The burden of proof online
The most important function of a trademark is to distinguish those goods and services that belong to an entity. The mark can fulfil its function only through use.
When global trademark laws are examined, the most common international thread is the understanding around the use of a particular trademark. Even if registration provides at least 10 years’ protection and exclusive right to use the mark, the registered trademark has to be put to ‘genuine use’. However, even if the ‘use’ of mark is a common subject, the understanding of ‘genuine use’ may differ by country.
Considering the wide and increasing use of the Internet, ‘use of a mark on the Internet’ has become a significant component of trademark law. One of the most important questions emerging from this issue is: “Can use on the Internet be sufficient to prove genuine use of a mark?”. In this article we intend to address this question in light of legal practices in a number of countries, including Turkey.
In 2001, the World Intellectual Property Organization (WIPO) and the Assembly of the Paris Convention adopted a Joint Recommendation concerning Provisions on the Protection of Marks and Other Industrial Property Rights in Signs on the Internet. According to Article 2 of the recommendation, “use of a sign on the Internet shall constitute use in a member state for the purposes of these provisions, only if the use has a commercial effect in that member state”.
The provisions of this recommendation aim to provide a clear legal framework (including factors for determining commercial effect in a member state) for trademark owners who wish to use their marks on the Internet and to participate in the development of electronic commerce.
These factors, which are guidelines to assist the competent authority to determine whether the use of a sign has produced a commercial effect in a member state, are not pre-conditions for reaching that determination. Rather, the determination in each case will depend upon the particular circumstances of that case.
Proof of use
Based on this recommendation, use of marks on the Internet would probably be sufficient to prove genuine use and would be determined in the same manner as other advertising (such as printed material). Furthermore, considering the factors mentioned in the recommendation, there are two main conditions raised over court decisions; ie, association of the mark with particular goods or services and association of the mark with a particular country or territory.
“USE IN COMMERCE IS ONE OF THE MOST IMPORTANT PARTS OF THE TRADEMARK REGISTRATION SYSTEM IN THE US AND LACK OF USE IS A PRIMA FACIE INDICATOR OF ABANDONMENT.”
First, a mark should be associated with particular goods or services on a website and the consumer should clearly understand the goods or services associated with this mark. Use only as a domain name will not be sufficient to meet the prerequisite requirements of genuine use of mark. However, use of a mark as only a domain name may be sufficient in the service sector, depending on the characteristic of the services, such as “services of bringing together a variety of goods enabling consumers to conveniently view and purchase those goods” in Class 35 of the Nice Classification, as the domain name would be associated with that service (eg, Amazon, see below).
Second, a mark should be associated with a particular country or territory. Appearance on a website accessible from any country may not be sufficient for this association. If a mark is used on a website, the consumer should clearly understand that the goods or services are offered to the consumer in that particular country or territory, even if the provider is based abroad. In order to determine this association there are some factors to be considered. For example,
