IPR

1. Intellectual Property Rights
Presented by
Dr. B.Rajalingam
Assistant Professor
Department of Computer Science & Engineering
Priyadarshini College of Engineering & Technology, Nellore
Unit 5
New Developments of Trade Mark Law

2. Syllabus
• New Developments of Intellectual Property
– Trade Mark Law
– Copy Right Law
– Patent Law
– Trade Secrets Law
• Intellectual Property Audits
• International Overview on Intellectual Property
– Trade Mark Law
– Copy Right Law
– Patent Law
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3. The Internet
• Trademark owners throughout the world are struggling with new issues presented by
increased electronic communication, primarily that occurring through the Internet.
• The Internet derives from a network set up in the 1970s by the Department of
Defense to connect military and research sites that could continue to communicate
even in the event of nuclear attack.
• In the 1980s, the National Science Foundation expanded on the system, and its first
significant users were government agencies and universities.
• In the early 1990s, however, it became apparent that the system could provide a
global communication network, allowing people from all over the world to talk with
each other; send written messages (electronic mail or “e-mail”), pictures, and text to
each other; and establish websites to advertise their wares and provide information
to their customers.
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4. Cont…
 Thus, the Internet has become a channel of commerce with more than 1.6 billion
users worldwide.
 In the United States alone, retail commerce on the Internet exceeded $134 billion in
2009.
 To communicate on the Internet, businesses and individuals are assigned addresses
called domain names, for example, “ford.com.”
 To consumers, these domain names function much like a trademark in that they
identify a source of goods or services.
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5. Assignment of Domain Names
• A company’s presence on the Internet begins with its address or domain name.
• A domain name not only serves as a locator for a company but also may function as
a designation of origin and a symbol of goodwill — a trademark.
• There are two portions to a domain name: the generic top-level domain (gTLD),
which is the portion of the name to the right of a period (such as .gov or .com), and
the secondary level domain, which is the portion of the name to the left of a period
(such as “kraft” in “kraft.com”).
• Disputes frequently arise between owners of registered marks and owners of domain
names who use domain names similar or identical to the registered marks.
• While several parties might have identical trademarks because their products or
services are not confusingly similar (e.g., DOVE® for soap can coexist with
DOVE® for ice cream), it is not possible for two parties to have identical Web
addresses.
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6. Internet Corporation for Assigned Names and
Numbers (ICANN)
• To help resolve the problems in the domain name registration and use process, the
U.S. government created the Internet Corporation for Assigned Names and
Numbers (ICANN) in 1998 to coordinate naming policies.
• ICANN, a nonprofit corporation, has assumed responsibility for overseeing the
domain name system in the United States.
• ICANN is governed by an international board of directors elected in part by various
members of the Internet community.
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7. Protecting a Domain Name
• Over the past several years, one of the biggest issues facing domain name users has
been the infringement of their names.
• In many cases, people register well known marks as domain names to prey on
consumer confusion by misusing the domain name to divert customers from the
legitimate mark owner’s site.
• This practice is commonly called cybersquatting.
• The cybersquatter’s own site is often a pornography or gambling site that derives
advertising revenue based on the number of visits (called “hits”) the site receives.
• In other cases, the cybersquatters offer to ransom back the domain name to the true
owner for unreasonable amounts of money.
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8. Cont..
 The following three approaches because proving use in commerce by the
cybersquatter:
1. An action might be brought under the federal dilution statutes;
2. A civil suit can be instituted under the 1999 Anticybersquatting Consumer
Protection Act;
3. An administrative quasi-arbitration proceeding can be instituted through ICANN’s
dispute resolution process.
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9. Cybersquatters and the Dilution Doctrine
• If the domain name owner uses its site to promote or offer goods or services
confusingly similar to those offered by a trademark owner with prior rights, and the
domain name and mark are confusingly similar, the trademark owner can bring an
action for infringement under the Lanham Act just as it would for any act of
infringement.
• More difficult issues have arisen, however, when domain names have been
registered and are used merely for an e-mail address with no website associated with
them (making the name unavailable as a domain name for the rightful owner) or are
used in connection with goods or services that are unrelated to those offered by the
trademark owner.
• In such cases, the trademark owner cannot bring an action for infringement
inasmuch as the owner cannot show likelihood of confusion or commercial use.
• Enter the dilution doctrine.
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10. Cont..
• When the Federal Trademark Dilution Act (15 U.S.C. § 1125(c)) (now known as the
Trademark Dilution Revision Act) was being considered, Senator Patrick J. Leahy
(D. Vt.) expressed his hope that it would be useful in prohibiting the misuse of
famous marks as domain names on the Internet.
• Since the passage of the Act, many trademark owners have in fact relied on the Act
in disputes over domain names.
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11. Cybersquatters and the Anticybersquatting
Consumer Protection Act
• In 1999 Congress enacted the Anticybersquatting Consumer Protection Act (ACPA)
to bring additional uniformity to the problems associated with domain name
registration and cybersquatting.
• The Act (located at 15 U.S.C. § 1125(d)) makes it wrongful for a person to register,
traffic in, or use a domain name of another if the domain name is identical to or
confusingly similar to the trademark of another and the person has a bad faith intent
to profit from the mark.
• ACPA is the world’s first law on domain names.
• Note that there is no requirement under ACPA that a party have a registered mark.
• A separate section of the Lanham Act protects the personal names of living
individuals against bad faith registration of their names as domain names (15 U.S.C.
§ 8131)
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12. Resolving Disputes through the Uniform Domain
Name Dispute Resolution Policy
• In 1999, after assuming control of the domain name registration process, ICANN
adopted a Uniform Domain Name Dispute Resolution Policy (UDRP), an
international policy for resolving controversies relating to domain names.
• All ICANN-accredited registrars must follow UDRP, and ICANN has designated
four approved providers to oversee disputes.
• Of the four, the World Intellectual Property Organization (WIPO), headquartered in
Geneva, has emerged as the most popular forum for domain name disputes, although
the National Arbitration Forum in Minneapolis is increasingly popular, and it will
handle any disputes associated with the new.xxx domain name.
• The UDRP provides a quick and inexpensive alternative to bringing a formal
lawsuit under ACPA.
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13. Hyperlinking and the First Amendment
• Web page owners frequently provide symbols, called hyperlinks (or “links”), that
designate other Web pages that may be of interest to a user.
• Thus, a trademark owner’s mark may be displayed on thousands of different
websites, allowing users to “click” on the symbol and be transported to a different
location, either to a different page within that same website or to an entirely different
website on the Internet.
• Links are location pointers and are often shown in blue underscoring.
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14. Clandestine Trademark Misuse
• Metatags
• Key Word Advertising
• Phishing
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15. Metatags
• It is possible to embed or hide a trademark in a website such that consumers cannot
see it.
• A search engine, however, registers the presence of the hidden or clandestine
trademark and lures the viewer to another website, generally that of a competitor.
• The practice is usually accomplished by the use of metatags, which are special codes
whose function is to emphasize key words, making it easier for search engines to
locate the website.
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16. Key Word Advertising
• Perhaps the most recent issue relating to Internet trademark use relates to key word
advertising (sometimes called “keying”), an advertising practice in which a
preselected ad or banner ad is displayed when certain search terms or key words are
used.
• For example, if McDonald’s purchases the key word “hamburger” from Google, ads
and links
• to McDonald’s will appear when a searcher uses the term “hamburger” in a search
box. McDonald’s, however, may also purchase the word “Burger King” from
Google (even though it is another’s trademark), and searchers who enter the key
words “Burger King” would be directed to Burger King’s website but would also
view McDonald’s link and ads
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17. Phishing
 Another relatively new trademark issue raised by the Internet relates to phishing, the
act of using sophisticated lures to “fish” for sensitive financial information by e-
mails or websites.
 For example, you may receive a legitimate-looking e-mail from what purports to be
a bank, displaying an accurate reproduction of the bank’s logo or trademark,
notifying you that your account has been breached and asking you to verify your
account number.
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18. Thank You
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