This article has been written by Aniruddh Singh Raghuvanshi, pursuing a Diploma in Corporate Law & Practice: Transactions, Governance and Disputes from LawSikho and edited by Shashwat Kaushik.
It has been published by Rachit Garg.
Table of Contents
Introduction
In today’s digital age, the internet has become a thriving platform for businesses to advertise and promote their products and services. However, with the rise of online advertising, trademark infringement has become a significant concern for trademark owners. The Internet’s borderless nature poses jurisdictional challenges when addressing trademark infringement through website advertising. Trademarks are essential business assets, serving as distinctive symbols that establish brand identity and consumer trust. The unauthorised use of trademarks through online advertisements can cause significant harm to trademark owners, leading to confusion among consumers and dilution of the brand’s reputation. However, the internet’s borderless nature complicates the determination of jurisdiction, making it challenging for trademark owners to enforce their rights against infringers in different jurisdictions. This article explores the complexities surrounding jurisdictional issues in the context of trademark infringement and provides insights into potential solutions
What is trademark infringement
“The ideal trademark is pushed to its utmost limits in terms of abstraction and ambiguity yet is still readable. Trademarks are usually metaphors of one kind or another. And are, in a certain sense, thinking made visible.” ~ Saul Bass
As Saul Bass mentioned, a trademark in its basic sense means any symbol or mark that is unique so that it differentiates any product or service from its competitors in the market, and it becomes easy for the customer to identify the same. The whole and sole aim of registering a brand is to protect it from unauthorised use by any other party. A trademark is a sort of licenced innovation; it can be possessed by any business association, individual or any legitimate element. While an infringement literally means any violation, breach or unauthorised act. In layman’s language, an action or situation that interferes with the rights of the person and the freedom they are entitled to.
Subsequently, merging both terms, it can be inferred that trademark infringement is the unauthorised use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or a mistake about the source of the goods and/or services.
To register a trademark in India, one needs to file an application and submit the relevant fees to the Trademark Registry (TMR). TMR then reviews the submitted application, and the proprietors of the accepted application are then provided with the certification of Trademark registration.
Section 2 of the Trademarks Act of 1999 defines various terms used in relation to trademarks and related activities. It defines “mark” as a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, combination of colours, or any combination thereof.
According to Section 29 of the Act, a registered trademark is infringed when an unlicensed proprietor uses the aforementioned mark for business or commercial purposes. Section 29(4) of the Act also emphasises that the word ‘dilution’ provides the basis for trademark infringement.
Website advertisements and trademark infringement
Online advertisement or web advertising, is nothing but an Internet-based advertisement, where it means advertisement in any form; it could include email campaigns, social media activity, website, blog, etc. But if website advertising is discussed, it may pertain to PPC and display advertising. This type of advertising is more engaging than its contemporary forms. In PPC, or pay-per-click, the company pays a search engine (Google or Bing) per click on the advertisement or link to its website, which appears on any search by any user.
Make-My-Trip vs Booking.com
In this case, it was said that whenever any user searched for ‘MakeMyTrip’ on Google, the first link to be shown was www.booking.com.
Upon review, it appeared that the latter had been using MakeMyTrip’s trademark for its own Google Ad promotions. Owing to MakeMyTrip’s prominent existence in the Indian travel-booking space, Booking.com, a Dutch online travel agency, tried to gain quick and easy prominence in the country’s travel ecosystem.
As a result, a lawsuit was filed under which Booking.com is now restrained from using the mark ‘MakeMyTrip’ altogether as a keyword in the Google Ads programme until a further hearing.
Jurisdictional issues
Jurisdictional issues arise when a trademark holder wants to take legal action against a website owner for trademark infringement. In most cases, the website owner is located in a different country than the trademark holder. This makes it difficult to determine which country’s laws apply to the case.
In order to determine jurisdiction, courts will look at several factors, including where the website is hosted, where the website owner is located, and where the trademark holder is located. The courts will also look at where the majority of the website’s users are located.
One of the biggest challenges in these cases is enforcing judgements across borders. If a court in one country orders a website owner in another country to pay damages, it can be difficult to enforce that judgement.
Overall, jurisdictional issues in cases of website advertising and trademark infringement can be complex and difficult to navigate. It’s important for trademark holders to work with experienced attorneys who can help them understand their legal options and navigate the legal system.
The jurisdictional challenges in addressing trademark infringement through website advertising are complex due to the unique nature of the Internet. Some challenges include:
- Lack of international harmonisation: The lack of uniform international laws governing jurisdiction in website advertising trademark infringement cases makes it difficult to establish clear rules for jurisdictional determinations. Harmonisation efforts across jurisdictions could help streamline the process.
- Difficulty in enforcing judgments: Even if a court asserts jurisdiction over a trademark infringement case, enforcing judgements against infringing parties located in foreign jurisdictions can be a daunting task. Cooperation and mutual recognition agreements between countries can facilitate the enforcement process.
- Personal jurisdiction: One of the key jurisdictional challenges in trademark infringement cases involving website advertisements is establishing personal jurisdiction over the defendant. Traditional notions of personal jurisdiction, which were developed long before the internet era, are often ill-suited to handle online disputes. Courts must consider whether the defendant’s online activities, such as placing ads on websites accessible in a particular jurisdiction, are sufficient to establish jurisdiction.
- Specific vs. general jurisdiction: Courts may distinguish between specific and general jurisdiction. Specific jurisdiction relates to cases where the defendant has purposefully directed their activities towards a particular jurisdiction, such as targeting customers in that area through online advertisements. General jurisdiction, on the other hand, typically requires a higher threshold, such as the defendant having continuous and systematic contacts with the jurisdiction.
- Choice of law: Determining which jurisdiction’s laws apply in cases involving website advertisements can be challenging. Courts must consider not only where the infringement occurred but also which jurisdiction has the most significant interest in the case. This may involve analysing where the trademark is registered, where the defendant is based, and where the majority of the harm occurred.
Ht Media Limited & Anr. vs. Brainlink International, Inc. & Anr. (2021)
In the above mentioned case, petitioners were a leading national news agency, and they found that an entity in New York is infringing upon its trademark rights by using the domain name www.hindustan.com, which is indistinguishable from Hindustan Times, which was the plaintiff’s registered trademark in India.
The Court, while exercising its extra-territorial jurisdiction over the defendant based out of New York, granted an anti-suit injunction against its use of the domain name. The honourable Delhi High Court pointed out:
The filing of the instant suit by the defendant in New York is vexatious and oppressive, as the plaintiff has no registered trademark rights in the USA.
The act of the defendant is an attempt on his part to validate the infringement of the plaintiff’s trademark. The trademarks of the plaintiffs are registered only in India and the goodwill of the plaintiffs extends across international borders.
On the basis of the aforementioned observations, it was held that the plaintiff prima facie made a case and hence was granted an anti-suit injunction.
Recent developments
Courts have been grappling with these jurisdictional challenges and have started to adapt to the digital age. Here are a few noteworthy developments:
- Zippo sliding scale: Some courts have adopted the Zippo sliding scale, which categorises website interactions into three levels:
- Websites with no interactivity,
- websites with limited interactivity, and
- websites with substantial interactivity.
Courts use this scale to determine whether personal jurisdiction is appropriate based on the level of interaction between the website and users in the jurisdiction.
- Streamlined procedures: Some jurisdictions have introduced streamlined procedures for handling trademark infringement cases involving online activities. These procedures aim to provide efficient resolutions while ensuring fairness to all parties involved.
Suggestions
The best suggestion for dealing with jurisdictional issues in website advertising and trademark infringement is to include a clause in the website’s terms and conditions that specifies the jurisdiction that will handle any disputes related to trademark infringement. This can help to avoid confusion and ensure that all parties are aware of the governing laws and regulations. Additionally, it’s important to work with a legal expert who can provide guidance on how to navigate these complex issues and ensure that your business is in compliance with all applicable laws and regulations.
Some more potential solutions to address these challenges could be:
- Enhanced cooperation between jurisdictions: Increased collaboration can help establish consistent principles for determining jurisdiction in website advertising trademark infringement cases. International agreements and conventions could promote uniformity and provide clearer guidelines for courts worldwide.
- Strengthening enforcement mechanisms: Establishing effective mechanisms for cross-border enforcement of judgements is crucial. Strengthening international cooperation in intellectual property enforcement and encouraging the adoption of mutual recognition agreements can facilitate the enforcement of judgements across jurisdictions.
- Developing specialised forums: Establishing specialised forums or courts to handle cross-border intellectual property disputes could provide expertise in dealing with jurisdictional issues arising from website advertising trademark infringement cases. These forums could be equipped to understand the unique complexities of online advertising and ensure fair and efficient resolution of disputes
Conclusion
Jurisdictional issues in trademark infringement cases related to website advertising present significant challenges due to the global reach of the Internet. The borderless nature of the digital landscape requires innovative approaches to resolve these challenges effectively. By fostering international cooperation Additionally, the nature of website advertisements often involves complex networks and multiple intermediaries, such as ad networks and hosting providers. Identifying the responsible party and establishing jurisdiction can be a convoluted process, further complicating legal proceedings.
Furthermore, issues of jurisdictional enforcement arise when attempting to enforce judgements or seek remedies across borders. Even if a trademark owner succeeds in obtaining a favourable judgement, enforcing it in another jurisdiction may be challenging due to differences in legal systems and a lack of international cooperation. Addressing jurisdictional issues in website advertising trademark infringement cases requires a multifaceted approach. Collaborative efforts, technological innovations, educational initiatives, and international cooperation are key to creating a more harmonious and effective framework for resolving disputes in the digital era. By navigating the complexities of jurisdiction, stakeholders can protect their trademark rights and foster a fair and equitable online marketplace.
References
- https://www.tutorialspoint.com/trademark-infringement-meaning-and-types
- Trademarks Act, 1999, § 2, Acts of Parliament, 1999 (India)
- Trademarks Act 1999, § 29, Acts of Parliament, 1999 (India)
- https://www.thehindubusinessline.com/business-laws/google-ads-and-trademark-infringement/article65488108.e
- https://blog.ipleaders.in/jurisdictional-issue-trade-marks/
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