Legal conditions for a trademark to arise. Any sign (or combination of signs) can be registered as a trademark if it is:
Capable of distinguishing the goods or services of one undertaking from those of another.
Distinctive (otherwise, it risks being subject to absolute refusal for registration). Generally, this means that the mark must take on a secondary meaning as applied to the goods or services to which it is attached. If a trademark is not distinctive in itself, it can acquire distinctiveness through extensive use.
Rights in a registered mark arise on the basis of first to file. In the case of an unregistered mark, rights arise on the basis of substantial use within the jurisdiction.
What can be registered? Any sign capable of graphic representation can be registered on the evidence of distinctiveness. This includes:
Words, including slogans.
Shades of colours.
Audible sounds and musical notes.
Olfactory marks (for example, smells or scents) if capable of graphic representation.
Three-dimensional objects and packaging.
A sign cannot be registered if it "consists exclusively of the shape of goods which is necessary to obtain a technical result" (several recent cases have been applying this broadly resulting in few shape marks being held able to distinguish, see e.g. Maasland's Application  RPC 839, Procter & Gamble Ltd v. Registrar of Trade Marks  RPC 673 (CA)).
Unregistered marks. The rights in a trademark can exist independently of registration. Owners of unregistered marks can seek protection through the common law action for passing off. To establish passing off there must be:
The misrepresentation must be made by a trader (in the course of trade) to prospective customers or ultimate consumers of goods or services. The misrepresentation must be calculated to injure the business or goodwill of another trader (in as much as this is a reasonably foreseeable consequence), and must cause actual or probable damage to the business or goodwill of the trader (who brings the action).
Advantages of registration. There are considerable advantages to registering trademarks. A registered trademark is:
More easily enforced.
Provides rights of wider scope.
More easily assigned, licensed or otherwise made the subject of transactions.
In some cases where registration is not possible the only option may be to rely on protection through passing off (see "Unregistered marks" above). However, even in cases where there is doubt as to whether the sign can be registered, it is generally advisable to apply for registration in order to:
Secure an earlier priority date in case of subsequent use or applications to register the same or similar mark by a third party.
Provide notice to the world at large that trademark rights are being asserted in the mark.
Applications to register trademarks in the UK are made to the Trademarks Registry of the UK Patent Office (see box "Regulator contact details").
Making an application. Applications should be made using the standard application form (Form TM3 and TM3A for additional classes). Many of the procedural steps in the registration process can only be initiated if the correct TM form is used. All TM forms and the Trademarks Registrar's directions as to their use are published in the Journal, along with the prescribed fee.
Applications for registration on Form TM3 may be signed by the applicant or an agent of the applicant.
In principle, proof of authorisation of an agent is not required. However, an agent appointed for the first time or substituting another must file Form TM33. A 6 x 6 cm representation of the mark must be attached to the application form.
Fees. The government fees for filing an application for one mark are:
Attorney fees for filing the application(s) are also payable.
Choosing a mark. When choosing a mark to represent your goods or services a number of factors should be taken into account. For example:
In principle, greater protection is given to arbitrary or "coined" marks that have no link to the goods or services for which they are to be used. Correspondingly, less protection tends to be given to descriptive marks or marks with descriptive elements. The scope of any protection available on the basis of acquired distinctiveness (acquired through use) also tends to be narrow.
Third parties cannot be prevented from using ordinary English words or laudatory words and phrases to describe their own goods and services.
Marks which conflict with prior registrations and/or which would fall foul of the criteria for registration should be eliminated at the early stages of selection (see "Pre-application searches" and "Review procedure" below). Prior rights at common law may also arise in the UK in the case of unregistered marks simply by virtue of use. It is, therefore, advisable to also carry out a search of appropriate directories and databases in the relevant market or industry sector (in addition to a registered trade mark search). Where conflicting marks might otherwise preclude registration the use of a distinctive logo or design may serve to distinguish the marks.
Regulatory requirements, for example in the case of trademarks intended to be used for pharmaceuticals, should also be taken into account at the selection stage.
Pre-application searches. Pre-application searches by the applicant are not required as part of the registration process as the Trademarks Registry examines marks for formalities, distinctiveness, and conflict with prior applications and registrations. However, searches are advisable at the selection stage to ascertain whether the chosen mark is confusingly similar to a pre-existing application or registration before:
To be registrable, a mark must be distinctive and not otherwise prohibited from registration. The Trademark Registry can reject an application to register a mark on absolute grounds for refusal or on relative grounds for refusal (sections 3 and 5, Trademarks Act 1994).
In a straightforward case, not involving any opposition by a third party, and/or extensive correspondence with and/or hearing before the Trademarks Registry, the total time from filing to issuance of certificate should be about 13-15 months.
Absolute grounds for refusal. Marks that will be refused registration on absolute grounds include:
- do not satisfy the requirements of graphical representation and capability to distinguish;
- do not have any distinctive character;
- consist exclusively of signs or indications which may serve (in trade) to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services, or other characteristics of goods or services;
- consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of trade (unless, the mark, at the time of application, has become distinctive through use); or
- consist exclusively of a shape resulting from the nature of the goods themselves, the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods.
Marks that are immoral or contrary to public order (a mark that is contrary to public policy or to accepted principles of morality).
Deceptive marks (marks that deceive the public, for example, as to nature, quality or geographical origin).
Other unregistrable marks (which includes marks prohibited under UK or Community law and marks applied for in bad faith).
Relative grounds for refusal. Marks that cannot be registered on relative grounds are those that conflict with earlier trademarks, in particular a mark that is:
Identical to an earlier mark and connected to identical goods or services (no evidence of confusion is required).
Identical to an earlier mark regarding similar goods or services, or similar to an earlier mark regarding identical or similar goods or services, if there exists a likelihood of confusion on the part of the public including, the likelihood of association.
Identical or similar to an earlier mark regarding dissimilar goods, if the earlier mark has acquired a reputation in the UK, or in the EU in the case of a Community mark, and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier mark.
Likely to be prohibited from use by a rule of law protecting unregistered marks or other signs used in trade (in particular, the law of passing off) or by virtue of any other earlier right (in particular, copyright, design right or registered designs).
An earlier right means:
A registered mark, international mark (UK), or Community mark with an earlier application date, taking account of priorities claimed.
A Community mark with a valid claim to seniority.
A well known mark under article 6bis of the Paris Convention.
Opposing an application. Any interested third party can oppose an application for registration of a mark within three months of the publication of the application.
An application for opposition must be filed with the Trademarks Registry and must include a statement of the grounds of opposition. The grounds for lodging an opposition are:
Prior use, mainly in respect of marks which have become well known or acquired goodwill.
Application in violation of any other provision of the law.
Once an opposition has been lodged, the applicant for registration is notified. The applicant may then file a counter-statement within three months following notification. The opponent is in turn notified of the counter-statement and must file evidence by way of affidavit or statutory declaration, otherwise the opposition will be deemed abandoned. When all the evidence has been submitted (each stage of submission can last three months) a hearing is conducted, if requested by either party, where a formal decision is then issued.
In addition to formal oppositions, any interested person has the right to make informal observations to the Registrar.
Appeals. If an application for registration is rejected, the applicant has the right to appeal to the High Court (the Court of Session in Scotland) or to a person appointed by the Lord Chancellor within one month of the decision. The appointed person may refer the appeal to the High Court if:
Decisions of the High Court may be appealed, with leave, to the Court of Appeal.
Protection given by registration
If the application is successful, the first term of registration lasts for ten years from the filing date of the application. Subsequent ten-year terms may be applied for using the renewal procedure.
Exclusivity. Registration confers on the owner the right to the exclusive use of the mark and the right to bring actions for infringement.
Other means of protection. In addition to registering a mark, trademark owners should take great care to ensure that where the mark is licensed for use (for example, to a distributor or agent) that (see "Exploitation of trademarks: Licensing" below):
The copyright in any logo or design used in a trademark application should be assigned to the trade mark owner from any third party (such as, external consultants, designers, advertising agencies and so on). In the absence of any written agreement to the contrary, the original designer and not the commissioner of the work, will own the copyright in the design or logo. This could prevent its use as a trademark.
Maintenance of trademarks
Use. If the mark has not been used for a period of five consecutive years subsequent to registration it becomes susceptible to cancellation on the ground of non-use. Use of the mark in a slightly different form, provided the different elements do not alter the distinctive character of the mark still counts as use to ward off a petition to cancel for non-use.
Renewal. Renewal every ten years after the filing date is a pre-condition of the continuation of the rights conferred by registration. An application to renew, which may be signed by an agent, must be submitted together with the renewal (government) fee currently set at £250 (¤406). No proof of use is required for renewal.
Late renewal is possible within six months of the expiration of registration, on payment of an additional fee.
Monitoring trademarks. A well-managed mark should become more distinctive over time. If the opposite happens a mark may become generic (that is, loses its distinctiveness). It is particularly important that where a mark is licensed, the owner ensures that the licensee is bound to contractual undertakings and observes them as to the manner of use and the quality of the goods or services on which the mark is used. Otherwise, the mark could lose its distinctiveness.
Similarly, if action is not taken against infringers of a registered mark (so that there are multiple unauthorised users of the mark to describe similar goods or services) the mark will cease to be capable of distinguishing the goods or services of one particular trader. The mark may even become the standard descriptive term for goods or services of a particular type.
Grounds for infringement. A person infringes a registered trademark if he uses a sign in the course of trade that is:
Identical with the registered mark in relation to goods or services that are identical with those for which it is registered.
Likely to cause confusion on the part of the public, which includes the likelihood of association with the trade mark because the sign is:
- identical with the registered mark and is used in relation to goods or services similar to those for which the mark is registered; or
- similar to the registered mark and used in relation to goods or services identical or similar to those for which the mark is registered.
A person uses a sign if he:
Affixes the sign to goods or packaging.
Offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign.
Imports or exports goods under the sign.
Uses the sign on business papers or in advertising.
A person who applies a registered mark to material intended to be used:
will be treated as a party to any use of the material which infringes the registered mark if when he applied for the mark he knew or had reason to believe that the application was not authorised by the owner or a licensee.
Bringing an action. In England actions for trademark infringement are brought in the specialist Patents Court within the Chancery Division of the High Court. In Scotland actions are brought in the Court of Session and are heard by a specialist judge.
Defences. Possible defences to a claim of trademark infringement include:
Use of a registered mark. A mark cannot be infringed by the use of another validly registered mark in relation to the goods or services for which it is registered.
Use of own name or address. A registered mark is not infringed where a person uses his own name or address as long as the use is in accordance with honest practices in industrial or commercial matters. The question whether a company can claim this protection has been referred to the European Court of Justice following the House of Lords decision in Scandecor Development AB v Scandecor Marketing AB & ors 4 April 2001.
Use of descriptive indications. The use of an indication relating to any characteristic of goods or services (including, an indication of the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of goods or the rendering of services) is not considered infringement, provided the use is in accordance with honest practices in industrial or commercial matters.
Use of a mark to indicate intended purpose (for example, accessories and spare parts). A registered mark is not infringed by the use of a mark where its use is necessary to indicate the intended purpose of a product or services, provided such use is in accordance with honest practices in industrial or commercial matters. The purpose of this provision is to enable traders in spare parts or accessories to use a registered mark to identify the goods or services for which their accessories or spare parts are to be used.
Use of an earlier right. The continual use of an earlier right (that is, an unregistered mark or other sign) in the course of trade in relation to goods or services where use commenced prior to the use or registration of the registered mark (whichever is the earlier), will not infringe a registered mark. The right to continued use is however restricted to use within the particular locality where the earlier right is protected by the law of passing off.
Use for the purpose of identifying the owner's goods or services. Use of a mark in the context of comparative advertising will not infringe a registered mark if the use (for the purpose of identifying goods or services as those of the owner or licensee) accords with honest practices in industrial or commercial matters (see also below under Comparative advertising).
Use of the sign not as a trade mark has been held not to be a defence (Philips v. Remington,  RPC 809, Court of Appeal). This case has been referred to the European Court of Justice and a decision on this point of law is awaited in several months (a similar reference has been made in Arsenal Football Club plc v. Matthew Reed (6 April 2001).
Acquiescence. The owner of an earlier mark is not entitled to oppose the use of a later registered mark in which he has acquiesced for a continuous period of five years, in relation to the goods and services for which it has been used.
Exhaustion of rights. A mark can be used in relation to goods which have been put on the market in the European Economic Area (EEA) under that mark by the owner or with his consent without leading to infringement. Unless the owner has "legitimate reasons" for preventing use of the mark (for example, where the original condition of the goods put on the market by the owner has been changed or impaired without his consent) a trademark registration cannot stop importation into the UK of goods which have been circulated in the EEA under that mark by or with the consent of the trademark owner.
Disclaimers and limitations. Disclaimers regarding exclusive use can be entered voluntarily on the Register to overcome objections or oppositions. The effect of disclaiming is that the mark owner has no exclusive right in respect of any disclaimed matter. It will be a defence to an action for infringement if the use of the sign falls within any disclaimer or limitation to the rights conferred by the registration.
Remedies. The remedies available for trademark infringement depend on where the action is brought:
- an injunction;
- damages and/or account of profits;
- delivery up of the infringing articles;
- removal of the infringing sign; or
- destruction of the infringing product.
The owner can also seek preliminary and interlocutory measures. In addition, Customs can seize infringing goods if notified by the trademark owner, subject to the free movement of goods (Council Regulation 3842/86) (see "Defences: Exhaustion of rights" above).
- an interdict (injunction);
- damages and/or account of profits;
- delivery up of the infringing articles;
- removal of the infringing sign; or
- destruction of the infringing product.
In addition, the owner can seek an interim interdict at any time after the action has been commenced. Customs can also seize infringing goods (as is the case in England).
Exploitation of trademarks
The commercial value of trademarks can be exploited by means of assignment, licensing or by using the mark as loan security.
Assignments. To be effective, assignments of registered marks must be in writing and signed by or on behalf of the assignor. Details must be provided on:
Registered marks can be assigned otherwise than in connection with the sale of the goodwill of the business to which the mark relates. Assignments of pending applications are also permissible. Marks may be assigned:
In respect of some or all of the goods or services for which they are registered.
For a particular locality.
For a specific field or use.
The prohibition (under previous UK law) on splitting ownership of associated marks has been removed. However, trademark owners should be careful to ensure that an assignment does not mislead or deceive the public as this can make a registration susceptible to an action for revocation.
Where a mark is jointly owned, one owner cannot assign his share without the other's consent.
The assignment of a registered mark is a registrable transaction. In order to claim damages or an account of profits for infringement committed between the date of the transaction and the date of registration, the application to register should be made within six months of the date of the transaction.
Registration is also required:
Licensing. Licensing of trademarks is permissible and no longer subject to policing by the Registrar. In practice, it remains important for owners to exercise quality control over the use of their marks. A licensee that misuses a mark on goods or services of inferior quality, or misleads the public in any way, particularly as to the nature, quality or geographical origin of the goods or services can cause the mark to lose its distinctiveness and the registration to be cancelled. Following the Scandecor House of Lords decision (Scandecor Development AB v. Scandecor Marketing AB & ors, 4 April 2001), a question has been referred to the ECJ to clarify whether "a trade mark is to be regarded as liable to mislead the public if the origin of the goods denoted by the mark is a bare exclusive licensee".
Trademark licences are registrable transactions and the licensee usually effects registration. The advantage of registering the licence for the licensee is that, until an application to register is made, the licence is ineffective against anyone who acquires a conflicting interest in the mark without notice of the licence. In addition, the right (under section 30, Trade Marks Act 1994) of the licensee to call on the owner to bring an action for infringement depends upon the registration of the licence. Failure to register a licence also affects the licensee's right to recover damages for infringement.
Competition issues affecting licensed marks. The Competition Act 1998 (which came into force on 1st March, 2000) (1998 Act) has replaced the Restrictive Trade Practices Act 1976 with legislation more in line with EC competition law. The 1998 Act establishes two types of prohibited practice:
The Chapter I prohibition of agreements (written or not) which prevent, restrict or distort competition and may effect trade within the UK, analogous to article 81 of the EC Treaty.
The Chapter II prohibition, of conduct by dominant companies which amounts to an abuse of their position in a market in the UK, analogous to article 82 of the EC Treaty.
The Chapter I prohibition, which applies to many intellectual property agreements, is subject to a number of exclusions and exemptions. There are three types of exemption from the Chapter I prohibition:
Individual exemptions. This exemption is only available for agreements that are notified to the Director General of Fair Trading, and where it can be shown that the restrictions (which bring the agreement within the Chapter I prohibition) are necessary for the attainment of improved production or distribution, the promotion of technical progress, and to allow consumers a fair share of the resulting benefit.
Block exemptions. This exemption is still being formulated. It will exempt particular types of agreement without the need for notification. There are no block exemptions relevant to intellectual property and the long promised guidelines on the application of the 1998 Act to intellectual property have still not been issued.
Parallel exemptions. In practice, it seems that it is the parallel exemption that will be of most use in relation to intellectual property agreements. This type of exemption applies to agreements that benefit from individual or block exemption under article 81(3) of the EC Treaty. It also covers agreements, complying with such a block exemption, that are purely national in character so that they do not affect trade between member states and therefore, do not fall within article 81 of the EC Treaty in the first place.
The 1998 Act also provides for orders to be made excluding or excepting from its provisions vertical agreements. One order, the Competition Act 1998 (Land and Vertical Agreements Exclusion) Order 2000 (SI No 310), has been made. The term "vertical agreements" covers distribution agreements, and ancillary provisions relating to intellectual property.
Security. Trademarks present particular difficulties from the point of view of security because of their inherently fragile nature. Although potentially indefinite in duration, they have the scope to become invalid as a result of the way in which they are exploited.
A legal mortgage can be taken over a registered trademark by way of assignment with a right of redemption and an exclusive licence back. However, with trademarks the licence agreement should also detail how the lender (licensor) is to exercise control over use of the mark by the borrower (licensee). A licence that does not provide for such control, for example in respect of the quality of the products, to which the trademark is applied, ultimately risks compromising the validity of the mark.
In practice, in exercising this control, the lender could appoint an agent whose function would be to ensure that the borrower fulfilled his obligations and did not diminish the value of the security by his conduct.
Although the mechanism of creating a fixed charge or equitable mortgage is simpler (in that there is no transfer of legal title at the time that the security is taken) most of the problems associated with assignment and licence back will not apply. However, consideration should still be given to the inclusion of specific restrictions and covenants (designed to protect the value of the marks) such as, policing and responding to infringements.
The grant of any security interest (whether fixed or floating) over a registered mark or any right in or under it is a registrable transaction. All registrable transactions (assignment, licence and grant of security) must be registered within six months of the date of the transaction or as soon as practicable thereafter. Otherwise, the new owner or licensee cannot claim damages or an account of profits for infringements occurring between the date of the transaction and the date of registration.
Registration is also required to preserve the security as against third parties, and before any title can be asserted against a third party, such as an infringer. A trademark application can also provide security. However, as with any application for an intellectual property right, the security may prove illusory, as there is no assurance that the application will proceed to registration.
Unregistered rights in marks present particular problems from the point of view of their use as security as they cannot be isolated from the business in which they arise. Although a certain degree of exclusivity in the use of an unregistered mark can be maintained by an action in passing off (which prevents one trader passing off his services or goods as those of another) an unregistered mark is inextricably linked to a particular business and the goodwill in that business. It cannot, therefore, be easily assigned without the goodwill associated with that business.
A form of security can be taken over an unregistered mark by means of, for example, a fixed equitable charge over the borrower's business, goodwill in the business and the unregistered mark. A floating charge over the goods may be more appropriate for unregistered marks. However, in essence, this amounts to a charge over the whole business and, apart from recognising the existence of the unregistered trademark as a separate entity, will look the same as other such charges over the business.
Any mortgage or charge over a mark should also extend to any similar marks belonging to the same proprietor. If there are any unregistered marks associated with the registered marks over which the interest is to be taken, provision should be made for controlling their use as well, so as not to affect detrimentally the value of the registered marks.
The "Control of Misleading Advertisements (Amendments) Regulations 2000", Statutory Instrument S.I. 2000 No. 914, of March 30, 2000, in force April 23, 2000, implements the Directive 97/55/ EC on comparative advertising. Briefly stated, comparative advertising shall be permitted only when several conditions are met, such as the advertisement is not misleading, it compares goods or services meeting the same needs or intended for the same purpose, it does not discredit or denigrate the trade marks of a competitor, etc.
In addition, s. 10(6) of the UK Trade Marks Act 1994 allows a trader to use a competitor's mark to denote that competitor's goods in his own advertisements, in other words to use a trade mark comparatively. There is no trade mark infringement, unless the use of the trade mark is not in accordance with honest practices. The principle is that comparative advertising is permitted as long as it is honest (see above, Defences to trade mark infringement). Recently, in an advertisement by Ryan Air stating that British Airways was 5 times more expensive while it is only 3 times more expensive, it was held that the advertisement was true because the average consumer expects hyperbole in advertisements (see British Airways v Ryan Air, Chancery Division, 5 December 2000).
Trademarks on the internet
Registering a domain name. If a person registers a domain name which is likely to cause confusion to internet users with respect to another's registered (or even unregistered) trademark, this may amount to infringement of trademark rights. However, given the low cost of domain name registration, and in order to avoid a potentially long and costly legal claim, it is advisable that owners register at least their most important marks as domain names:
Where to register. There is no one UK authority to which applications for registering a domain name should be made. Applicants usually register their domain names via one of the several hundred name registration agents (also known as registrars), internet service providers (ISPs), internet access providers (IAPs) and internet consultancies, capable of registering a domain name under the .uk country code domain name ending (also known as a second level domain (SLD)).
As well as the numerous registrars capable of registering.uk domain names, each country is required to have a central registry to store the unique names used on the internet and their associated numeric addresses. Nominet UK Ltd (http://www.nominet.org.uk) is the national registry for all internet domain names ending in .uk, and provides necessary technical and administrative services. A full list of Nominet's members capable of registering domain names under the .uk suffix can be found at http://www.nic.uk/members.html.
Domain names can be registered either directly with Nominet UK or through a Nominet UK member. Nominet UK recommends registering through a Nominet member, which is familiar with the technical and contractual details of the registration process. Applicants with existing internet connections (name server) and support departments can register directly with Nominet UK.
Fees. The fees for registration vary greatly between registrars. Domain name registration using Nominet UK costs £80 (¤130)plus VAT for a two year registration period. By contrast, registration of a .uk domain name through Register.com (http://www.register.com) costs £49 (¤80) (inclusive of VAT) for the same two year period
The domain name can be renewed annually through Register.com at a cost of £24 (¤39) (inclusive of VAT) per year.
Searches. It is advisable to carry out a trademark search so that a third party's registered trademark is not inadvertently registered as your domain name. In the contract between the applicant and Nominet UK, and most other registrars, the applicant warrants that neither the registration of the domain name nor the manner in which the domain name is directly or indirectly used infringes the legal rights of third party. (This will include infringement of a registered or unregistered mark).
It is advisable to carry out a "Whois" query through a .uk registrar or Nominet UK's website to check whether your choice of domain name is still available.
- e-mail contact address;
- requested domain name;
- applicant's identity (name, organisation type, company, company number if any, address);
- administrative, technical and billing contact; and
- host name and IP address of two name servers.
Once you have submitted your registration details and payment, it generally takes between 24 and 72 hours for the Nominet UK registry to update its database to include your newly registered domain name.
Nominet UK and other UK registrars register domain names on a first come first served basis. Note, however, that the domain name is not considered formally registered until the payment for registration has cleared.
Applicants do not require a local presence or a link between their domain name and name or marks.
Dispute resolution. Nominet UK has a dispute resolution policy and service to deal with disputes between parties over the rightful ownership of a registered .uk domain name (http://www._nominet.org.uk/ref/drs.html).
If the dispute resolution process determines that the domain name has been wrongfully registered by an individual or is being used in a manner which is likely to cause confusion to internet users, Nominet UK will take appropriate measures, such as transfering the domain name to its rightful owner (This only applies to domain names with a .uk ending).
Disputes between parties involving generic top level domain names (such as .com, .net and .org) are governed by specific rules and regulations prescribed by the International Corporation for Assigned Names and Numbers (ICANN) (http://www.icann.org/), and its sanctioned dispute resolution service providers (for more details, see chapter "New internet governance"). These include:
Judicial decisions. There have been several judicial decisions in the UK relating to the issue of cyber-squatting, of which the following two decisions are the most significant.
BT plc v One in a Million Ltd & Ors(Court of Appeal, July 23rd, 1998). In this case the defendants had registered internet domain names comprising the names or trademarks of well-known commercial or other enterprises without the consent of those enterprises (for example, virgin.org, ladbrokes._com, marksandspencer.co.uk, sainsbury.com, burgerking.co.uk, britishtelecom.com). The defendants' intentions were not to set up active sites using the domain names, but instead, to sell the domain names to the business whose name or mark had been used.
The Court of Appeal upheld the decision of the lower court. It considered the use of domain name registrations in respect of household names to be instruments of fraud amounting to passing off.
Although the court's decision was primarily concerned with the issue of passing off, it also found that the _defendants had tried to sell domain names which were confusingly similar to registered trademarks which amounted to trademark infringement. As such, the defendants were ordered to assign the offending domain names to the organisations concerned. A full copy of this decision can be obtained on the Nominet UK website (http://www._nominet.org.uk/news/legal/index.html).
The respondent, a research fellow at Cambridge University had registered domain names using the names of 132 popular authors throughout the world, with the primary intention of selling the names to the relevant authors at a considerable profit. Included in this list was the complainant, Jeanette Winterson, a famous British writer. On realising that the respondent had registered the names jeanettewinterson.com, jeanettewinterson.org and jeanetewinterson.net, the complainant brought an action under the ICANN domain name dispute resolution procedure, seeking a transfer of the domain names.
In a decision rendered by the ICANN-sanctioned WIPO Arbitration and Mediation Centre, a single-member arbitration panel determined that the complainant had proved the necessary factors to order a transfer of the dispute domain names. Specifically, the complainant had proved that:
- the respondent's domain names were identical or confusingly similar to a trademark or service mark in which the complainant had rights;
- the respondent had no rights or legitimate interests in the domain names; and
- the domain names had been registered and were being used in bad faith.
Of particular importance in this case was the arbitrator's finding that although the complainant's name was not a UK registered mark, based on her well established popularity as a writer and name-recognition in the world of literature, she could rely on her common law rights in the mark to bring an action. A full copy of this decision may be found on the ICANN website (http://www.icann.org/udrp/udrp.htm).
Other recent disputes have been decided by arbitrators which concern UK marks or unregistered rights, particularly rights in names of famous people (see for instance, the dodialfayed.com, mickjagger.com and sting.com cases, all available at http://www.icann.org/udrp/udrp.htm).
- Sting (Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No.D2000-0596)
Gordon Summer, the singer known as Sting, brought a case against the registrant of sting.com. Sting argued that he had common law rights in the name Sting, akin to the rights which had been successfully relied upon in the other famous name cases. The respondent had offered Sting the domain name in 1995 for $25,000. This was relied upon as evidence of bad faith as one of the markers of bad faith set out under the Policy is an offer to sell the domain name for a sum in excess of out of pocket expenses.
Strangely, Sting did not present any evidence to show that the word Sting was a common law trade mark, but the panelist took the equivalent to judicial notice in holding that Sting was a world famous entertainer. The panelist distinguished Sting's case from the other cases where famous individuals had been able to recover domain names featuring their names, on the basis that Sting was a common dictionary word with a number of different meanings. The panelist found against Sting on the second requirement because the respondent had no legitimate interest in using the domain name. The respondent demonstrated that "Sting" was his nickname and this gave him a legitimate reason. Also, no doubt in the respondents' favour was that he was not shown to have registered other domain names which featured other peoples' trade marks or names. Therefore, despite the fact that he had offered to sell the domain name in excess of out of pocket expenses, it was a domain name to which he was entitled and this alone could not establish bad faith.
- MickJagger.com (NAF case No. FA0095261) and dodialfayed.com (WIPO case No. D2000-0060)
In the MickJagger.com case, the name was transferred to Mick Jagger (the complainant) because the domain name was similar to the complainant's name, respondent had no legitimate rights or interests in the name and had registered the domain name in bad faith. In addition, respondent had offered the domain name for sale for out-of-pocket expenses and had already acted in such a way for other domain names.
Similarly in the dodialfayed.com case, the respondent had offered the domain name for sale for an exaggerated sum in an attempt to capitalise unfairly on the fame of and public interest in the late Mr Emad Mohamed al-Fayed.
Name. UK Patent Office
Address. Head Office at Cardiff Road, Newport, _Gwent, Wales NP9 1RH
Tel. +44 (0) 1633 813 930
Fax. +44 (0) 1633 813 600
Contact name for queries.
Eileen Tottle (patents), Raoul Colombo (trademarks), Mark Winter(designs), Teresa Arnesen (copyright)
Areas of responsibility. Registration of patents and trademarks
Obtaining application forms, guidance notes. See website
Name. Nominet UK Ltd
Address. Sandford Gate, Sandy Lane West, Oxford OX4 6LB
Tel. +44(0)1865 332211(voice calls between 9:00 am and 5:30 pm UK local time)
Fax. +44(0)1865 332299
Email. firstname.lastname@example.org (Technical and General)
email@example.com (Billing and Accounts)
Contact name for queries. None specifically made available
Areas of responsibility. Registration of domain names
Obtaining application forms, guidance notes. http://www.nominet.org.uk
Examples of Registry practice
Geographical terms. Geographical terms are registrable if they both:
The registrar must be satisfied that the mark is not likely to be required for use in trade by other traders in order to denote geographical origin. Otherwise, evidence may be required of wider distinctiveness acquired through use.
Surnames. Surnames with a frequency of up to 100 times (or 150 times for phonetic equivalents) in the London telephone directory may be accepted as prima facie registrable. Otherwise, evidence of distinctiveness must be produced. If the name is combined with initials or a full forename, the threshold is 100 and 200 times respectively. Foreign surnames are prima facie registrable.
Forenames. Forenames are registrable, if they are capable of distinguishing. Objections will be raised in respect of female forenames that are considered incapable of distinguishing when in relation to:
Perfumes (Class 3).
Cosmetics and similar goods.
Womens' and girls' clothing, excluding footwear (Class 25).
Beauty salons, massage services, cafe shops, teashops and similar eating places (Class 42).
Male forenames are similarly treated in respect of services such as hairdressers and cafes.
Letters not forming a pronounceable word. Three letter marks are prima facie registrable. Two letter marks are prima facie registrable if they are both:
There may be an objection to the registration of single letter marks. Distinctive representation or additional characteristics must be taken into consideration.
Numbers. Marks consisting of less than five numerals are likely to be unregistrable, unless there is evidence of acquired distinctiveness. Distinctive representation or additional characteristics must be taken into consideration.
Protection and enforcement of other IPRs
In addition to trademarks, the main IPRs in the UK are confidential information, patents, unregistered designs, registered designs, semiconductor topography rights and copyright.
Written by Trevor Cooks and Audrey Horton. First published in Global Counsel IP Handbook 2000.