Trademark Law and Cyberspace

July 9, 2011, by | Start Discussion

A Trademark is a mark used by an individual or business organization which represents trade or business and which is capable of distinguishing goods or services from that of others.

A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound.
 
A trademark may be designated by the following symbols:
 
  • TM ™ (for an unregistered trade mark, that is, a mark used to promote or brand goods)
  • SM (for an unregistered service mark, that is, a mark used to promote or brand services)
  • ® (for a registered trademark)
Trademark law and Cyberspace involves following issues:-
  • Domain name
  • Meta tags
  • Framing
  • Deep Hyper linking

Domain

 
We have already read domain name dispute related issues in October-2010 issue, so I am not going to cover the same in this issue.
 
However, I have latest decided case on the same issue which I would like to share with you.
 
M/s.Karnataka Bank Limited v/s ELI/Shoval
 
Complainant: – M/s.Karnataka Bank Limited.
 
Respondent: – ELI/Shoval.
 
The disputed domain name: – www.karnatakabank.in
 

Complainant’s contentions:-

The Complainant is the owner of the figurative trade mark(s) "Karnataka Bank" throughout in India, and the Complainant has registered, and operates globally a number of websites using its trademark 'Karnataka Bank' in Generic and Country Code Top Level Domain Name Extensions(gTLD and ccTLD), such as,
 
 
and such registration of domain names are still valid and in force.
 
The Domain Name is identical or confusingly similar to:-
  • Trademark or service mark of the Complainant has rights and
  • Respondent has no rights or legitimate interests in the domain name
 
Respondent’s contentions:-
 
inter – alia that no evidence of any trademark rights were attached to the compliant and the complainant was called upon to produce evidence that the term "Karnataka Bank" is a registered trademark; the respondent registered many Generic domains related to India (mainly in area of tourism, travel, jobs etc.,) with no intention to infringe on any existing trademark, the respondent assumed that "Karnataka Bank" is pure generic term just like "Karnataka jobs" or "Karnataka hotel" or "Karnataka property".
 
Findings:-
 
  1. The Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
  2. The Respondent has no rights or legitimate interest in respect of the domain name; and
  3. The Respondent's domain name has been registered or is being used in bad faith.
  4. Hence, domain should be given back to the complainant.

Meta tags:

 
Meta tags are codes contained within websites that provide a description of the website. Let us take the illustration of the Asian School of Cyber Laws (ASCL) website.
When a student visits www.asianlaws.org, he sees the normal website of ASCL.
 
<META content="Education, training, consultancy and research in Cyber laws, cybercrime investigation and cyber forensics" name=description>
 
<META content="education, training, consultancy, research, cyber laws, cyber laws, cyber law, cyber law, cybercrime investigation, cybercrime investigation, cyber forensics" name=keywords>
 
These tags are embedded in the source code of the website. They are put so that search engines (e.g. google.com, yahoo.com etc.) can accurately identify what the website relates to.
 
As can be seen in the illustrations above:-
  1. The description tag contains a description of the web page.
  2. The keywords tag contains relevant associated keywords.
 
When a user searches for “Asian School of Cyber Laws” in google.com, the first search result clearly contains the description of the ASCL website as per the description tag.
 
Trademark disputes can arise when someone?s trademark is put by his rival in the Meta tags of the rival website.
Sameer sells PDF creator software that rivals the PDF creator sold by Adobe. If Sameer writes the words “Adobe” in the Meta tags of his website, then the search engines may mistakenly index Sameer?s website as being related to Adobe. Web users looking for Adobe software may get diverted to Sameer?s website.
 
The act of putting Meta tags of rival companies and brands in a website is also referred to as Cyber Stuffing.
 

Framing

 
A webpage can be divided into several frames. Each frame can display different content.
Let?s take a simple illustration. Sameer provides commercial consultancy in the field of information security. He puts up a website and one of the pages is illustrated below:-
 
 
When a user clicks on the link “RSA Algorithm and Encryption” in Frame 1 above, a document from the Tech Juris Law Consultant?s (Tech Juris) website opens up in Frame 2.
 
See illustration below:-
 
To an ordinary user it may appear that the RSA Algorithm and Encryption document is a part of Sameer?s website. In reality this document is being accessed from Tech Juris?s website and being opened up in a frame on Sameer?s website. Clicking on the other links opens up different web pages in Frame 2 while the content in Frame 1 remains the same. Such framing may give rise to a claim for passing off as an ordinary user may infer a business association between Sameer and Tech Juris. In reality, there is no business association between Sameer and Tech Juris.
 
ASCL can claim that Sameer has indulged in misleading and deceptive conduct.
 
It is advisable to put a suitably worded disclaimer or acknowledgment which clearly informs the visitor about the relationship between the two sites (Sameer?s and Tech Juris?s in this case).
 
For example Sameer could put the following disclaimer next to the link to Tech Juris?s webpage.
This link leads to content on the website of Tech Juris.
The homepage of Tech Juris is at http://www.techjuris.com/
 
Sameer has no business or other association with ASCL and has provided this link purely for information.
 

Deep Hyper linking

 
Simply, put hyperlink is a reference to a webpage or document on the Internet. Let us consider the courses page on the Asian School of Cyber Laws (ASCL) website.
 
 
The above webpage consists of several links to other web pages e.g. if a user clicks on the “Diploma in Cyber Law” link, he will be taken to the page containing details of the
 
Diploma in Cyber Law course. To a user the link appears as “Diploma in Cyber Law”
In the source code of the website, the link appears as:-
 
<ahref=http://www.asianlaws.org/courses/dcl/index.htm> Diploma in Cyber Law</a>
 
Normally, no organization or person objects if someone puts a hyperlink to their homepage. The objection comes when someone puts a link directly to an inner page or document.
 
For example, ASCL would not object if someone provides a link to the ASCL homepage (http://www.asianlaws.org/index.htm).
 
However, if someone provides a link to a document “deep” in the ASCL website, then ASCL may have an objection.
Suppose Sameer puts a hyperlink in his website named “RSA Algorithm”.
 
On clicking this link, the ASCL sponsored whitepaper on the topic opens up fromhttp://www.asianlaws.org/infosec/library/algo/rsa_asym.pdf
 
This is called Deep Hyper-Linking.
 
Deep hyper-linking may give rise to a claim for passing off as an ordinary user may infer a business association between Sameer and ASCL. In reality there is no business association between Sameer and ASCL. ASCL can claim that Sameer has indulged in misleading and deceptive conduct.
 
It is advisable to put a suitably worded disclaimer or acknowledgment which clearly informs the visitor about the relationship between the two sites (Sameer?s and ASCL?s in this case). For example Sameer could put the following disclaimer next to the link to ASCL?s webpage.
 
 
This link leads to content on the website of Asian School of Cyber Laws (ASCL). The homepage of ASCL is at www.asianlaws.org
 
Sameer has no business or other association with ASCL and has provided this link purely for information.

Sagar is a Law graduate. He is Head at Asian School of Cyber Laws(Maharashtra). He specializes in Cyber Law, Intellectual Property Law and Corporate Law. He teaches at numerous educational institutions across India.

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