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					Baker & McKenzie




      Intellectual Property Rights: Importance
      of Trademark Protection in the Digital
      World




    Presented by Gabriela Vendlova
    3 December 2002
Baker & McKenzie




   GENERAL ISSUES OF TRADEMARK LAW


   • KEY ISSUE: THE GLOBAL REACH OF INTERNET VS. THE
     PRINCIPLE OF TERRITORIALITY OF TRADEMARK LAWS

   • PRACTICAL PROBLEMS OF INTERNET-RELATED
     TRADEMARK USE

   • HOW TO SOLVE PROBLEMS OF INTERNET-RELATED
     TRADEMARK USE
Baker & McKenzie


    KEY ISSUE: THE GLOBAL REACH OF INTERNET VS.
    THE PRINCIPLE OF TERRITORIALITY OF TRADEMARK
    LAWS



     Use of trademarks on the Internet has cross-border,
      international and potentially multi-jurisdictional exposure
      and impact
     Trademark law, by contrast, has always been used on the
      principle of territoriality
      - uncertainty for any use of trademarks on the Internet.
Baker & McKenzie


   PRACTICAL PROBLEMS OF INTERNET- RELATED
   TRADEMARK USE

   Conflict of Laws
    country where the server with vendor’s website is located (one country)
    country for which market is the vendor’s website intended (one or
     more countries)
    any country from which the vendor’s website may be accessed (all
     countries worldwide)
    other (e.g. Country of Origin Rule)

   Conflict of Trademarks
    trademarks from different territories (countries) meet in “cyberspace”
    uncertainty of trademark use on the Internet
    monopolization of trademarks on the Internet
Baker & McKenzie


   HOW TO SOLVE PROBLEMS OF INTERNET-RELATED
   TRADEMARK USE


    Multinational or global treaties and regulations (to minimize
     conflict of laws)
    Localization of websites by vendors (to minimize conflict of
     laws and conflict of trademarks)
    Trademark searches and investigations (to minimize conflict
     of trademarks).
Baker & McKenzie


    SPECIFIC TRADEMARK INTERNET- RELATED ISSUES



    • DOMAIN NAMES AND TRADEMARKS

    • TRADEMARK ABUSE OF WEB TECHNOLOGIES
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   DOMAIN NAMES AND TRADEMARKS


   Registration of Trademarks as Domain Names
   • Registration in Bad Faith
        - cyber-squatting
        - competitors

   • Registration in Good Faith

   Registration of Domain Names as Trademarks
Baker & McKenzie


   TRADEMARK ABUSE OF WEB TECHNOLOGIES


   Hyperlinking and Trademark Infringement
   • Deep linking (as a specific type of hyperlinking) may constitute
     confusion by customers about the origin of the trademark used
     within the deep-linked websites and therefore such deep-linking
     practices may be regarded as trademark infringement.

   Metatags and Trademark Infringement
   • Unauthorized use of third party’s trademark in metatags may
     infringe trademark, given that such use has misleading character
     concerning the origin of the trademark or goods and/or services
     associated with such trademark.
Baker & McKenzie


   EU LAW (IN RELATION TO TRADEMARK INTERNET-
   RELATED ISSUES)

   • EEC DIRECTIVE TO APPROXIMATE THE LAWS OF THE
     MEMBER STATES RELATING TO TRADEMARKS (89/104/EEC)

   • EC REGULATION   ON   THE   COMMUNITY   TRADEMARK
     (40/1994/EC)

   • EC DIRECTIVE ON CERTAIN LEGAL ASPECTS OF
     INFORMATION SOCIETY SERVICES, IN PARTICULAR
     ELECTRONIC COMMERCE, IN THE INTERNAL MARKET
     (“E-COMMERCE DIRECTIVE”) (2000/31/EC)
Baker & McKenzie


   EEC DIRECTIVE TO APPROXIMATE THE LAWS OF THE
   MEMBER STATES RELATING TO TRADEMARKS
   (89/104/EEC)
    • Limited harmonization
    • Member States remain free to fix the provisions of
      procedure concerning the registration, the refusal, the
      revocation and the invalidity of trademarks
    • Does not exclude the applicability to trademarks of the
      provisions of laws, other than trademark law, of the Member
      States - such as provisions relating to unfair competition,
      civil liability or consumer protection
    • Lists examples of signs which may constitute a trademark
Baker & McKenzie


   EEC DIRECTIVE TO APPROXIMATE THE LAWS OF
   THE MEMBER STATES RELATING TO TRADEMARKS
   (89/104/EEC) (cont’d)


   • Trademarks must actually be used
   • Same protection under the legal systems of all the
     Member States
   • No opposition to the use of a trademark subsequent to
     another trademark when the use was knowingly
     tolerated for a substantial length of time
   • Consistent with the Paris Convention
Baker & McKenzie



   EC REGULATION ON THE COMMUNITY TRADEMARK
   (40/1994/EC)


   • Directly applicable in all Member States without any need
     for transposition into local law
   • Introduces the Community Trademark
   • Establishes the Office for Harmonization of Internal
     Market (OHIM)

   Although the Regulation does not deal with trademark
   protection in the Digital World, it introduces “global” Community
   Trademark, which is globally protected within all Member
   States of the EU. Such global protection minimizes conflict of
   trademarks and conflict of laws, at least within the EU.
Baker & McKenzie

   EC DIRECTIVE ON CERTAIN LEGAL ASPECTS OF
   INFORMATION SOCIETY SERVICES - IN PARTICULAR
   ELECTRONIC COMMERCE, IN THE INTERNAL
   MARKET (“E-COMMERCE DIRECTIVE”) (2000/31/EC)


   • Legal framework for e-commerce and information
     services in general
   • Applicable law (“Country of Origin Rule”)
   • Country of Origin Rule does not apply (inter alia) to
     copyright, neighboring rights, and other rights including
     industrial property rights (i.e. trademarks).
      -    does not resolve the conflict of law problem with
           respect to trademarks
Baker & McKenzie

   STATUS OF TRADEMARK LAW IN TRANSITION
   COUNTRIES (IN RELATION TO TRADEMARK
   INTERNET- RELATED ISSUES) - IMPLEMENTATION
   OF EU LAW



   • CZECH REPUBLIC
   • SLOVAK REPUBLIC
   • POLAND
   • HUNGARY
Baker & McKenzie


   CZECH REPUBLIC

   European Union Legislation and Its Implementation
   •   General issues
   •   EEC Directive to approximate the laws of the Member States
       relating to trademarks (89/104/EEC)
       -   Implemented
       -   Conflicts between CTM and registered or pending
           national trademarks
       -   National exhaustion of trademark rights (Czech Republic)
   •   Regulation on the Community trademark (40/1994/EC)
       -   Directly effective as of the date of accession to the EU
Baker & McKenzie


   CZECH REPUBLIC
   • EC Directive on certain legal aspects of information society services -
     in particular electronic commerce, in the Internal Market
     (“E-commerce Directive”) (2000/31/EC)
     - Not yet implemented


   • EC Regulation on the export and re-export of goods infringing certain
     intellectual property rights (3295/94/EC)


   Specific National Legislation
     - None
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   CZECH REPUBLIC

   Domain Names and Internet
     - No specific legislation
     - Registration of trademarks as domain names: CZ-NIC
        - special request only
     - Registration of domain names as trademarks: Industrial
       Property Office
         - as any other trademark
         - has refused to register certain domain names
           (lack of distinctiveness)
Baker & McKenzie


   CZECH REPUBLIC
   Case Law
   - Several court decisions
   - Preliminary injunctions in Internet trademark disputes


   Jurisdiction and Applicable law
   - No specific amendments to national private international law
   - No specific guidelines


   Emerging Issues
   - New Trademark Act (2003)
      - Community exhaustion of trademark rights
Baker & McKenzie


   SLOVAK REPUBLIC
   European Union Legislation and its Implementation – Issues

   • EEC Directive to approximate the laws of the Member States relating
     to trademarks (89/104/EEC)

   • Implemented

   • Regulation on the CTM (40/1994/EC)
      - Directly effective as of the date of accession to the EU
   • EC Directive on certain legal aspects of information society
     services - in particular electronic commerce, in the Internal
     Market (“E-commerce Directive”) (2000/31/EC)

   • EC Regulation on the export and re-export of goods
     infringing certain intellectual property rights (3295/94/EC)
      - Implemented
Baker & McKenzie


   SLOVAK REPUBLIC
   Specific National Legislation
   - None
    Domain Names and Internet
   - No specific legislation
   - Registration of trademarks as domain names: EuroWeb Slovakia
       - rules for domain name registration
      - protection of trademark holders
   - Registration of domain names as trademarks: Industrial
     Property Office
      - as for any other trademark
      - has refused to register certain domain names
        (lack of distinctiveness)
Baker & McKenzie


   SLOVAK REPUBLIC
   Case Law
   - No court decisions


   Jurisdiction and Applicable law
   - No specific amendments to national private international law
   - No specific guidelines


   Emerging Issues
   - Interested in harmonization of international private and
    procedural law
Baker & McKenzie


   POLAND
   European Union Legislation and Its Implementation – Issues
   • EEC Directive to approximate the laws of the Member States relating
     to trademarks (89/104/EEC)
       - Implemented
       - Interim provisions (incompatibility with EU law)
       - Regional Exhaustion (Poland + States of free trade Zone)
   •   Regulation on the CTM (40/1994/EC)
       - Directly effective as of the date of accession to the EU

   •   EC Directive on certain legal aspects of information society
       services - in particular electronic commerce, in the Internal
        Market (“E-commerce Directive”) (2000/31/EC)
        - Not yet implemented (expected to be implemented in
          Spring 2003)
Baker & McKenzie


   POLAND
   Specific National Legislation
   - None
    Domain Names and Internet
   - No specific legislation
   - Registration of trademarks as domain names: NASK
     - no internal rules for trademark protection
     - since December 2002: trademark arbitration
   - Registration of domain names as trademarks: Patent Office
     - as for any other trademark
     - has refused to register certain domain names
       (lack of distinctiveness)
Baker & McKenzie


   POLAND
   Case Law
   - No court decisions


   Jurisdiction and Applicable law
   - No specific amendments to national private international law
   - No specific guidelines


   Emerging Issues
   - Poland has implemented Directive 98/71/EC on the legal protection
     of designs. This Directive gives a legal basis for registration of
     computer symbols and typefaces as designs.
Baker & McKenzie


   HUNGARY
   European Union Legislation and its Implementation – Issues


   • EEC Directive to approximate the laws of the Member States relating
     to trademarks (89/104/EEC)
      - Implemented
      - National exhaustion of trademark rights (Hungary)


   • Regulation on the CTM (40/1994/EC)
      - Directly effective as of the date of accession to the EU
Baker & McKenzie


   HUNGARY


   • EC Directive on certain legal aspects of information society
     services - in particular electronic commerce, in the Internal Market
     (“E-commerce Directive”) (2000/31/EC)
       - Partially implemented (Act CVIII of 2001 on Certain Aspects of
         Electronic Commercial Services and Information Society
         Services - Country of Origin Rule, Limited Liability of Internet
         Service Providers)


   Specific National Legislation
       - None
Baker & McKenzie


   HUNGARY
   Domain Names and Internet
   - No specific legislation
       - Registration of trademarks as domain names:
         Council of Hungarian Internet Service Providers
           - internal rules for trademark protection
           - active protection of trademarks
       - Registration of domain names as trademarks: Patent Office
           - as for any other trademark

   Case Law
    - Several pending litigations
    - A few preliminary injunctions
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   HUNGARY


   Jurisdiction and Applicable law
   - No specific amendments to national private international law
   - No specific guidelines


   Emerging Issues
   - Registrars' liability for trademark infringement
   - Relation between pending trademark and domain-name registration
     (for an identical denomination)
Baker & McKenzie




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