* Your assessment is very important for improving the workof artificial intelligence, which forms the content of this project
Download A team effort – avoiding trademark troubles in advertising campaigns
Product placement wikipedia , lookup
Bayesian inference in marketing wikipedia , lookup
Affiliate marketing wikipedia , lookup
Television advertisement wikipedia , lookup
Marketing communications wikipedia , lookup
Food marketing wikipedia , lookup
Target audience wikipedia , lookup
Multi-level marketing wikipedia , lookup
Product planning wikipedia , lookup
Marketing plan wikipedia , lookup
Advertising management wikipedia , lookup
Guerrilla marketing wikipedia , lookup
Digital marketing wikipedia , lookup
Target market wikipedia , lookup
Advertising wikipedia , lookup
Targeted advertising wikipedia , lookup
Neuromarketing wikipedia , lookup
Viral marketing wikipedia , lookup
Marketing strategy wikipedia , lookup
Multicultural marketing wikipedia , lookup
Direct marketing wikipedia , lookup
Integrated marketing communications wikipedia , lookup
Youth marketing wikipedia , lookup
Street marketing wikipedia , lookup
Marketing mix modeling wikipedia , lookup
Marketing channel wikipedia , lookup
Global marketing wikipedia , lookup
Green marketing wikipedia , lookup
Sensory branding wikipedia , lookup
Advertising campaign wikipedia , lookup
Roundtable By Trevor Little Feature By Xxx and Xxx A team effort – avoiding Xxx trademark troubles in advertising campaigns Practitioners from China, Europe and the United States discuss the trademark issues involved in advertising, and how counsel can ensure that Xxx.their voice is heard Whether in the physical world or online, in trade press or the mass media, advertising is central to any marketing strategy; but it also presents a diverse range of challenges for trademark counsel. In this dedicated roundtable, experts from four jurisdictions – Rachel Tan and Ying Yihong from Rouse WTR Mette Bender and Henriette Xxx. in China; Vængesgaard Rasch from Awapatent in Denmark; Angela Boman and Ann-Charlotte Järvinen from Sweden’s Awapatent; and Danny Awdeh and Mark Sommers from Finnegan, Henderson, Farabow, Garrett & Dunner in the United States – outline the issues that arise when advertising and trademark rights intersect. When developing an advertising campaign, at what point in the process should marketing people consult with trademark experts and how can counsel ensure that their voices are heard? Danny Awdeh: Trademark counsel should be consulted early so that potentially infringing elements can be identified and addressed before the campaign progresses further or is released to the public. Among other things, counsel should identify marks, designs, logos, taglines and other elements that serve or could serve as source identifiers, and that should therefore be cleared for use and registration before they are adopted. Consulting counsel early on is particularly important, because to an untrained eye, some of these elements may not immediately come to mind as trademarks requiring clearance. Counsel’s early involvement is also important because if a particular ad concept requires extensive clearing, this may affect the timing of the campaign’s launch and the overall cost 102 World Trademark Review June/July 2013 of the campaign. Also, it is far better to identify and address potential risks before a campaign launches and potentially exposes a company to infringement lawsuits and damaging or embarrassing press. Counsel can ensure that their opinions are known during these early stages by keeping an open dialogue with the creative team developing the campaign, informing them of the potential risks and striking a balance between the team’s creative objectives and any legal concerns. Mette Bender: Ultimately, if marketing do not consult trademark experts in the early stages of a campaign, they risk working with marks which, for instance, are descriptive and cannot be registered, and spending money without obtaining the intended mark. An even worse situation is if the marketed trademark infringes another party’s mark. If so, the company may be met by a claim for financial compensation on top of all the money already spent to no avail on the project, and its own goodwill may be damaged. A constructive dialogue must therefore be established in order to ensure that the marketing people consult the trademark experts, who in turn must be visible and available, and understand the intention behind the campaign. In our view, a crucial aspect of avoiding conflicts is establishing a close relationship between the legal advisers and the marketing division. The closer the contact and the more natural it feels for the marketing division to talk to legal advisers, the easier it becomes to avoid potentially expensive court cases. Taken one step further, the ideal situation would also involve a close relationship between the legal advisers and the local legal agents, who are often indispensable when it comes to launching marketing campaigns in foreign jurisdictions. Angela Boman: That said, it is a wellknown dilemma for both external and in-house trademark counsel to make sure that their voices are heard early enough in the process. Too often, short-sighted, sub-optimal decisions are taken with the own department’s budget in mind, which can be fatal after the launch of a campaign. Companies that wish to minimise the risk and optimise their chances to protect branding elements in their advertising need to ensure that the marketing people and trademark experts consult with each other very early in the creative process, and well before decisions to go ahead with investments in a specific idea are taken – preferably at a stage when alternative ideas are assessed. For companies that apply an established project process in which the marketing and trademark/legal people work closely together, the risks of significant costs and bad will due to infringement or unlawful marketing or inability to obtain registration can be minimised. In such cases, clearance of important legal trademark and marketing issues can be performed at an early stage, which makes time for creative discussions and solutions and, when needed, for measures in order to avoid legal implications. The trademark experts’ greatest challenge is to make sure that they contribute by presenting possibilities and positive alternatives where risks are identified, and do not ‘kill inspiration’. Rachel Tan: Marketing teams also need to know that China operates a ‘first-to-file’ trademark regime. Further, in the past, seemingly descriptive words were registered due to less stringent examination standards. If trademark counsel are consulted only at the later stages, practically speaking, it is likely to be far costlier to change the www.WorldTrademarkReview.com Roundtable Advertising law Feature: Xxx trademark if any legal risk arising from the content is identified – especially if the mark may constitute infringement. To assist marketing, it is advisable to provide training or a handbook with simple rules, so that the marketing people will take the relevant legal issues into account and make the necessary inquiries when developing new advertising campaigns. In this regard, we recommend incorporating a standard clearance request into the initial stages of the marketing workflow. This can make it easier for marketing people to receive timely feedback on whether their creative content needs to be cleared. Which administrative bodies are authorised to regulate advertising in your jurisdiction? Ying Yihong: In China, the Administration of Industry and Commerce (AIC) regulates advertising, and it also handles administrative trademark enforcement. The AIC has the following powers, with punishments applying to both advertising agencies and their clients: • stopping the advertisement; • ordering public corrections; • circulating a notice of criticism; • confiscating illegal gains; • issuing fines; • suspending business operations; and •revoking the business licence or advertising licence. AB: The Swedish Consumer Agency and the Swedish Consumer Ombudsman are the supervisory authorities for a number of consumer-related laws, including the Marketing Act. According to the Marketing Act, a trader whose marketing is found to be unfair may be prohibited from continuing with that or other similar activities. Such prohibitions shall be subject to a conditional financial penalty, unless particular circumstances render this unnecessary. Proceedings in respect of a prohibition or order may be instituted with the Consumer Ombudsman by a trader affected by the marketing in question, or by a group of consumers, traders or employees. The Consumer Ombudsman can take legal action against traders in regard of, among other things, misleading advertising in cases of minor importance by issuing orders and injunctions, which shall be subject to a conditional financial penalty. In order for the order or injunction to be valid, the trader must accept it either immediately or within a certain period. If www.WorldTrademarkReview.com foodstuffs, while the National Agency for Pharmaceuticals ensures that rights holders comply with the legislation on pharmaceuticals. Danny M Awdeh Partner, Finnegan, Henderson, Farabow, Garrett & Dunner [email protected] Danny Awdeh is an experienced trademark litigator representing clients in federal district and appellate courts around the country and before the Trademark Trial and Appeal Board of the US Patent and Trademark Office. Mr Awdeh counsels a diverse client base, ranging from large international companies to start-ups in industries including hospitality, clothing, sports, finance, healthcare, electronics and industrial products. In addition to litigation, Mr Awdeh advises clients on the selection, adoption, maintenance and enforcement of their trademarks in the United States and around the world. the order is accepted, it applies as a final, non-appealable judgment. If the trader violates the official action, the ombudsman can sue the company before a district court. In cases where the legal situation is unclear, the ombudsman can bring the case before the Market Court instead of issuing an official action. In respect of certain intentional or negligent breaches of the Marketing Act, a trader may be ordered to pay a market disruption charge, which is paid to the Swedish state. Henriette Vængesgaard Rasch: Denmark also has a Consumer Ombudsman, which ensures that companies act in accordance with the principles of fair marketing practices. If they do not, it may censure the company and order it to act differently or take a decision on this. It can issue fines and has the power to take infringers to court. Elsewhere, the National Agency for Foodstuffs ensures that rights holders comply with the legislation on DA: The primary administrative bodies are the Federal Trade Commission (FTC) and the National Advertising Division (NAD). The FTC is a government agency that regulates and oversees advertising in the United States. It has the power to investigate and take legal action against companies that engage in false or deceptive advertising. By contrast, the NAD of the Council for Better Business Bureaux is a self-regulating advertising body and offers a resolution process that can be a faster, more cost-effective alternative to litigation. NAD decisions may require competitors to modify or discontinue challenged advertisements, and/or to demonstrate that certain ad claims are substantiated by sufficient evidence. Are there controls in relation to the advertisement of particular types of goods? AB: In Sweden, the Tobacco Act regulates, among other things, how tobacco can be marketed towards consumers, trade and sale restrictions in respect of tobacco, the use of tobacco trademarks in relation to other types of goods or services and sponsorship. The Consumer Ombudsman specifically supervises the marketing of tobacco and takes action against breaches of the Marketing Act. Meanwhile, the Alcohol Act regulates, among other things, how alcoholic beverages can be marketed. Medical claims cannot be made about food or dietetic substances – any products which are marketed using medical claims are classified as pharmaceuticals or herbal remedies, which must be approved by the Swedish Medical Products Agency before sale. HVR: Likewise, in Denmark, the bodies mentioned previously ensure that rights holders act in accordance with the legislation and take appropriate action where they do not. They may, for example, impose a ban on a marketing campaign or issue a ruling. Mark Sommers: In the United States, there are both federal and state-specific regulations for consumer products such as foods, drugs, cosmetics and medicine. For example, federal regulations prohibit the promotion of tobacco products through the sponsorship of sporting or entertainment June/July 2013 World Trademark Review 103 Co-published Feature: Xxx editorial events and restrict the advertisement of such products to young adults. For alcohol products, industry guidelines provide that advertisements should be placed in broadcast, cable, radio, print and internet/ digital communications only where at least 71.6% of the audience is reasonably expected to be of legal purchasing age. Prescription drug advertisements are also heavily regulated. For example, television advertisements must verbally disclose the drug’s most significant risks, and disclose all other risks identified in the drug’s prescribing information or provide sources where viewers can find the prescribing information for the drug. New York City has made recent headlines for its proposal that cigarette displays be covered behind checkout counters. These are just a few examples. YY: In China, specific controls similarly address particular types of goods, such as medicines, medical appliances, tobacco, food, alcohol, cosmetic products, home electronic appliances and financial services. The regulations normally require preapproval of the products to be advertised and restrict the content of advertisements. The Chinese authorities have established detailed rules for products and services that can have an impact on public health and safety. Among others, pharmaceuticals and health-related advertisements are closely regulated. When is use of a third-party trademark in advertising considered to be infringing? DA: Trademark infringement generally occurs when use of a third-party mark is likely to cause confusion, mistake or deception. US trademark law recognises that a third-party mark may be used fairly in two primary ways. First, a third-party mark may be used purely descriptively in a non-trademark manner. This is commonly referred to ‘classic fair use’ and is a defence to trademark infringement. For example, an auto-repair shop may advertise its ‘car mechanics’ without infringing the mark CAR MECHANICS for an automobile magazine. The second type is referred to as ‘nominative fair use’. This permits use of a third party’s mark under certain conditions to identify the third party’s goods or services. For example, an auto-repair shop may make limited use of the mark FORD in plain text to advertise that it repairs Ford cars without infringing the FORD mark. US courts generally consider the following factors to determine whether such use constitutes nominative fair use: 104 World Trademark Review June/July 2013 Mark Sommers Partner, Finnegan, Henderson, Farabow, Garrett & Dunner [email protected] Mark Sommers practises exclusively in the areas of trademarks, domain names, dilution, unfair competition and false advertising. Both domestically and internationally, Mr Sommers provides a full range of services including litigation, counselling, clearance and infringement opinions, and licensing. He has litigated a broad range of trademark, unfair competition, domain name, name diversion, trade dress and false advertising cases before the federal courts and the Trademark Trial and Appeal Board of the US Patent and Trademark Office. •The product or service is not readily identifiable without use of the thirdparty mark; •Only so much of the third-party mark is used as is reasonably necessary to identify the product or service; and •The user has done nothing that would suggest sponsorship or endorsement by the third-party mark owner. RT: In China, this is considered on a caseby-case basis. The Trademark Law does not provide an exhaustive definition of ‘use’, but provides that use of a trademark includes use on a product or on packaging, in a commercial document or advertisement, at an exhibition and in other commercial activities. Therefore, one must consider a wide range of uses. There are exceptions where descriptive or informative use of a third-party trademark is found not to be infringing under the ‘fair use’ exception. However, since China is not a common law jurisdiction, there is no universal view on the fair use exceptions for trademarks. Thus, the question must be considered in the context of the particular advertisement and its surrounding facts and circumstances. MB: In Denmark, as a general rule, thirdparty use of trademarks in advertising is prohibited under the trademark legislation and the Marketing Practices Act. However, the trademark legislation contains exceptions where a third-party mark may be used – if it is necessary, for example, in order to describe that a spare part fits products sold under a certain trademark. However, the rules are strict and the use should always be proper. AB: The Swedish Trademark Act is harmonised with the EU Trademark Directive, in that the exclusive right to a trademark does not prevent use in the course of trade and in accordance with honest business practices. For example, as in Danny’s example, in a case concerning a workshop that had used Volvo’s trademark to indicate that it serviced Volvo cars, the Supreme Court stated that such use is not illegal if it is done in such a way that any misconception of a commercial connection with the trademark owner is excluded, The trademark experts’ greatest challenge is to make sure that they contribute by presenting possibilities and positive alternatives where risks are identified, and do not ‘kill inspiration’ www.WorldTrademarkReview.com Roundtable Advertising law Feature: Xxx and if the trademark is not used in a way that might suggest such a connection (NJA 1998 s 474). Similarly, a company which manufactured toy building bricks stated in its advertisements that its bricks could be combined with other building systems “like Lego”. The appeals court found that this did not imply a commercial connection between the companies; Byggis was considered to have a legitimate interest in informing the public about this compatibility (NIR 1993, s 502). By contrast, in the early 1980s, car manufacturer Mazda likened its Mazda 929 Legato to “the family’s new Rolls”, in an advert which depicted a Mazda car. The district court held that this infringed the ROLLS ROYCE trademark, as there was no comparative element in the ad (NIR 1981 s 421) Considering comparative advertising, how can one assess whether a sufficient level of comparison is taking place – particularly in relation to third-party use of the brand owner’s non-traditional trademarks? AB: In addition to the Trademark Act, the Marketing Act can be used to prohibit certain comparative advertisements. Among other things, a trader may not, in its advertising, refer to another trader or its products if the comparison: • is misleading; •gives rise to confusion between the traders or their products or trademarks; •discredits or disparages the other trader’s business, products or trademarks; •takes unfair advantage of the reputation associated with the other trader’s trademark; or • presents a product as an imitation or copy of a product with a protected trademark. However, references to products that fulfil the same needs or that are intended for the same purpose are allowed. Thus, an advertisement does not constitute comparative advertising if it does not concern competing products (although such advertisements may be deemed misleading). HVR: Ultimately, the courts may assess whether a sufficient level of comparison is made in relation to any third-party use of trademarks. MS: Generally speaking, comparative advertising claims can be grouped into two categories: ‘superiority’ claims and ‘tests prove’ claims. Each can be proved false or misleading by different forms of evidence, www.WorldTrademarkReview.com the advertised claim itself. Specifically, a plaintiff challenging a ‘tests prove’ claim may show falsity through evidence that the tests are not sufficiently reliable to support a claim of superiority or some other quality claimed in advertising, or that the tests, while reliable, do not establish that product quality claimed in the defendant’s advertising. In terms of making superiority or ‘tests prove’ claims by referencing a competitor’s non-traditional mark, one need also bear in mind the nominative fair use principles addressed previously. Rachel Li-Mei Tan Executive, Rouse [email protected] Rachel Li-Mei Tan is a senior consultant at Rouse and the head of its China trademarks group. Based in Beijing, she is dual-qualified as a solicitor of England and Wales and an advocate and solicitor of the Supreme Court of Singapore. She has handled a wide range of issues relating to trademarks and designs in many jurisdictions around the world, in particular in China, the United Kingdom, the European Union and Singapore. whose type and sufficiency will depend on the specific comparative advertising claims made. Superiority claims are those where a competitor asserts that its product is equivalent or superior to another’s, or that its product has a quality or feature that its competitor’s does not. For these types of claim, most courts require the plaintiff to prove that the advertised claims are false, not just that they were possibly made without pre-existing data supporting the claim’s truthfulness. A ‘tests prove’ claim is one where the advertising party claims that its product has certain features and relies on tests to prove it. Certain courts recognise both explicit and implicit ‘tests prove’ claims – explicit ‘tests prove’ claims explicitly state that testing proves the advertised claim. Implicit ‘tests prove’ claims are typically found in product superiority advertising, where testing supporting the claimed superiority is implied (eg, ‘Brand X bags are five times stronger than Brand Y bags’). One may prove the falsity of a ‘tests prove’ claim by establishing that the explicitly or impliedly referenced testing does not support the advertised claim and do so without proving the falsity of YY: In China, comparative advertising is allowed in principle, but under relatively strict conditions. A brand owner may be allowed to compare its products or services to generically similar products or services, but is unable to refer to the specific names of a competing product or service. As in the United States, comparative advertising claims must be substantiated with scientifically conclusive test results or certificates. The test results must be from a specialised testing organisation appointed by the state. This implies that other forms of evidence which adopt more subjective standards, such as consumer surveys, are unlikely to be accepted as valid evidence for comparative advertising claims. Therefore, the results or proof resulting from scientific means are important to substantiate the comparative advertising claims, and without these, the advertising claims are vulnerable to challenge. What constitutes misleading and/or deceptive advertising in your jurisdiction? MB: A number of marketing practices are considered as deceptive or misleading in Denmark. Some of the more wellknown examples are health claims made in relation to foodstuffs and beverages. Any indication that a given product has a particularly beneficial effect on, for example, the digestive system must be backed up by clinical evidence in order for it to be accepted. Another classic example is the marketing of products as special promotions, where the promotional price has been valid for so long that it has – legally – become the new normal price. If this is the case, it is illegal to continue to market the product as a special offer or promotion, as this is considered misleading. DA: The Lanham Act specifically prohibits two types of advertising – that which is literally false and that which may be true, but in context has a tendency to mislead or June/July 2013 World Trademark Review 105 Co-published Feature: Xxx editorial Ying Yihong Associate, Rouse [email protected] Mette Bender Attorney at law, Awapatent [email protected] Yihong Ying is an associate and qualified PRC lawyer based in Rouse’s Shanghai office. Mr Ying focuses on various aspects of IP commercialisation, including IP-related acquisition, licence/assignment, due diligence and relevant commercial transaction and compliance. He is also experienced in the enforcement and protection of IP rights via investigation, administrative enforcement, civil litigation and lobbying. Mette Bender has worked with trademark law since 2006 – first with the Danish Patent and Trademark Office and the International Trademark Association, and then at a boutique Copenhagen IP firm and subsequently a Danish law firm. She joined Awapatent in 2011 and specialises in trademark, design, domain name and marketing law, advising on all issues related to these areas – from drafting trademark strategies and the selection of trademarks to legal proceedings concerning IP rights and their exploitation. deceive the public. Evidence of consumer perception is not required for literally false claims, because by definition they are clear on their face, thus obviating the need to gauge how consumers perceive their message. But in cases of impliedly false claims, it is the plaintiff’s burden to produce evidence – usually in the form of market research or consumer surveys – showing exactly what message consumers took from the ad. Under the Lanham Act, a statement must be ‘material’ to be actionable false advertising. Courts have held that a false or misleading statement is a material misrepresentation if it pertains to an “inherent quality or characteristic” of the product and has a tendency to deceive consumers. Additionally, to be actionable, a false or misleading statement must be made “in commercial advertising or promotion”. •presenting pending scientific opinions, phenomena or similar as conclusive in advertisements; and •using ambiguous language or misleading consumers in any other manner in advertising. YY: There is yet to be a crystal-clear standard under Chinese law. The Anti-unfair Competition Law helps to cast some light on what may constitute misleading and/or deceptive advertising, as follows: •providing partial or unilateral views in advertising or comparing a product; 106 World Trademark Review June/July 2013 Any obviously exaggerated advertising of a product which is insufficient to cause misunderstanding among the relevant public will not be considered misleading and false publicity. In examining a claim of false advertising, a people’s court will take into account factors such as everyday life experience, the ordinary degree of attention of the relevant public, misunderstood facts and information on the publicised object. However, since some of these criteria are not accompanied by detailed explanations (eg, as to what constitutes ambiguous language), in practice, each point will be reviewed on a case-by-case basis within its factual context. Ann-Charlotte Järvinen: According to the Swedish Marketing Act, a trader is not permitted to use false statements or other misleading representations in the course of trade with respect to either its own business activities or those of another. This applies in particular to representations concerning the product’s nature, quantity, quality or other distinguishing characteristics, origin, use and risks such as impact on health or environment. Further, it is not permitted to use false statements concerning one’s own trademarks, trade names and distinctive symbols, or those of another. The Marketing Act also prohibits misleading imitations that can easily be confused with another trader’s known and distinctive products. Several rulings state that mainly banal characters cannot create a distinctive product. Colours or typefaces as such do not create a unique product. However, a combination of these factors may create a distinctive product. The question of whether a product is known among the relevant consumer sector is usually answered through a market survey combined with evidence of, for example, the extent and costs of marketing, sales returns, other exposure of the product, market shares and witness statements. The Marketing Act provides that advertising must comply with good marketing practices in order to be fair. This general provision prevents a third party from unfairly capitalising on the goodwill and reputation of a trademark. The rights holder must prove that its brand is well known and enjoys public goodwill, and that the third party has attempted to free ride on this goodwill. In order to succeed in such a claim, the misleading marketing must be found to be unfair, which will be the case where it affects, or would likely affect, the recipient’s ability to make a well-founded transaction decision. Are slogan marks registrable in your jurisdiction? What is the best way to ensure that such marks are protected? YY: In China, slogan marks are registrable as long as they are distinctive. The problem is that many slogan marks are directly descriptive and non-distinctive. If a brand owner intends to use a slogan mark consistently for a long time, filing a trademark application is recommended. For a descriptive slogan mark, the brand owner may first have to obtain limited protection for the slogan combined with a distinctive house mark, and over time collate evidence of acquired distinctiveness to support an application for the slogan mark alone. This takes commitment from the brand owner to continuously and consistently educate www.WorldTrademarkReview.com Roundtable Advertising law Feature: Xxx Danish Patent and Trademark Office. The usual restrictions regarding distinctiveness and so on apply, just as for any other trademark; but as a starting point, slogans are entirely registrable. the Chinese public that the slogan is being used as an indication of origin. Further, the brand owner will have to spend time, money and effort on collecting the right evidence of acquired distinctiveness, and ensure that it is in a form that is acceptable to the trademark authorities. Before filing a trademark application, a clearance search is recommended, to ensure that no prior conflicting marks pose obstacles to the use and registration of the slogan mark. MS: Slogans are protectable and registrable in the United States according to the same principles that apply to traditional word marks. Specifically, if a slogan is inherently distinctive (ie, it is fanciful, arbitrary or suggestive), it should be immediately protectable and registrable. If the slogan is merely descriptive, it will not be protectable or registrable until it has acquired distinctiveness. The best way to communicate that a slogan is claimed as a proprietary right is to use the ‘TM’ designation before it is registered and the “®” symbol after it is registered to call the slogan out as a source identifier. Of course, when appropriate, a federal trademark registration should be obtained. ACJ: Slogan marks are registrable in Sweden. European Court of Justice case law states that the assessment of distinctiveness for slogans is not stricter than that for other types of mark; but in practice, the assessment is stricter. In our opinion, it is more difficult to obtain trademark registrations for slogans in Sweden than for other categories of trademark, due to the difficulty of establishing distinctiveness. This is because slogans are often perceived as pure advertising claims or requests to buy something, and not as indications of origin. Slogans that are known on the market are also protected to some extent by the Marketing Act. The advantage of What specific trademark issues are raised by advertising online under national law and what remedies are available? Angela Boman Partner, Awapatent [email protected] Angela Boman’s practice includes all aspects of IP law and marketing law since 2000. She specialises in legal issues and disputes, with a special focus on trademark rights and IP management. Her clients include both Swedish and international companies. Ms Boman has worked exclusively with intellectual property since 2000. Prior to that she worked as a legal officer at the Swedish Patent and Trademark Office, a law clerk and a reporting clerk at first and second instances within the Swedish court system. Ms Boman has also led the Awapatent branding specialist team. trademark registration over protection under the Marketing Act is that it is easier to demonstrate the existence of a right and it is not necessary to show that the slogan is known on the relevant market to challenge misuse successfully. MB: Slogans are also registrable in Denmark. The best way to ensure that such marks are protected is to register them with the The terms and conditions of many social networking and auction sites require that these sites be given a royalty-free, transferable licence to use the material published thereon www.WorldTrademarkReview.com HVR: Denmark has strict rules on the information that a seller must disclose online. Marketing directed towards Denmark, such as through a website in Danish, must show the prices including value added tax, as well as information on the company behind the website. There are also many other issues of which to be aware, such as: •the rules on when a company can legally contact a former customer when advertising a new product; •the terms and conditions relating to sale; and • the use of certain words, such as ‘free’. Third-party trademarks should not be used in ways which might be considered contrary to good marketing practices. Further, it is useful to bear in mind that trademark rights can be obtained based on use in Denmark, and that use of a trademark on a website constitutes use for such purposes. ACJ: Trademark infringements online raise a number of questions. Do the Trademark Act, Marketing Act and other instruments, such as alternative dispute resolution policies, apply? Is it possible to shut down websites by contacting the internet service provider or initiating an alternative dispute resolution procedure? Is the infringement or illegal act directed towards the Swedish market? The issue of the applicable law is often resolved by using the WIPO Recommendation on the Protection of Marks and Other Industrial Property Rights in Signs on the Internet (SCT/7/2 October 3 2001), which recommends that the use of a sign on the Internet be regarded as trademark use in a member state only if the use has commercial effect in the relevant state. Today, many companies use social networking for their marketing campaigns. The terms and conditions of many social networking and auction sites require that these sites be given a royalty-free, transferable licence to use the material published thereon. If illegal trademark use is discovered on a social networking or auction site, the rights holder should first contact the site owner and try to have the infringing content removed. The terms and June/July 2013 World Trademark Review 107 Co-published Feature: Xxx editorial to cancellation or transfer of the challenged domain name(s). Ann-Charlotte Järvinen Lawyer, Awapatent [email protected] Henriette Vængesgaard Rasch Attorney at law, Awapatent [email protected] Ann-Charlotte Järvinen has specialised in trademark, domain name and marketing law since 2001. She deals with all issues within these areas, including trademark registrations and trademark conflicts, domain name disputes, agreements, trademarks and domain name strategies, both nationally and internationally. She is a professional representative before the Office for Harmonisation in the Internal Market and an authorised IP attorney in Sweden. Previously she has worked as a lawyer at the Swedish Patent and Registration Office and as a domain name consultant. Henriette Vængesgaard Rasch has worked in intellectual property since 1998, working with the Danish Patent and Trademark Office before joining Awapatent in 2002. She is particularly experienced in trademarks and designs, including IP strategy, registrations of trademarks and designs and conflicts relating to counterfeit and piracy problems, infringements and marketing law. Ms Vængesgaard Rasch has experience as a litigator and is also experienced in the drafting and negotiation of agreements and documents in relation to IP matters. conditions of social networking and auction sites often provide that the site owner can eliminate illegal information and use of logos and copyright information. All remedies under the Trademark Act and Marketing Act that apply offline are also applicable to online advertising, together with a special remedy for online infringement: the information injunction. If a rights holder can demonstrate probable cause that someone has infringed its trademark, the court may order the service provider to provide it with information on the origin and distribution networks of the infringing goods or services, under threat of a penalty. cybersquatter registered, trafficked or used a domain name that is identical or confusingly similar to its mark, or that is dilutive of a famous mark, and did so with a bad-faith intent to profit from that mark. Under the act, a plaintiff may obtain monetary damages, attorney’s fees and costs (in exceptional cases), and an injunction and/or cancellation or transfer of the infringing domain name. The Uniform Domain Name Dispute Resolution Policy (UDRP) is also available for resolving domain name disputes. Under the UDRP, a trademark owner must show that: •the registered domain name is identical or confusingly similar to its mark; •the domain name registrant has no rights or legitimate interests in the domain name; and •the domain name was registered and used in bad faith. DA: Advertising online raises many of the same trademark issues as traditional advertising. In addition, some trademark claims are unique to the Internet, such as cybersquatting and keyword advertising. In the United States, the Anti-cybersquatting Consumer Protection Act provides trademark owners with a civil remedy against cybersquatters. Under the act, a rights holder must prove that the alleged 108 World Trademark Review June/July 2013 Unlike under the Anti-cybersquatting Consumer Protection Act, which allows for the recovery of monetary damages, remedies in UDRP proceedings are limited RT: Issues such as whether keyword advertising constitutes trademark infringement and whether a search engine bears joint liability with a keyword advertiser are hot topics in China. I will not address all of the issues here, but instead will briefly outline the remedies. Under Chinese law, the trademark laws also apply to online advertising. If a dispute arises, the brand owner may resort to administrative enforcement action, civil action at court or self-help remedies (eg, sending cease and desist letters). If the dispute involves actual sales or other severe trademark infringements, then the brand owner may be able to pursue criminal prosecution. How is the use of competitors’ trademarks as keywords treated by the courts in your jurisdiction? MS: For several years, US courts have wrestled with the issue of whether the sale and purchase of search engine keywords using a competitor’s trademark constitutes ‘use in commerce’ sufficient to give rise to an infringement action. The majority position is that use of a competitor’s trademark in this way is use in commerce sufficient to give rise to an infringement action. For the purposes of determining infringement in keyword cases, the courts generally focus on the following factors: •the strength of the mark(s) used as keywords; • evidence of actual confusion; •the type of goods and degree of care likely to be exercised by purchasers; and •the labelling and appearance of the sponsored ads and the surrounding context on the search results page. Additionally, to address the scenario where consumers might only be diverted to a competitor’s website without ultimately making a purchase (ie, initial interest confusion), the courts consider: • the similarity of the marks; •the parties’ simultaneous use of the Internet as a marketing channel; and •the relatedness of the parties’ goods and services. These factors vary in application depending upon the facts specific to the case. MB: The use of competitors’ trademarks as keywords in Denmark falls under the www.WorldTrademarkReview.com Roundtable Advertising law Feature: Xxx regulation of the Trademark Law and the Marketing Practices Act. As a starting point, it is illegal to use another’s trademark in the course of business. However, there are certain exceptions to this rule, and use of another’s trademark as a keyword – even by a competitor – can sometimes be considered perfectly legal. In recent decisions on the matter, the courts have made a case-by-case evaluation of the given use to determine whether it violated good marketing practices and whether use of the competitor’s trademarks qualified as trademark infringement. claiming that such use was misleading to consumers under the Marketing Act. The court found that the defendant’s service was not an imitation of Elskling’s service because the appearance of its website differed from that of the plaintiff. Moreover, the word ‘Elskling’ was not included in the ad and there was no implied connection between ‘Elskling’ and ‘Kundkraft’. The court therefore concluded that the competitor’s use of the ELSKLING trademark was not misleading under the Marketing Act. Elskling also claimed that Kundkraft’s use of its ELSKLING mark was detrimental ACJ: Swedish judicial practice on keywords or dilutive to the mark’s distinctive follows ECJ case law in C-487/07 L’Oreal character, as it weakened the mark’s ability and C-278/08. Keyword advertising that to identify Elskling’s services from others unduly exploits the distinctive character in the market, and risked the word ‘Elskling’ of a well-known trademark can be being perceived as a general term for the prohibited under the Marketing Act and comparison of electricity prices. However, the Trademark Act. the court found that there was no substantial In a recent Market Court suit (Case risk of dilution. Kundkraft’s use was intended 26/11) Elskling sued competitor Kundkraft to draw attention to the fact that its service for using its ELSKLING trademark was an alternative to Elskling’s, a use which is WTR house ad 190x125 _wtr half page advert 12/04/2013 16:38 Page 1 as a keyword in online advertising, lawful under ECJ case law. RT: Although there is no unanimous agreement on this issue, Chinese courts are inclined to consider that use of third-party trademarks as keywords will be deemed trademark infringement and/or unfair competition under Chinese law, especially if there is obvious bad faith. Out of over 10 cases recently decided in various Chinese courts regarding the use of third-party trademarks as keywords that the authors are aware of, there was only one case in which no infringement found. The judicial trend supports the view that use of a competitor’s trademark as a keyword will be treated as infringement. WTR News. Insight. Analysis. Commentary. To subscribe go to www.worldtrademarkreview.com or email [email protected] www.WorldTrademarkReview.com June/July 2013 World Trademark Review 109