Publications
European IP Bulletin, Issue 26, October - Trade Mark
Trade Mark
7. Scandinavian Typo Squatting Cases Successful
On 29 July 2005, the World Intellectual Property Organisation (WIPO) handed down its decisions in three cases brought against Unasi Inc, a Panamanian company (the “Respondent”) by well-known brand owners, Bang & Olufsen, Scania and Volvo against
Amongst other names, the Respondent registered three domain names based on misspellings of the brand owners marks, namely: bag-olufsen.com, wwwscania.com and vlovo.com. Evidence was brought that the Respondent re-directed web users to portal sites using these domains. These portal sites advertised goods that competed with the goods sold by the brand owners, though the goods advertised were not exclusively in competition. Further evidence was brought that the Respondent was undertaking “warehousing” of domain names incorporating others’ brand names, all used to re-direct web users to portal sites.
In order to succeed under the domain name dispute resolution procedure, a complainant must demonstrate that:
- the domain name registered is identical to, or confusingly similar to, a trade or service mark in which the complainant has rights;
- the registrant has no rights or legitimate interests in the domain name; and
- the domain name was both registered and used in bad faith.
The concern arose that for action to be taken against this Respondent, the claimants would need to prove the brands had a reputation in Panama. This is because there is no automatic right to prevent others from registering domain names that would infringe the trade mark rights of brand owners. If registrants can show that they are using the domain names in good faith, for example to sell products that are different to those sold by the brand owner, the registration is legitimate. The complainant must show that the domain name is being used to sell products that might compete with or otherwise damage the brand owners’ business.
In these cases, the WIPO panel recognised the “typo-squatting” that was taking place. The Respondent was deliberately using these domain names to capture web users entering incorrectly spelt brand names to re-direct those users to their own site, which offered sources of alternative goods. Despite this, the brand owners were required to demonstrate use of their brand names in Panama in order to show the Respondent’s registrations and use were in bad faith. The Claimants were able to do so: for example, use of the Bang & Olufsen brand name in Panama over a 25-year period could be demonstrated.
These decisions will encourage brand owners to enter new markets where the registered trade mark protection scheme is not as extensive or friendly to brand owners, safe in the knowledge that there is a reasonable prospect of successfully controlling use and misuse of their brands.
In particular, WIPO has shown itself ready to recognise typo squatting and warehousing of domain names where it occurs across continents. These decisions will therefore be welcomed by brand owners.8. Agfa Photo Faces Trade Mark Disputes
On 29 July 2005, the Court of Appeal (Civil DivisioThe planned sale of insolvent Agfa Photo GmbH’s manufacturing plants in Germany is now subject to a dispute between different parties over the owenership of Agfa Photo’s trade mark.
Agfa Photo is insolvent and is attempting to sell its manufacturing plants. However, the interested buyer will only buy the plants if they can obtain the Agfa Photo trade mark.
The right to the trade mark is now on the hands of a private investor, Hartmut Emans. In November 2004, the Agfa Photo trade mark was assigned to Emans, free of charge, from Agfa Photo’s parent company Agfa-Gevaert. Further to the agreement, Emans was entitled to exploit the trade mark as he pleased. Once Agfa-Gevaert had assigned the trade mark to Emans, it no longer had any interest or responsibility to maintain the trade mark. Also, because Agfa Photo is a Community trade mark, the transfer of the ownership had to be dealt with in it’s entirely and for the whole area of the Community (Article 16(1) of the Council Regulation No. 40/94). The idea behind the deal was to secure at least 500 jobs at Agfa Photo. Currently, Emans is trying to sell the trade mark for around €10 -20 million. Agfa-Gevaert is displeased about this, fearing that jobs will be endangered and that Emans is seeking to enrich himself from the sale.
This situation has highlighted the kind of problem that can arise where trade marks are sold independently of a business and the assignee subsequently acts contrary to the will of the assignor.9. Nothing Immoral About Intertops
In Sportwetten v Office for Harmonisation of the Internal Market (OHIM) (Case T-140/02), Sportwetten GmbH, a German company, appealed a decision of OHIM in respect of the trade mark Intertops for bookmaker and betting services of all kinds. Sportwetten submitted that the trade mark was contrary to public policy and against accepted principles of morality.
Sportwetten argued that Intertops was not licensed to offer betting services in Germany and as such was not authorised to advertise them. Accordingly, since, in basic trade mark law, in order to retain rights in a trade mark it must be used, “if its use is precluded at the outset in respect of the services for which it is registered, it is incapable of economic exploitation and no right to registration exists”.
Sportwetten further claimed that if it was against German morals, then it was against the morals of the rest of the Europe too. However, the Court held that no concrete or precise evidence was provided to support this submission; and dismissed this argument as irrelevant.
The Court continued by noting that the applicant did not argue that the sign covered by the Community trade mark in question was contrary to public policy or accepted principles of morality. The applicant merely argued that the services covered by that trade mark were so contrary. Both sides agreed that the Intervener did not hold a license to offer the betting services nor the right to advertise them.
The issue remained whether the Community trade mark itself was contrary to public policy or accepted principles of morality. It is the trade mark alone which is to be assessed.
Referring to its judgment in Case T-224/01 Durferrit v OHIM – Kolene (Nu-Tide) [2003] ECR II-1589, the Court reminded the applicant that “the intrinsic qualities of the mark applied for and not the circumstances relating to the conduct of the person applying for the mark” are to be considered, and “the fact that the intervener is prohibited, in Germany, from offering the services in question and from advertising them cannot in any way be considered as relating to the intrinsic qualities of that trade mark within the meaning of the above interpretation.” As a result, the trade mark itself cannot be rendered contrary to public policy or accepted principles of morality. The mark is valid and acceptable, and not declared void.
The Court went on to dismiss any further arguments as unnecessary as the Community trade mark was upheld.Click here to return to the Summary page, or on any of the headings below to see the full case notes for that topic:
