Reducing Legal Risk When Managing Marks On Global Websites

• Published date: 16 October 2020
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Mr Robert Kramer

Presenting trademarks online in a way that is inconsistent with your rights or does not comply with individual country requirements may create legal risks - with companies adopting a number of different strategies to manage that threat. In this guest piece Robert G Kramer, special counsel at Finnegan, provides best practices for marking trademark registrations on websites with global reach.

Guest analysis

If your company is using online sites to distribute goods or offer services both domestically and abroad, it is likely that you are also using trademarks to build and protect your brands goodwill and customer base. It is also likely that your company is increasingly filing trademark applications in multiple countries Once granted, a registration provides the option of using the registration symbol ' to send a broader warning to others to stay away from confusingly similar uses. Proper marking may also give your company additional rights, provide broader damages for infringement and make an injunction more likely should you need to protect your brand in court. However, online marking that is inconsistent with your rights or non-compliant with individual country requirements may create legal risks worth managing.

Legal issues

Unlike online sites that cross borders effortlessly, trademark rights must be formed and enforced separately in each country. In some countries it can be a criminal offence to use the registration symbol when the trademark is not registered in that country, or when it is registered but not for the appropriate goods or services. In Australia, the fine may be 60 penalty units, each unit costing A$222. In the United Kingdom, where the trademark is not registered somewhere in the world the penalty may be a "fine not exceeding level 3 on the standard [financial criminal penalty] scale", with a maximum of '1,000. In China, the government can stop the passing off of unregistered trademarks as registered, order rectification (eg, a public notice) and fine improper gains as high as 20%.

Improper marking may also frustrate your efforts to constrain infringers by providing them defences to infringement. In the United States, trademark false marking can be the basis for a claim of fraud, unclean hands or false advertising. It may also thwart a brand owner's attempt to obtain trademark registrations, such as rejection of sample evidence of use that bears a registration symbol in an applicant's "mistaken belief that registration in a state or...