Brand owners are always encouraged to have their trademarks registered because that will enhance their protection in the sense that registered trademark owners will enjoy exclusive rights in connection with the class of goods/services for which the trademarks are registered in.
Courts in many jurisdictions, including Malaysia, have recognized that the protection of trademark laws extends to the use of trademark over the Internet.
The Internet presents many opportunities and challenges to brand owners. Brand owners will need to develop and implement strong brand management and protection strategy, alongside with continuously monitor, protect and enforce their trademark rights to prevent misappropriation of the goodwill and reputation in their trademarks.
For example, in 2008, an individual from Ipoh registered www.google.my as his domain name. When Google Inc. found out about that, Google Inc. filed a complaint against that individual and won the case because Google managed to prove that the domain name was identical with its trademark and that the individual had registered and/or used the domain name in bad faith.
If a domain name dispute involves generic top-level domains (gTLDs)(e.g. .biz, .com, .info, .mobi, .name, .net, .org), the trademark owner can file a complaint with any of the approved dispute resolution service providers accredited by the Internet Corporation for Assigned Names and Numbers (ICANN) under the Uniform Domain Name Dispute Resolution Policy (UDRP).
If a domain name dispute involves country code top-level domains (ccTLDs) (e.g. .my), the trademark owner can file a complaint with the Regional Centre for Arbitration Kuala Lumpur under the Mynic’s Domain Name Dispute Resolution Policy (MyDRP).
In Tiffany v eBay (2010), Tiffany brought a trademark infringement suit against eBay for the sale of non-genuine jewellery of the auction site. The US Court of Appeals rejected the claim of direct infringement on the basis that eBay used the mark to describe the genuine Tiffany goods offered for sale on the site.
The court held that eBay’s alleged knowledge of the availability of counterfeit goods on the site was not a basis of such a claim and to impose liability on such grounds would unduly inhibit the lawful resale of genuine Tiffany goods. The fact that eBay also removed those listings involving the sale of counterfeit goods upon being notified by Tiffany and suspended repeat offenders showed that eBay had not contributed to the infringement.
Similarly, in L’Oréal v eBay (2009), the UK court decided that L’Oréal failed to prove that eBay had procured sellers’ particular acts of infringement and that eBay was not under a legal duty to prevent infringement and that mere facilitation with knowledge and intention to profit was not enough to establish a joint liability trademark claim.
These two cases show that, while there is no doubt that the individual sellers have infringed the trademark rights by selling counterfeit goods online, it is difficult to also argue that the auction sites are jointly liable with the sellers.
Second Life facilitates and encourages user-generated content, which can be sold to other users for virtual currency, which can, in turn, be exchanged for real currency. There is a real risk that users may create and sell digital content which infringes the trademark rights of real-life brands. For that reason, many real-life brands have established themselves within Second Life.
The case was settled out of court subsequently. This case goes to show that brand owners will now have to also monitor the unauthorized use of their trademarks in both physical and virtual worlds.
The popularity and the use of online social networking sites such as Facebook, Twitter, YouTube and LinkedIn have grown exponentially across almost all jurisdictions around the world.
For example, a user who has registered an account on Facebook is given a vanity URL for his profile page. Hence, instead of www.facebook.com/id=8473659, a user’s vanity URL is known as www.facebook.com/yourname. This obviously posed a new risk to brand owners as users could, theoretically, choose a name consisting of a trademark not belonging to them. In light of this risk, many real-life brand owners have established an official Facebook page.
If a brand owner discovers that a third party’s username consists of his registered trademark, he can complain to Facebook by using the forms provided by Facebook and ask Facebook to remove the contentious page or disable access to that page. To further ensure that only brand owners get to keep their username, Facebook’s usernames are not transferable (hence eliminating the problem of registering the username in bad faith with the intent to profit from such act) and that usernames which have been removed will no longer be made available to other users.
Many brand owners have also established an official profile on Twitter to communicate with its customers and fans, while at the same time they also try to eliminate the risk of users registering a username consisting of their brand and “tweet” from that account, which may confuse consumers and fans into thinking that they are interacting with an official representative of the brand.
Twitter has also established a trademark violation mechanism which it says that it will suspend a user’s account if there is a clear intention to mislead others through the unauthorized use of a mark. Twitter uses “verification badges” to confirm the authenticity of identities of key individuals and brands on Twitter. The verified account will have a blue verified checkmark badge located in the top-right portion of a user’s profile page just above the name, location, and bio.