Issues surrounding the protection of intellectual property on the internet have gained importance as goods and services are increasingly sold across transnational borders. The unauthorized use of trademarks for the sales of fake goods on auction sites, as keywords by search engines operators or in virtual worlds and social media pose tremendous challenges.
We have seen a number of cases before various courts around the world that have used principles of trademark law, often in conjunction with other laws that regulate electronic commerce or the enforcement of intellectual property rights. The internet is borderless and the solutions provided differ from one jurisdiction to another.
Infringement on auction sites
Online auction sites provide excellent commercial opportunities at low costs to retailers, both professionals and amateurs. However, some unscrupulous users of these sites exploit brand names, misleading consumers to buy non-genuine goods. In Tiffany v eBay, the US Court of Appeals for the Second Circuit handed down a seminal judgment ruling that eBay’s alleged knowledge of the availability of counterfeit jewellery on its site cannot be a basis for claiming direct infringement. The court held that an auction site may be held liable for contributory infringement if it continues to provide its services to a person whom it has reason to believe is infringing a trademark.
The most important issue in such cases is who should bear the burden of policing the use of trademarks on online auction sites. Some experts argue that trademark owners should police the use of their trademarks as only they can best ascertain the violation of the rights in their brands and that they should not bank on others. Others argue that the auction sites should do this, as they alone have the access to filter the sites and take remedial action against sellers of counterfeit goods. Internet service providers are typically not held liable for unlawful activity on the internet, on the ground that they are a “mere conduit” as they only provide a platform for commerce.
Trademarks as ad keywords
Although Indian courts have not had the occasion to deal with trademark infringement on an online auction site, there was a recent well reasoned judgment in a case of trademark infringement in the use of a trademark as a keyword.
In Cosim Info v Google Madras High Court had passed an interim ruling in Google’s favour less than a month after passing an initial interim ex parte injunction against it. In it the plaintiff, Cosim Info, which owns trademark registrations such as Telegu Matrimony and Urdu Matrimony, claimed that when a user entered their marks as Google keywords, links sponsored by its competitors appeared. Ruling in favor of the defendant, Google, the court found the plaintiff’s trademarks descriptive and that Google would be severely affected if it is restrained from using the same.
The court held that Google’s use of the trademarks qualifies as “advertisement of the mark”. However, the court clarified that the same would qualify under the exception in section 29(8), which excludes those advertisements which are rendered according to “honest practices in industrial and commercial matters”.
On the question of whether Google is liable for contributory infringement, the court held that intention is a pre-requisite for liability and since the trademarks are descriptive it cannot be proved that Google intentionally suggested these marks with a view to infringe upon the plaintiff’s marks.
Social media and virtual worlds
Virtual worlds or massively multiplayer online role playing games enjoy immense popularity. In Taser International Inc v Linden Research Inc a real life brand, Taser, sued for an unauthorized use of its mark in the virtual world following the alleged sale of virtual stun guns which were labelled with the Taser mark. Such unauthorized use of real life brands in virtual worlds increases the likelihood that users may be confused as to the origin of the virtual products.
Online social networks such as Facebook have been in the limelight for allowing users to choose a name consisting of a trademark, which poses potential risks to the rights of brand owners. This has led Facebook to devise a mechanism by which infringing usernames may be reported.
Due to the territoriality of trademark rights, identical or confusingly similar trademarks can be held in different countries by different owners who are completely unrelated to one another and in many cases mutually exclusive rights are held by different parties. However, this is difficult in the case of use of trademarks in cyberspace. Some conflicts may be filtered out by the concept of infringement and the scope of exclusive trademark rights. In this light, the tension between the territoriality of trademark law and the global nature of the internet has led to particular attention being given to the possibility of adopting an internationally harmonized approach.
Neha Kochhar is an associate at Lall Lahiri & Salhotra, an IP boutique based in Gurgaon.
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