Online trademark infringement and the liability of intermediaries
ONLINE TRADEMARKINFRINGEMENT AND THELIABILITY OFINTERMEDIARIESISHAN GUPTA (11IP60027)UNDER THE GUIDANCE OF : PROF. DR. T K BANDYOPADHYAY
Background The sale of counterfeit goods over the Internet amounts to more than $30billion worldwide. Trade mark is an Important Intellectual property which represents theBrand identity. Globalisation through Internet has caused lot of anomalies.
Objective To study the standards in different jurisdictions with respect to Onlinetrademark infringement and to weight the pros and cons in comparisonwith the laws in India.
Introduction Trade mark. Infringement: Mark identical or deceptively similar. Online Trademark infringement Who is a Intermediary? Search engines, social media sites, online auctions & retail sites. Problem.
Contd. The first and foremost issue: Jurisdiction. Article 8 of Paris Convention. The next problem: The infringer cannot be traced.
Secondary Liability. The actual infringers cannot be traced so the Courts have started holding theIntermediaries liable. Secondary Liability: ContributoryVicarious US: The Lanham Act, 1946 : silent of Secondary liability - Courts have laid downthe standard. Inwood Labs., Inc. v. Ives Labs., Inc., 1982: Two point test. Hard Rock Cafe Licensing Corp. v. Concession Svcs. Inc., 1992: Wilfully blind.
Contd. Fonovisa Inc. v. Cherry Auction, Inc.,: 1996: Wilfully blind. Gucci Am., Inc. v. Hall & Assocs. and MindSpring Enter., 2001: Liability of ISP. The current position in US: Tiffany (NJ) Inc. v. eBay Inc.,2010: Inwood test. EU: Liability of non direct infringers- not defined in EU Trade Marks Directive orThe EU Community Trade Mark Regulation - it is matter of domestic law.
Contd. Directive 2000/31/EC : E-Commerce Directive. A service provider is not liable if: Has no knowledge of illegal activity. Removes such information upon acquiring knowledge. Considering the German case, Internet-Versteigerung I–III Plaintiff :Rolex v. ricardo (Internet Auction Decisions I–III): Same test as that of Tiffany v. eBay(Inwood). Lack of intent: eBay not liable.
Contd INDIA: Consim Info Pvt Ltd v Google India Pvt Ltd., Madras HC casediscussing the contributory liability of intermediary. Plaintiff had registered trademarks of “Bharat Matrimony”, “TeluguMatrimony”, etc. ;The defendants (Jeevan Sathi, et al.) had bought keywords ofexactly the same or similar words. So, the plaintiff brought an action ofTrademark infringement through keywords. Action was brought against Google since it provided the ad words. The case was decided in Google’s favour.
Pros & ConsThe pros and cons of making and Intermediary liable. Difficulty in evaluating the Ownership. Specialists required for identifying counterfeit products. Time consuming and expensive. eBay has a VeRO program (Verified Registered Owner). Sites derive profit. They cause damage to actual Brand owner, by providing a plat form for infringes.
Conclusion Conflict of National Laws creates problems for the Global intermediaries. There are Acts evolving with relation to dealing these issues but moreinviolable provisions should be introduced. Need for international standards in this perspective. Balance between the Owners and Intermediaries is should be maintained.