Remedies to Permit Concurrent use of CyberMarks on the Internet – Sweeny Legal

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The property interest in a mark that trade mark law seeks to protect is consumer recognition, preferably favorable recognition (i.e., goodwill). Protecting this property interest also serves the public in that consumers are easily able to identify products and services by their branding, and as such can assess the quality of the product or service. That is, branding permits consumers to know what they are getting. “The trade mark infringement standard, then, is necessarily based upon consumers’ perceptions. It is defined as whether the concurrent use of conflicting marks on particular goods or services in a given market would be likely to cause confusion in the mind of the reasonably prudent purchaser as to the source, sponsorship, or affiliation of the goods or services.”[1]

 

In summary, the inability to limit the geographic boundaries of a party’s website, forces courts faced with concurrent users on the Internet to: “(1) award exclusive Internet usage rights to only a single party (thereby rejecting the concurrent use doctrine as applied to the Internet with respect to the instant parties and granting the prevailing party a windfall); (2) allow unrestricted concurrent use of a mark on the Internet, to the detriment of consumers and possibly the parties; or (3) award concurrent use rights to the parties, but also take steps to prevent consumer confusion in light of the overlapping use of the mark by the parties on the Internet”[2]

 

What is proposed as along term solution to trade mark law and domain name collisions is an intention to encourage courts to be creative in dealing with the concurrent use problem of the DNS by fashioning new remedies to counteract consumer confusion caused by domain names. This would focus on cases that implicate the geographic concurrent use doctrine, since in such cases it is difficult to avoid the issue. In those cases: “(1) courts should find infringement since, by definition, they involve the same or confusingly similar marks on the same or closely related products; and (2) equity strongly favors preservation of the junior user’s good-faith investment in his remote market area, as evidenced by nearly one hundred years of case law. By addressing concurrent use in these prospective cases, courts can begin to weigh the equities in domain name concurrent use situations generally and develop rules that will hopefully guide future policy choices by lawmaking bodies and regulators.”[3]

 

Another proposal that carries some weight is the Barger model.[4]

Barger proposes a structural change to the TLD system as well as adding new TLDs. Id. Barger’s structure would include sub-TLDs to indicate geographic location of the business or individual. For example, a domain name under Barger’s system would look like this: “[trademark].(geographicTLD). (genericTLD),” or “bmw.us.com.” While this proposal would be ideal in many ways to deal with geographic concurrent users, its scope renders it a task that would take many years, once it is even initiated, to complete. Besides physically implementing the new TLDs, existing domain name registrations would need to be rearranged–that is, existing domain names would need to be reassigned to include an appropriate geographic sub-TLD, a task that would surely take at least as long as the mere implementation of new TLDs. “Barger, also proposes that existing base of domain names would need to be reassigned. This type of remedy is workable, however, if the scope of the objective is narrowed from one of comprehensive global reorganization, to one of remedial measure”[5], and this of course, is a massive undertaking.

 


[1] Nupp, Robert “Concurrent use of trademarks on the Internet: reconciling the concept of geographically delimited trademarks within the reality of the internet” (2003) 64 Ohio St.L.J. 617, p. 2

[2] Ibid p. 3

[3] Ibid

[4] Barger, Andrew, Cybermarks: a proposed hierarchial modeling system pf registration and internet architecture for domain names” (1996) 29 Marshall L. Rev, 623, p. 647-49

[5] Ibid

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Please contact Sweeny Legal  or Brandsworth Licensing should you require any assistance with any Intellectual Property (IP) rights, Commercial Agreements of any type or IP Business and Commercial Strategies.

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Filed under Cyberspace law, Domain Names Law, Intellectual Property Law, Passing Off, Trade Marks Law

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