
This state of affairs leads to domain name disputes.
One of the first domain name disputes occurred in 2001 between the Eastman Kodak Company Corporation and the user in whose name the Kodak.ru domain name was registered. The Corporation applied to the Moscow Arbitration Court with a claim to prohibit the use of the Kodak trademark in the website's domain name. Since the relationship associated with the names of domains in the network were not regulated by law, the corporation was denied satisfaction of the claim. But after reviewing the case by the Presidium of the Supreme Arbitration Court, a Resolution was issued, which reflected the following conclusions:
1) Court decisions are contrary to the provisions of the Trademark Law and Article 10-bis of the Paris Convention.
2) The user has deliberately registered a domain name that contains the trademark of another person, thereby attracting consumers to his web page. The goods presented on the defendant's page were similar to the goods and services of the plaintiff.
3) Defendant could have benefited economically from the use of the Kodak trademark.
(Decision on case No. A40-25314/99-15-271)
These provisions were subsequently reflected in several more court cases concerning domain name disputes. Corporations such as Coca-Cola, Nivea, Sprite applied to the courts regarding the use of their trademark in a domain name.
The only way to get legal protection for a domain name is to register it as a trademark. Then there will be no problems in bringing to justice the violator of your intellectual property rights.
Trademark protection on the Internet is a legal action aimed at removing from the web pages of online stores, marketplaces, image price aggregators, advertisements and product descriptions of trademarks posted without the permission of the copyright holder. Violators may be subject to administrative or criminal liability.
Subjects that are entitled to trademark protection:
Trademark protection on the Internet has specific features. And the main problem is the collection of evidence. If the violation is not one, but many, then special software resources will be required to detect them.
Before threatening all competitors with courts for trademark infringement, you need to make sure that the offense really happened. Your suspicions must be based on the following grounds:
• almost the same name;
• the same product;
• making a profit.
If the brand names and their graphic symbols are the same, then everything is obvious, but if they are slightly different, everything is more complicated. Lawyers call this similarity “to the point of confusion” - the case when an ordinary consumer can confuse the names or graphic symbol of a trademark.
The following violations are most common in the market:
• differences in character case: Obuvayka and Obuvayka;
• transliteration name: Obuvayka and Obuvayka;
• differences in 1-2 characters: Obuvayka- Obuvaika;
• the translation of the trademark is used: "Lukcheri" and Luxury.
The above options are direct trademark infringements if your brand is "Obuvayka". The logic of the offenders is that if your shoe brand is called "Obuvayka", and theirs is "Slippers Obuvayka", then no claims are expected. However, from a legal point of view, the protection of the right to the trademark "Obuvayka" is a sufficient basis for going to court.
Uniformity of goods
The same brand name is not a reason to go to court. The same name, for example, "Grand" can have both power tools and kitchen hoods. The main thing is what is written in your registration documents in accordance with the International Classification of Goods and Services.
Let's say you are submitting documents for registering a trademark for refrigeration equipment, class 11 according to the the International Classification of Goods and Services. However, during the expertise, many positions are “cut off”, and you get a refusal. In order not to lose clients, lawyers negotiate with employees of an expert commission and register a trademark in any way they like, just to hand over a certificate to the customer. The customer is satisfied and does not even suspect that the document does not apply to refrigeration equipment, but to sanitary ware or lighting equipment. You can find out about this in the attachment to your trademark registration certificate or through the trademark registry.
Compare the potential violator`s goods or services with your own. As with the name, 100% identity is not required, the goods just have to be of the same type: bed linen and towels, cosmetics and household chemicals, even trainings or clubs from the point of view of lawyers - event organization services.
When registering a trademark, experienced lawyers choose goods or services as thoroughly as possible. To make it easier to confirm the homogeneity of activities in the event of disputes. Let's say you and the alleged intruder are in the business of selling house slippers. Even if your registration documents only list “clothing”, this is already considered a trademark infringement. To prove the homogeneity of products in a judicial proceeding, it will be necessary to conduct an expertise.
If the steps described above are carried out, then it is necessary to conduct a thorough pre-trial preparation in a quiet manner. Collect evidence carefully so that the violator does not get rid of incriminating materials.
Record everything you find: take screenshots of pages on social networks or of an e-commerce site. At the time of the court session, they may be deleted or not work, so you need to take care of the notarization of screenshots. Make a "test purchase" of the disputed product and save the document confirming the purchase (cash receipt, delivery note). It is not known which evidence the court will find most convincing. Therefore, the more of them, the better.
The claim can be made by the applicant on his own, but still it is better to seek the help of a specialist in the protection of trademark rights. The main task of a lawyer is to carefully study all aspects of the case. This provides a basis for making a detailed claim. A professionally crafted claim can convince the wrongdoer to agree to your demands to avoid litigation.
The claim is sent exclusively to the legal address of the offender only as a registered letter with a description of the contents and with notification of its receipt. This ensures that the letter does not get lost in the mail, the offender will not be able to say: "I did not receive." A description of the contents will be required in court, proving that a claim was sent and not promotional items. It is also necessary to keep the receipt from the mail and attach it to the application to the court.
To eliminate violations of intellectual rights on the web pages of online stores, you can also file a claim with an information intermediary (hosting).
What can be demanded from violators for misuse of your intellectual property:
Please note that when actions go beyond the legal framework, the situation may worsen. Violators go to the trick - with the help of special services they can hide the contents of the site and data about its owners.
If your requirements are satisfied, then the site owner will be forced to stop committing violations. However, even after the message about the elimination of violations and the removal of the trademark from the pages of the site, it is necessary to continue to monitor the situation(regularly parse data from the site) . The site owner can create the appearance of removing content or hide it.
If the offender received your claim and took a wait-and-see attitude, hoping that everything will be forgotten, then this time should be spent on collecting additional evidence with the help of government departments.
The offender not only harms your company, but also adheres to the principles of unfair competition. This is a direct violation of the law on advertising and may even be qualified as a criminal offense, as it misleads consumers by misinforming them. Contacting the police will result in a background check. Its purpose is to make sure that there is no corpus delicti in the actions of the offender. In some cases, an administrative offense can be reclassified as a criminal one. In case of repeated violation and causing major damage, it can be qualified as a criminal offense.
Appeal to the Antimonopoly Committee will entail checking the fairness of competition and compliance of advertising with legal norms. If a company sells products under someone else's trademark, then this leads to a decrease in the level of sales from the company-right holder, loss of profit and damage to the brand's reputation (with inappropriate quality of goods). If a case of unfair competition is proven, the violator faces a fine. . If violations are found, the Antimonopoly Committee may apply to the court. The violator is fined, and the copyright holder has additional evidence that can be referred to during the trial.
Both non-juridical measures and appeal to the court or state regulatory authorities will give a positive result if you receive titles of protection of your rights to intellectual property in a timely manner.
Inventions and industrial designs are protected by patents, and registration certificates are issued for trademarks, algorithms and codes.
Before registering your trademark, be sure to check for similarity with others that have an earlier priority. It may seem to you that your trademark is unique and therefore you have nothing to fear, but this is not so. Any coincidence is almost a 100% guarantee that disputes cannot be avoided in the future. So take this as seriously as possible. On specialized resources, you can check the trademark for matches for free. In more than 2/3 of cases, trademarks in their original form do not pass the test and are not subject to registration. They are sent for revision until the sign becomes unique and the question of similarity to the point of confusion with already registered ones does not arise. Registration of similar trademarks in a homogeneous group of goods or services is prohibited.
If the expert commission did not focus on the similarity of trademarks and nevertheless registered yours, then you can’t relax. Trademarks with an earlier registration date will threaten your trademark for 5 years. Thus, from the moment of registration, the “older” brand has as much as 5 years to contest the rights with the “younger” ones. The right holder needs to keep a close eye on similar marks in order not to miss the opportunity to buy or challenge the rights to them. Also, it will not be superfluous for the copyright holder to prepare a backup version of the trademark. This will make it possible to reserve an earlier priority date and be able to withstand potential claims from competitors.
Counterfeit products are one of the most common types of intellectual property infringement on the Internet.
The sale of counterfeit goods has a negative impact both on the country's economy and on the income and reputation of trademark owners.
To promote a brand in a new market, companies invest heavily in pricing, marketing, and advertising. The product becomes popular among the population, sales grow, but ... after a while they begin to fall. This happens because falsifiers come into play. Having waited for the peak of popularity of the product on the market, they begin to import cheaper and lower quality fakes from third world countries into the country. The manufacturer bears losses in the amount of the cost of the unsold original product and the cost of promoting a new one. Reputational losses are added to the financial ones.
The need to fight counterfeiting is obvious to manufacturers and suppliers, but they are not always ready for lengthy litigation with online stores. But there are other ways to prevent the infringer from selling the company's branded products.
What should be done
• It is necessary to find all online retailers that violate intellectual property rights. It is advisable to carry out this process at least once every two months, since during the quarantine period the number of online stores, as well as sales through social networks and instant messengers, is steadily growing.
Searching for brand presence on the Internet will allow you to find all the sellers of your brand in the market and determine which of them violate your rights.
For a peaceful settlement of the issue, the copyright holder may file a claim with the owners of the Internet resource with a request to remove the products of his trademark and all images that are objects of intellectual property. Practice shows that this method works in 50% of cases. If the retailer does not comply with the requirements of the copyright holder, you need to contact the hosting provider of the site. The hosting provider must notify of the possible termination of the contract with the owner of the Internet resource and blocking access to the site.
Thus, 90% of offers of counterfeit products can be blocked without going to court. Of course, it is impossible to immediately remove all counterfeit products from online retail. New sellers will appear in the future. But this situation can be controlled by constantly monitoring the prices and goods of the e-commerce market and promptly responding to new violators.