Legal aspects of Webdesign: Trademarks

A popular topic in the press is the use of trademarks, in particular with respect to domain names. However, it is important for every Website owner to realize what a trademark is and when it may be used by other people.

What is a trademark

A trademark is, broadly speaking, any mark that is used for indicating goods or services in commerce. Usually, it is necessary to register the mark with a local trademark office before it gains protection under trademark law. The exact rules differ from country to country, and sometimes you also have some kind of protection without registering the mark first.

What can be a trademark

A trademark can be one or more words or an image (a logo). Sounds and colors can sometimes also be used, but this is more difficult and may not be permitted in all countries.

To indicate that a word, phrase or image is a trademark, the suffix TM can be used. Note that this indicator has no legal status in countries where only registered trademarks are protected against use by others. A registered trademark is indicated with the symbol.

Scope of a trademark

A trademark is intended for use in a certain class of commerce, for example selling food, air travel or computer programs. This has to be indicated during registration. A trademark is also limited by a certain scope, the area in which it is used. So, if one person holds the mark "Aero" for air travel, someone else can hold that same mark for air fresheners. Only when the other person's registration can be seen as damaging to the first mark can this be prevented (for example, using a whiskey's name for a toilet cleaner would not be permitted, even though these are different classes).

Similarly, a bakery in one city can not prevent someone else in another city from opening a bakery with the same name. The first bakery would have to be a national chain in order to prevent this. This of course causes problems on the Web, as domain names are not limited to a specific location: there can be only one aero.com, but is it the air travel or the air freshener company who has the right to it? These issues are difficult to resolve, but most countries have adopted a "first come, first serve" policy. So, the first holder of "Aero" would get aero.com, and the other would have to pick something like aero-travel.com.

The strength of a trademark

A trademark is said to have a "strength". A strong mark is one which is very clear to the public. This is often a made-up word, so that no confusion with competitors or ordinary household items can arise. A weak mark is hardly recognized as such. The weaker a trademark is, the harder it is to take action against people who use the mark.

When you need to pick a name for your own Website, it may be worthwhile to pick something that can be registered as a trademark. This gives you extra protection against others who want to provide the same kind of site, and it makes it easier to distinguish your site from theirs.

Using someone else's trademark

As a trademark is intended for use in commerce, trademark infringement can typically only occur in commerce-related activities. The mere mention of a product in a book (such as "John drank a bottle of Coca-Cola") is not trademark infringement. However, such use can be seen as weakening the mark, because the mark is then often used as a label for a generic product, and not that specific brand. Thus, people who use "xeroxing" for photocopying or "Hand me a kleenex, I've spilled my coffee" may still get angry letters from Xerox or Kleenex, demanding that they stop using their name. So be careful when you use someone else's trademark when you don't have to.

People who review products or services do need to mention the name of that product, and this name is often trademarked. It is common practice to write the name followed by TM or to indicate this, but don't do this every time you use the name, as this makes the text very tiresome to read. Alternatively, you could end the review with a generic text like "A, B and C are registered trademarks of company X".

The same rules apply for using the logo of a product, which is often also a trademark for that product. However, in addition to trademark protection, this logo also has copyright protection when it is more than just a name in fancy letters. Using the logo may then be seen as a copyright violation.

Domain name grabbing and trademark disputes

Domain name grabbing

One of the most visible areas of trademark use on the Internet is in domain names. Many companies register a domain name for every trademark they own, so that users of the associated products can easily find more information on it. However, when that domain name is owned by someone else, the company may miss those visitors. In the past, several people have registered domain names for other people's trademarks, in the hopes that they could sell those to the owners once those realized the importance of the Internet. Needless to say, few trademark owners were pleased by this, and some took action by suing the domain name owners for trademark misuse.

If you need to pick a name for your Website domain, ensure that it is sufficiently different from all other sites which offer similar services. Otherwise, you will cause confusion amongst visitors and you may expose yourself to lawsuits and conflicts with the owners of those other sites.

Meta-tagging and other misuse

An interesting trick to get more visitors to your site, is to include the names of your competitors in a META keyword element. Search engines will then index your site and note that this name occurs on it. Users who then search on the word, will find your site and may go there in the hope it contains what they are searching for. Apart from the fact that many users will go away as soon as they realize they've been tricked, there is also the risk that the name is trademarked. In that case, the use in the META tag can be trademark infringement.

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