A VIRTUAL WORLD WITHOUT BORDERS: THE INFRINGEMENT OF TRADEMARKS ON THE INTERNET
1.0. INTRODUCTION
The concept of trademark evolved as a result of the increased competition among traders and trading companies in the world of commerce. A trademark helps to distinguish a particular product or business from another, thus making it easy for the consumer to identify such product or business. The consumers are therefore able to make better and informed decisions on the right product to purchase as they may have associated certain trademarks with the quality and origin of the product.
A trademark basically refers to any distinctive sign used to identify goods and services offered by a company or a company itself. According to section 67 of the Trademarks Act[1], trademark is defined as:
a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate a connection in the course of trade between the goods and some person having the right either as the proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person and means, in relation to a certification trade mark, a mark registered or deemed to have been registered under Section 43 of this Act.
A trademark could be in various forms such as in form of a letter, figure, symbol, word, colour, shape, sound or even smell. For example, when you see a product with the Apple logo, you are immediately able to recognize it because the artistic representation is essentially the brand identity. The logo is unique to the company “Apple Inc.” and no other person or company is allowed to use it without express authorization.
It is however important to note that for a trademark to be eligible for protection, it must be registered with the Trademarks, Patents and Designs Registry which is usually completed after about 12-18 months.[2] Infringement cannot occur if the mark is not registered as provided by section 3 of the Act.[3] Upon registration, exclusive right of use is granted to the owner or proprietor[4] protecting the trademark from use without authorization or misuse by others in a particular territory.
2.0. THE INFRINGEMENT OF TRADEMARKS
The unauthorized use of the trademark or the use of a similar mark which is likely to cause confusion, mislead or deceive consumers for commercial or business purposes is said to be an infringement of that trademark.[5] As adequately provided by law, it is only the owner of a registered trademark or anyone that has been authorized by him that is permitted to use the mark subject and such person is not allowed on any premise to misuse the mark. In common cases of the use of a similar mark, an allegedly infringing mark must be identical to the registered trademark which is likely to cause confusion or encourage consumers to act under the mistaken belief that it is associated with a registered trademark.
Section 5(2) of the Act provides proper definition of trademark infringement:
without prejudice to the generality of the right to the use of a trade mark given by such registration as aforesaid, that right shall be deemed to be infringed by any person who, not being the proprietor or a registered user thereof using it by way of the permitted use, uses a mark identical with or nearly so resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either –
- as being use as a trademark; or
- in a case in which the use is upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as a proprietor or as a registered user to use the trademark or to goods with which such a person as aforesaid is connected in the course of the trade.
The legal implications of trademark infringement are usually provided by state or national laws. These implications include, but are not limited to: monetary compensation for losses suffered by the plaintiff; prohibitory injunction which would require the defendant to stop the production, use and distribution of the goods with the allegedly infringing mark and the defendant may also be required to alter some or all features on the goods that may amount to the infringement of the registered trademark; confiscation and possible destruction of goods that make use of the allegedly infringing trademark; imprisonment for a specified period of months or even years and in certain cases an order for the recovery of the attorney and court fees which must be paid by the defendant.[6]
3.0. THE INFRINGEMENT OF TRADEMARKS ON THE INTERNET
The world we live in today is a global village, making life incredibly easier especially in areas such as advertising and trade. Before the advent of the internet, it was difficult for an individual to find out companies or products in different geographical territories which may be sharing the same or confusingly similar trademark as him/her.[7] Now, it has become easy to discover and monitor such companies or products using or even abusing their trademarks within seconds. Since trademark, like other Intellectual Property (IP) rights is territorial in nature[8], there usually exists a conflict of rights between these companies who are sharing the same online presence. The major areas where conflicts may arise, constituting trademark infringement on the internet include domain names and search-engine advertising.
3.1. Domain names and trademark infringement
The internet is basically a gigantic marketplace so it is possible for a person to get someone in South Asia to buy his/her products which are produced in Nigeria, which is majorly owed to the ease of global reach through the use of the domain name system (DNS). Just like a public address, a domain name is an online address that allows any user to locate a company in the cyberspace as long as such person has internet access. This system thus provides a direct linkage between the producer/seller and potential consumers. [9]
However, this comes with problems that were non-existent prior to the advent of the internet. As a result of the territorial nature of trademarks and the global accessibility of the internet, it is possible for two different products[10] or companies in different geographical boundaries to have the same or confusingly similar trademarks. This leads to an unavoidable conflict of rights whereby the companies have to fight for the exclusive right of a certain domain name or website that carries elements of their registered trademarks. As is the usual traditional trademark law practice, it is the first person to register the trademark that wins the fight and is able to retain the domain name.
3.2. Search engines and trademark infringement
With the increased online presence in our world today, most companies employ the use of search engine marketing (SEM) which helps people find their products and services with ease. This is one of the most effective online marketing strategies as it is consumer-specific in the sense that it is what the consumer finds what he searches for. To generate more traffic to their website, companies buy certain keywords[11] and meta tags from search engines that are available worldwide such as Google. This directs potential consumers to their websites alone.
Conflict arises when these keywords or terms are trademarked material[12] and it is believed that there was an intention to confuse the consumer by probably using a well-known mark to misdirect him/her from the exact product or company he/she wishes to find. This is popularly referred to as “initial interest confusion” doctrine[13] which provides that it is held to constitute trademark infringement where a likelihood of confusion has been proven to be in existence.[14] It has however remained a major issue of controversy in most jurisdictions as the question of “to what extent can the used mark result into likelihood of confusion?” arises, bringing the doctrine of fair use into play.
4.0. CURRENT MEASURES IN PLACE
As a means to ensuring that an efficient and easy mechanism existed to resolve the dispute of domain names, the World Intellectual Property Organization (WIPO) recommended the Uniform Domain Name Dispute Resolution Policy (UDRP) which specifically governs the proper and correct registration of generic top-level domains (gTLD), some country code top-level domains (ccTLD) etc. The UDRP is an online alternative dispute resolution (ADR) mechanism through which the disputes of domain names can be resolved easily by cancelling a domain name that is not properly registered or giving an order to the losing party to transfer all rights of the domain name to the winning party.[15] The policy was adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) which is the global body governing the registration of domain names.[16] The complainant must however be able to prove the following:
- that the domain name was indeed a confusingly similar mark to that which he/she has rights;
- that the registrant does not possess rights or legitimate interests in the domain name;
- that the domain name has been registered and is being employed in bad faith.[17]
The Nigeria Internet Registration Association (NiRA) is the major national body, just like ICANN, charged with the responsibility of registering domain names. It does this by accrediting Registrars which would be directly responsible for the registration of ccTLD[18] and other second level domains. [19] The Association has a database of the registered names which makes it easy to identify domains names which may be infringing on a trademark and also to prevent the use of same or confusingly similar domain names. It equally has a Dispute Resolution Policy, which is almost the same as the UDRP.[20]
The Cybercrimes (Prohibition, Prevention, etc) Act 2015[21] equally makes provisions for the prohibition of the intentional use of trademarked material as domain names and the purchase of certain key words from search engines.[22] The punishment for this act under the Act[23] is imprisonment for a term of not less than two (2) years or a fine of not less than five million naira (#5,000,000.00) or both fine and imprisonment.[24] By virtue of the said Act, the Federal High Court has the power to order such offender to relinquish, upon formal request by rightful owner, such registered name, business name, trademark, domain name or other word or phrase.[25]
5.0. CONCLUSION AND RECOMMENDATIONS
The Cybercrimes Act does not make provisions for the existence of a Regulatory Agency to ensure that its provisions are strictly implemented. Offenders need to be severely punished if we must fight this crime effectively. The Act also does not make provisions for financial damages to be awarded for losses suffered to a person whose trademark has been infringed upon. There is thus a need for the Cybercrimes Act to be amended to include such provisions. NiRA should also ensure that they maintain a well-structured database to be able to easily scrutinize domain names before registration.
At the end, the primary goal of trademark as an intellectual property right is the protection of consumers from confusion and deceit. The value attached to certain trademarks influences the purchasing decisions of buyers. Thus, it becomes unfair when a competitor tries to take advantage especially in the cyberspace where there are literally no borders. Conclusively, the government should be more intentional about their role in ensuring that the laws and policies governing the cyberspace which are already in place are strictly implemented and the inconsistencies in those laws are remedied.
About the Author
Peace Solomon is a third year student of the Faculty of Law, University of Lagos. She is passionate about personal development; she believes that if every individual is intentional about their personal growth then we can collectively make the world a better place. Peace believes that life is all about making impact thus she consistently pushes to impact lives. She loves to watch movies, cook and play games during her leisure time.
[1] Trademarks Act, Cap T13, LFN 2004. Hereafter referred to as “the Act”.
[2] Mondaq, Nigeria: A Guide To Trademark Registration In Nigeria” available at https://www.mondaq.com/nigeria/trademark/757232/a-guide-to-trademark-registration-in-nigeria (accessed on 6 August 2020).
[3] This section provides that no person shall be entitled to institute any proceeding to prevent or to recover damages for the infringement of an unregistered trademark; but nothing in this Act shall be taken to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect of.
[4] As thus referred to in the Act.
[5] A. O Oyewunmi, Nigerian Law of Intellectual Property (2015), Ch. 20, p. 283.
[6] Legal Match, “Trademark Infringement” available at https://www.legalmatch.com/law-library/article/trademark-infringement.html (accessed on 5 August, 2020).
United States Patent and Trademark Office, “About Trademark Infringement” available at https://www.uspto.gov/page/about-trademark-infringement (accessed on 5 August, 2020).
[7] BitLaw, “Trademarks on the Internet” available at https://www.bitlaw.com/internet/trademarks.html#inappropriate (accessed on 5 August, 2020).
[8] WIPO, “IP Infringement Online: the dark side of digital” available at https://www.wipo.int/wipo_magazine/en/2011/02/article_0007.html (accessed on 6 August, 2020).
[9] Mondaq, “Nigeria: Cybersquatting and Protection of Domain Names in Nigeria” available at https://www.mondaq.com/nigeria/trademark/877252/cybersquatting-and-protection-of-domain-names-in-nigeria (accessed on 6 August, 2020).
[10] Or sometimes it could be the same products.
[11] Or related words.
[12] American Bar Association, “Keyword Advertising and Trademark Infringement” available at https://www.americanbar.org/groups/litigation/committees/business-torts-unfair-competition/practice/2017/keyword-advertising-and-trademark-infringement/ (accessed on 6 August, 2020).
[13] Washington and Lee Law Review, “The Initial Interest Confusion Doctrine and Trademark Infringement on the Internet” available at https://scholarlycommons.law.wlu.edu/cgi/viewcontent.cgi?article=1333&context=wlulr (accessed on 6 August, 2020).
See the case of Brookfield Communications Inc. v West Coast Entertainment Corporation 174 F.3d 1036 (9th Cir. 1999)
[14] The court is able to prove that there existed an intent by a competitor to divert the mind of the consumer from a particular product or company’s website.
[15] Law Padi, “Cybersquatting in Nigeria” available at https://lawpadi.com/cybersquatting-in-nigeria/ (accessed on 7 August, 2020).
[16] Olufunmilayo Mayowa, “Cybersquatting and the protection of domain names in Nigeria” available at www.spaajibade.com/resources/cybersquatting-and-protection-of-domain-names-in-nigeria-olufunmilayo-mayowa/ (accessed on 6 August, 2020).
[17] ICANN, “Rules for Uniform Domain Name Dispute Resolution Policy (the Rules”) available at https://www.icann.org/resources/pages/urdp-rules-2015-03-11-en (accessed on 6 August, 2020).
[18] Formerly managed by the National Information Technology Development Agency (NITDA) on behalf of the Federal Government.
[19] ICANN, “Member Profile: .ng” available at https://ccnso.icann.org/en/about/member-profiles/ng.htm (accessed on 7 August, 2020).
[20] See 17.
[21] Formerly the Cybercrimes Bill 2013.
[22] Section 58, Ibid.
Section 58 of the Act provides that “cybersquatting”: The acquisition of a domain name over the internet in bad faith to profit, mislead, destroy reputation, and deprive others from registering the same, if such a domain name is:
(i) Similar, identical, or confusingly similar to an existing trademark registered with the appropriate government agency at the time of the domain name registration;
(ii) Identical or in any way similar with the name of a person other than the registrant, in case of a personal name; and
(iii) Acquired without right or with intellectual property interests in it.
[23] Ibid.
[24] Section 25 (1), Ibid.
[25] Section 25 (2) (a), Ibid.
