Protecting trademarks on the internet

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.

Neha Kochhar is an associate at Lall Lahiri & Salhotra, an IP boutique based in Gurgaon.