Право/9. Цивільне право

Михайлюк Г.О.

к.ю.н., старший викладач кафедри міжнародного права та спеціально-правових дисциплін

Національного Університету «Києво-Могилянська академія»

The Legal Background to Trade Mark Use (theoretical approach)

Presented article provides an analysis of the background to the trade mark use problem. It also provides a theoretical framework for the study and describes a high level of research activity in the examined area.

The popularity of Google among Internet users led to advertisers desiring to be top ranked on the first page of the search results. While bidding for a keyword, some advertisers tend to replicate a trade mark sign/slogan of a well-known competitor, in order to construct an imaginary connection to the official website, or one closely connected to the famous competitor. The opportunity to land in one of the highest-ranked positions has a significant influence on a company’s profit. This situation led to a number of claims against Internet Service Providers (ISPs).

In order to gain a better understanding of the keywords advertising dispute, one should first analyze the legal background of trade mark use and the main characteristics of using them as keywords in internet advertising. However, there are two different theoretical approaches if to compare European Union countries and Ukraine as to the examined issue.

To start with uniform western European legal background it is necessary to emphasize that in 1990, it was stated for the first time by the European Court of Justice (ECJ) in relation to HAG II (Case C-10/89) that ‘the system of undistorted competition requires that companies are able to create and maintain relations with their customers by virtue of the quality of their goods’ [5, P. 50]. First and foremost, distinctive signs are essential for allowing customers to recognize goods, while they also provide an opportunity to set up a connection between goods/services and the enterprise responsible for their marketing and quality. The second most significant ruling was that ‘trade marks must guarantee the identity of origin of goods bearing them’[5, P.50]

As it was defined by Murray, ‘branding is a watchword of marketers.’ [6, P.289] Trade mark protection must guarantee that all products were produced and launched on the market under the supervision of a singular enterprise. This is a fundamental principle for the explanation of the idea of “trade mark use” and “use of a sign for goods” according to Art. 5 (1) (a) Trade Mark Directive (TMD) and Art. 9 (1) of Community Trade Mark Regulation (CTMR) [1; 7].

The legal justification of the principle of undistorted competition is based on the case law created by ECJ. Nonetheless, there is no case law interpreting the use of trade marks “in the course of trade” or, “trade mark use.” It is necessary, however, to keep in mind that a distinction should be made between “trade mark use” and other forms of use. By contrast, there are number of ECJ decisions dealing with the concept of a sign used “as a trade mark” (for example, (C-63/97) Bayerische Motorenwerke AG v Deenik [1999] E.C.R. I-905, paras 34-38; (C-2/00) Holterhoff v Freiesleben [2002] E.C.R. I-4187, para 17; (C-228/03) Gillette Co v LA-Laboratories Ltd Oy [2005] ECR I-2337, para 28 ) [8; 9; 10].

Art. 5 (1) (a) of TDM determines that trade mark proprietors are able to prevent third parties without their consent, from “using in the course of trade any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered” [7].

As correctly noted by Waelde, ‘80% of Internet users, who are searching for a specific site, will start their search using a search engine’, rendering ‘meaningful use of the Internet without search engines [..] therefore virtually impossible’[2, P. 227].

Ukrainian regulations on the trademark owner’s exclusive rights generally correspond to EU trademark law.

Meanwhile, according to art. 16 of the Law of Ukraine on Protection of Rights to Trademarks for Goods and Services, the following actions constitute use of a trademark:

§ affixing to any good for which a trademark is registered, packaging thereof, sign, label, tag or other article related to such good, stocking of such good, offering for sale, import and export;

§ offering goods under that sign, or offering or supplying services under that sign;

§ using the sign on business papers, in advertising and on the Internet [4].

A sign is considered to be used if it is used in the form of the registered sign, as well as in forms that differ from the registered sign by certain elements provided these do not change the overall distinctiveness of the sign.

As of the beginning of 2010, neither Ukrainian legislation nor court practice clarified whether indication of a trademark in meta tags constitutes the use of a trademark. Currently, the applicable legislation and court practice is limited only to very general provisions stating that indication of a trademark the Internet shall constitute use of a trademark. This very broad definition gives rise to the argument that any indication of a trademark, including in meta tag may potentially be treated as use of trademark [3, P. 470].

It can be presumed that the issue of use of a trademark in meta tags shall be considered with regards to the purpose of such use. If the purpose of indication in meta tags is the sales promotion of respective goods, that this shall constitute use of trademark. Again, all these questions are waiting for specific interpretation in Ukrainian legislation and court practice.

As it can be concluded the popularization of the Internet was accompanied by a variety of problems that have to be regulated legally. These, however, are not always foreseen by the legislator in time. From the author’s point of view the problem of trademark use in keywords advertising is trying to be precisely examined by western European scientists, in Ukraine, on the contrary, it is still considered not to be urgent and demanding close attention.

Because of the word limit unfortunately it is impossible to give a more detailed characteristic of theoretical approach on trade mark use however case law approach in the world wide perspective are going to be analyzed and discussed in the following articles.

Sources:

1. Community Trade Mark Regulations 2006 No. 1027 – [Electronic source]. – Access mode: http://www.legislation.gov.uk/uksi/2006/1027/body/made

2. Edwards L., Waelde C. Law and the Internet. / L. Edwards, C. Waelde. – [Third Edition]. – London: Hart Publishing, 2009. – 713 p.

3. Horak M. Trademark Law in Central Eastern Europe / M. Horak. – Vienna: Lexis Nexis, 2011. – 485 p.

4. Law of Ukraine on Protection of Rights to Trademarks for Goods and Services – [Electronic source]. – Access mode: http://zakon3.rada.gov.ua/laws/show/ 3689-12

5. Max Planck Institute for Intellectual Property and Competition Law. Study on the Overall Functioning of the European Trade Mark Law System (European Commission). – 2011. – P. 50. – [Electronic source]. – Access mode: http://ec.europa.eu/internal_market/indprop/tm/index_en.htm.

6. Murray A. Information Technology Law: Monograph. / A. Murray. – Oxford: Oxford University Press, 2010. – 289 p.

7. Trade Marks Directive 89/104/EEC. – [Electronic source]. – Access mode: http://eurlex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:31989L0104:en:HTML.

8. (C-63/97) Bayerische Motorenwerke AG v Deenik [1999] E.C.R. I-905, paras 34-38

9. (C-2/00) Holterhoff v Freiesleben [2002] E.C.R. I-4187, para 17

10. (C-228/03) Gillette Co v LA-Laboratories Ltd Oy [2005] ECR I-2337, para 28.

11. (C 236/08 – C 238/08) Google France Sarl v Louis Vuitton Malletier SA [2011] ECR I-2417.