This article has been written by Sakshi Jain pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. This article has been edited by Dhruv Shah (Associate, Lawsikho) and Dipshi Swara (Senior Associate, Lawsikho). 

Introduction

Trademark issues in cyberspace have become a matter of concern because of the unfathomable quantity of data in cyberspace. In the ancient days, Romans and Greeks used to identify products by scribbling on them. With the advancement of civilizations, novel methods came for the unique identification of products. Trademark was a milestone in this development. Moreover, after the emergence of the internet, businesses found the virtual world to be their new market sphere. With the rampant increase in global trade and commerce, the inflow of counterfeit objects in the market has escalated. Hence, the role of intellectual property comes into play, by becoming a global and borderless entity. Traditionally, trademark law was applied to physical markets and it was given to traders so that they could sell their products under their genuine name and carry-on their business under that very trademark, preventing other people from exploiting the same. However, with the sudden boom in the virtual world, many new challenges have arisen in relation to trademark protection in  cyberspace. This article aims at making the readers aware of these challenges and the solutions as to how one can protect their trademark in cyberspace.

Trademark and its significance

With the growing complexities of trade and commerce in the world, the flow of counterfeit products in the market has become rampant. The importance of intellectual property is growing every day and its scope has extended across borders and has gained international recognition. If a bona fide buyer purchases a good or commodity believing it to be a product offered by a particular trader and later finds out that it was not up to the mark or the product does not belong to the presumed trader,this hampers the reputation of the trader. Therefore, a need to create a unique mark that symbolizes a particular trader as the source of the product becomes essential. It is important not only for the trader but also to protect the consumer from being fooled by counterfeit products.

In such a scenario, Trademark plays a significant role. A trademark can be defined as any mark, symbol or a word, emblem that represents an organization or any product. Intellectual property protection in relation to trade was recognized by the world trade organization (WHO) in the form of TRIPS agreement. The Trade Related Aspects of Intellectual Property Rights (TRIPS) agreement was created as a legal agreement between the member states of the WTO. The agreement came into effect on 1 January, 1995. This agreement is considered a landmark and a comprehensive agreement on Intellectual property rights. Article 15 of the Act deals with trademarks and lays down directory details for the protection of the same. India is a signatory to the TRIPS agreement.

Trademarks in India are governed by The Trademarks Act, 1999. Section 2(1) (zb) defines ‘trademark’ as a mark capable of being represented graphically and which is capable of distinguishing the good and service of one person from those of others and may include the shape of goods, their packaging and combination of colors.

Cyberspace and its significance

Cyberspace on the other hand, refers to the virtual space created by the connection between different computers. Thus, the concept of Cyberspace is intangible in nature. Cyberspace is not restricted to a particular geographic territory. It lacks any barrier of physicality and extends to the whole world, connecting anyone and everyone. It is a shared space where interactions and communications take place through the internet. The internet technology is revolutionizing the world and the trend of carrying out trade and commerce using the cyber platform has come into vogue. Many e-commerce websites are also developing in order to facilitate such kinds of trade and carry out successful transactions between the consumer and the traders. The use of online platforms has boosted the economies of different countries. There is no physical interaction between the parties of the trade. The online space becomes a preferred choice of the consumers as consumers are able to surf through the available without any restriction and time barrier, they are granted the freedom to compare prices of different products and satisfy themselves completely before making the payment for any product. The cyberspace medium has made the transaction and trading much simpler and easier.   

Trademark in cyberspace

With the world entering the online era, where each and every activity of our daily lives is influenced by the internet, it becomes essential to protect the intellectual property on the internet in cyberspace.

Traditionally the trademark law was applicable to protect those traders who had registered trademarks, by providing them an exclusive right to carry on trade under that mark and preventing any third parties from using the same. However, with the rise of the internet and the paradigm shift from the traditional trading process to the online platform. Many new challenges have taken birth in relation to protection of trademarks.

Domain name is one of the main areas where the conflict relating to the trademark in cyberspace arises. Domain name can simply mean the name used by a website. It is like an address which is used by the people to access that particular website.  The domain name is very important in the identification of computers done with the use of IP address which is present in the form of some codes. But due to the complex numeric coding of the IP address; easier alternatives that could be remembered by all, were developed. This alternative is a domain name. It can be a combination of words, symbols and numbers. For example: www.lawyerswork.com is an example of a domain name.

Challenges in protecting trademarks over web

Registration of domain names is very important to establish a formal marketable existence on the internet. There is as such no trademark review of the domain names as it is burdensome work for the registrar. Therefore, there arise disputes regarding the domain name vis-à-vis trademark under three circumstances:

1. Cybersquatting: It refers to the act of registering a domain name which is made for the purpose of carrying out trade and commerce. The domain name is the trade name of a particular company but is not registered by the company. Such a registration is made by a third party with a view to make profit by selling the domain name to the actual owner. Until the third party has the domain name, the owner is not able to register his trademark as a domain name. Thereby his right of registering becomes infringed. Domain name is the identification of a company. It performs the same functions as that of the trademark of a particular company. It is more than just an address to reach a particular website. Further if a person registers a domain name which is identical or similar to the trademark of a company to which he has no commercial connection, then an injunction against the person can be passed. 

For instance, in the case of Green Products Co. v/s Independence Corn By-Products Co., both the companies were competitors to each other in the market of corncob by-product. ICBP got the domain name (greenproducts.com) registered but did not post a website as yet. The court held that the intention of ICBP was to use its confusing domain name to lure potential customers to the site once it was created and wanted to benefit unjustly from the use of Green Product’s name. Court further said that consumers might not get confused after getting to the site but even after it, they may buy the product from ICBP’s site only. On these findings, the court found it to be an infringement.

2. Cyber Parasite: It refers to a situation where the gains and profits are made by the use of the actual domain name. The method would involve using a similar or wrongly spelled domain name which is similar to that of a famous trademark. Such techniques are used to pass off products by method of deception to the innocent consumers.

For instance, in the case of Rediff Communication Ltd. v/s Cybertooth and Anr., the defendant had registered a domain name similar to that of the plaintiff was carrying a business of similar nature. Court observed that the defendant had an intention to carry out his trade and business under the trademark or trade name of plaintiff, thereby there being an infringement of the plaintiff’s right.

3. Cyber twin: It refers to a situation where both of the parties to the case hold an authentic claim towards a particular domain name. Herein, both the parties have a legitimate claim to a domain name. The cases involving cyber twins are the most difficult to be resolved, because, the law of trademark and unfair competition may otherwise allow both parties to enjoy concurrent use of both. 

For instance, in the case of Data Concepts, Inc. v Digital Consulting Inc., both the entities had a legitimate claim for the domain name of (dci.com) as both of them had trademark rights for DCI. Data Concepts, however, got the trademark dci.com registered in 1993. It would seem that, in the cases where both have claims then the entity first to register would get it but The Sixth Circuit ruled that there still was the possibility of infringement. Since trademark infringement is a question of fact as well as question of law, the dispute must go to a full trial for an infringement determination. In this case, due to lack of evidence and the fact that Digital had no knowledge of prior existence of Data dismissed the matter as Data could not establish that dci.com was confusing the users between the two marks.

Apart from the above-mentioned challenges, there are also some other challenges posed in the cyberspace on the trademark of a company. Hypertext links is another area where a conflict regarding a trademark may arise in the cyberspace. It simply refers to transferring the user from one website location to another. These links are set between web pages. For example, on some web page; we see a hyperlink of ‘Gucci’ and upon clicking the link we are not taken to the official web-page of the brand but to some other web page which may sell similar product but not of the brand Gucci. Such hyperlinks result in the infringement of trademarks. Further, it is easy to control the hyperlink present in cyberspace. Therefore, a practical answer is yet to be devised in this aspect. 

Position in India

India is not new to the concept of infringement of trademarks in cyberspace. The Trademark Act, 1999 is comprehensive legislation that deals with infringement of trademarks. As of now, the Indian legal system does not have a full dedicated statute to deal with issues relating to domain name or cybersquatting, etc. But the scope of the Trademarks Act of India is very vast.  For instance, the case of Yahoo Inc v. Akash Arora and Anr., is a landmark judgment in India in relation to the protection of trademarks in cyberspace. In this case, the defendant had taken a domain name similar to that of the plaintiff. The court recognized the scope of trademarks over the domain name and granted the protection to the plaintiff under the Trademarks Act.

Remedies in case of infringement

There are many remedies that can be taken up in case of infringement of a trademark in cyberspace. The World Intellectual Property Organization (WIPO), created for the protection of intellectual property, has a forum made under it, where claims can be made at an international level. Further, many other legislations have been made to provide remedies. Moreover, Section 28 of the Trademarks Act provides the exclusive right to the owner of a trademark to use their trademark and prevent others from using it. The National Internet Exchange of India was founded in 2003 to facilitate the proper and enhanced internet services in the country. It also provides some protection for trademark infringement in cyberspace.

Conclusion

To sum it up, the development of internet services has changed the face of the world and has affected all aspects of society. The Domain names have become an important element in cyberspace and trademark-related crimes are on the rise. Therefore, it becomes very important to frame comprehensive legislation in this regard. Businesses allocate substantial funds towards establishing their presence on the internet. Consequently, they must also initiate measures to prevent abuse and theft of their Intellectual Property. For the same, it is crucial for businesses to get their trademark duly registered. You cannot stop every third person out there from infringing your trademark but registering your trademark makes sure that you get justice for any infringement on your trademark. Getting your trademark registered will aid in the litigation of the matter, and this is how you can protect your trademark in cyberspace.

References

1. http://docs.manupatra.in/newsline/articles/Upload/19A86CE4-2FBD-432B-B166-AFBA9087A834.pdf 
2. https://www.legalserviceindia.com/legal/article-3233-intellectual-property-issues-in-cyberspace.html
3. https://www.hg.org/legal-articles/india-intellectual-property-rights-in-cyber-space-and-the-need-for-protection-from-infringement-59599
4. https://www.ijser.org/researchpaper/copyright-and-trademark-in-cyberspace.pdf
5. https://www.bettinger.de/wp-content/uploads/2017/12/trademark-law-in-cyberspace.pdf 
6. https://scholarship.kentlaw.iit.edu/cgi/viewcontent.cgi?article=1166&context=ckjip 

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