names and cybermarks

This page looks at questions about trademarks, cybermarks and domain names.

It covers -

• introduction
• trademarks
• marks in space

Comments on copyright and trade mark protection for book, film and other titles appear in the final pages of this guide.

     introduction

A trademark is something that is used to identify and distinguish goods, whether or not unique, from those manufactured or sold by others. A service mark is similar but distinguishes services rather than tangible products. The mark can be a word, a symbol, a design or some combination of such elements. In some countries it could also be a sound, colour or even texture.

Trademark law exists partly to protect consumers, providing an indication of quality. That indication has a value for the trademark owner, embodying a goodwill that can be monetised and that is often significantly more valuable than manufacturing facilities or other tangible assets. It allows the owner of the mark to build/maintain a brand - evident in Nike's swoosh, the Coca-Cola ribbon, the brunette on Redhead matches, the dog on the EMI label or the big budgie on Rosella soup cans.

The legislation - specific enactments and registration schemes within individual countries, harmonised through international agreements - is situated at the boundary of industrial property law closest to trade practices law, concerned with the regulation of misleading behaviour among competitors in the marketplace.

Marks have been used by businesses and other entities (eg churches and universities) for many centuries. Contenders for the oldest continuously used marks include Lowenbrau (in use since 1383), Stella Artois (1366), Wielicka salt (1241?) Weihenstephaner beer (1040?) and Weltenburger Kloster Barock Dunkel beer (1050?). The 1266 'Bakers Marking Law' is claimed as the earliest English enactment on marks and the earliest UK litigation over a mark dates from 1452.

Trademark law as such emerged in the 1870s, with the first modern UK law in effect from 1862, first Japanese law in 1884 and the first Australian national trademark law from 1905.

     trademarks

This site features a more detailed profile with background about the nature and history of trademarks, searching trademark databases and other issues -

• overview - history, rationale, registration regimes, Australian and international law
• history - the evolution of marks and trademark law
• global frameworks - Madrid and other agreements
• Australia - a snapshot of the Australian regime
• studies - major writing about trademarks and trademark protection
• issues - legislation, naming patterns, valuation and other e-commerce issues
• politics - marks and logos as a focus of contention about culture and globalisation
• registration - registering and protecting marks
• searches - tools for identifying whether a mark is protected in Australia and overseas
• logos - a discussion of logos as an area of trademark protection
• packaging - protection of colours and shapes as trademarks
• sounds - the emergence of sounds, smells and even colours as trademarks
• certification - geographical indications and other certification marks
• cases - leading Australian disputes regarding trademarks
• landmarks - historical background to the development of trademarks as a business practice and regulatory issue

There is also a multi-page note on appellations and other geographical indications.

     names in space

Intellectual property aspects of domain names - in particular domains that are the same as those of trademarks, corporate names and celebrities - have been a major point of contention across the globe.

That reflects national variations in trademark and other law (eg rights of personality or celebrity): while international treaties such as the Paris Convention seek to harmonise the legislation of individual states there are differences.

It also reflects disagreement about mechanisms for preventing or resolving perceived infringements of rights, such as the Uniform Dispute Resolution Process (UDRP) established by ICANN for gTLDs and the US AntiCybersquatting Protection Act (ACPA), discussed in detail here. Those mechanisms have been assailed as contrary to "spirit of the web" and overly biased towards the interests of major corporations.  

We'll be providing more information about domain naming and cybersquatting in the near future. In the interim the following articles provide different perspectives:

Michael Blakeney's 1999 Murdoch E-Law Journal article on Interfacing Trade Marks & Domain Names is a concise analysis by a leading Australian thinker.

Marketing Your Website: Legal Issues Relating to the Allocation of Internet Domain Names, a 1998 article by Brian Fitzgerald, Leif Gamertsfelder and Tonje Gulliksen in the Uni of NSW Law Journal, is a brief introduction from down under.

Dan Burk's 1995 paper Trademarks Along the Infobahn: A First Look at the Emerging Law of Cybermarks, available in the Richmond Journal of Law & Technology, has become a classic. David Loundy's 1997 paper A Primer on Trademark Law & Internet Addresses is also good value, albeit from a US perspective and predating the UDRP. 

Kenneth Dueker's Trademark Law Lost in Cyberspace: Trademark Protection for Internet Addresses paper in the Harvard Journal of Law & Technology is less incisive but offers facts and figures. 14% of the 'Fortune 500', for example, found that their preferred domain name had been registered by another entity - something that's driven defensive registration in new gTLDs and ccTLDs. For perspective from the Max Planck Institute see Torsten Bettinger's 1997 Trademark Law in Cyberspace: The Battle for Domain Names paper and Annette Kur's 1998 The Domain Name Versus Trade Mark Dilemma paper.

Webvertising: Unfair Competition & Trademarks on the Internet (London: Kluwer 1999) edited by Mathias Stecher, is a compilation of national reports from 15 countries examining unfair competition, trademark law and domain names.

Sally Abel's Trademark Issues in Cyberspace: The Brave New Frontier paper in the Michigan Telecommunications & Technology Law Review updates discussion in the US immediately prior to the contentious Anti-Cybersquatting Protection Act (ACPA), intially referred to as the Trademark Cyberpiracy Prevention Act. 

The constitutionality and general effectiveness of that Act - increasingly criticised as badly drafted and potentially allowing profiteers with deep pockets to ride roughshod over legitimate owners of trademarked names - is being contested in litigation involving Playboy, Yahoo!, the New York Yankees and others.

The OECD's 2002 paper (PDF) on Cybersquatting: The OECD's Experience & the problems it illustrates with Registrar practices and the WHOIS system counters some of the more problematical claims in Milton Mueller's passionate but - for us - often very unpersuasive lament Ruling the Root (Cambridge: MIT Press 2002).

In decrying ICANN's closeness to government and intellectual property interests Mueller charged that

copyright interests now view expanded WHOIS functionality as a way to identify and serve process upon the owners of allegedly infringing Web sites ... 'technical coordination' of the domain name system is already being leveraged to police the content of Web sites as well as their domain names. Moreover, public law enforcement agencies, notably the US Federal Bureau of Investigation, have become deeply interested in the use of WHOIS to supplement their law enforcement activities. Ultimately, the intent seems to be to make a domain name the cyberspace equivalent of a driver's license. Only, unlike the driver's licenses database, this one would be publicly accessible to anyone and everyone to rummage through as they pleased.

For a detailed, although dry, discussion of the more general 1995 Australian Trademarks Act see Trade Mark Law in Australia (Sydney: Butterworths 2000) by Brian Elkington, Michael Hall & David Kell.

Tom Blackett's Trademarks (Basingstoke: Macmillan 1998) offers a crisp introduction to trademark management and other issues.




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