Rachael Koelmeyer, Senior Associate at Ellis Terry, discusses what a trade mark holder could do if they believe someone is infringing their trade mark rights on the internet. She covers factors including: What do I need for fair trading breaches and/or passing off? And, what if I have rights in New Zealand, but the company using my brand is based somewhere else?
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As commerce moves away from traditional physical stores and onto the internet, it becomes increasingly difficult to know when the actions of another trader on the world wide web are an actionable breach of your trade mark rights.
While the factors involved in this assessment are best worked through with the guidance of an IP professional, we note below some of the key points to consider:
How do I know if the use infringes my trade mark registration?
You need to think about what is actually covered by the trade mark registration:
- Is the trade mark the same?
- Are the goods and services the same?
- Are there obvious sales in the country in which the trade mark is registered?
In some cases, it is quite clear that the trade mark is in use in a way which directly conflicts with your registered trade mark rights and this will probably be your main avenue for attack.
But what if the use does not look like it falls within the registration coverage?
Fear not, just because the case for trade mark infringement may not be strong does not mean you do not have any grounds for redress.
You may still be able to establish a case under fair trading legislation and/or for the tort of passing off.
What do I need for fair trading breaches and/or passing off?
The rule of thumb for a fair trading breach or passing off is that you have a reputation in a brand which is being adversely and unfairly affected by the activity of another trader. The use must be in the course of commerce.
What about if I have rights in New Zealand, but the company using my brand is based somewhere else?
It is important to look closely at the use and identify each country where you could say the brand is being used to see if you can choose a country where you have best rights.
If a website offers the option to purchase products you should look at the country where the product is packaged and offered for sale. You should also think about whether product can be shipped to New Zealand direct from the seller. Drilling down into the supply chain may help you choose the best jurisdiction in which to take action.
The Private International Law (Choice of Law in Tort) Act 2017 summarises many years of case law on the topic of choosing a jurisdiction for tortious action and confirms that the general rule is that the country in which the tort is committed is the country whose laws will apply.
For the purposes of passing off, if part of the act is in one country (for example, order received and shipping) and the rest of the act is in another country (goods delivered and released to market) the tort can be pursued in the country in which “the most significant element … of those events occurred”.
This Act confirms you no longer need to be eligible to have an action in both countries involved in order to pursue your rights in one country.
Do I have to send a formal letter?
Laws are constantly being developed to place obligations on internet-based sales platforms to ensure the rights of trade mark owners are recognised and respected.
In many cases international sites such as Ebay, YouTube and Alibaba have IP protection clauses which help trade mark owners control potentially infringing use by dealing directly with them.
In less straightforward cases, it is likely formal cease and desist correspondence will be necessary.
In all cases, your best first step is to review your options with your legal advisor as early as possible.
Rachael Koelmeyer specialises in Branding and trade marks. She began her career with a top tier Australasian intellectual property firm and has over 15 years’ experience in the intellectual property profession. Rachael has worked with a number of large international and national companies in the building, wine and FMCG areas to put in place strategies to ensure establishment of a solid base of intellectual property rights and reinforcement of those rights against third parties. Rachael has substantial experience in international trade mark clearance searching and advice, international trade mark filing and prosecution and in contentious trade mark matters in New Zealand and Australia. Rachael has also worked with companies to prepare and review IP aspects of licence and permitted user agreements for development and commercialisation of products and businesses internationally. Her areas of expertise include: Brand Clearance and Protection, Branding Strategies and Architecture, Portfolio Management, Brand Enforcement including Trade Mark Infringement, Fair Trading Act and Passing Off Issues, IP Licence and Permitted User Agreements, and IP Aspects of Terms and Conditions, Comparative Advertising. Contact Rachael at rachael.koelmeyer@ellisterry.com or connect via LinkedIn
You can also connect with Ellis Terry via LinkedIn
