NET EFFECT II: MARKED_CONCERN.COM

• Published date: 01 December 1999
• Date: 01 December 1999
• Citation: (1999) 11 SAcLJ 345
• Author: by Tan Tee Jim, S.C. TAN TEE JIM, S.C.

Introduction

Never in the field of trade mark law has an issue caused so much concern to so many people as the protection of Internet domain name. The concern germinated in the early 1990s when commercial enterprises came to realise that the Internet, which has its roots in a military project in the United States and had hitherto been the preserve of the government and the academia, could be an effective communication and marketing tool. They began to vie for domain names which were easy to remember and/or similar to their trade marks or corporate names. Apart from facilitating connectivity between computers through the Internet, domain names were perceived to be valuable business identifiers by companies that wanted to conduct commerce on the Internet. This has resulted in disputes between companies having legitimate claims to similar names and trade marks.

In the meantime, the Internet also spawned new technologies. One of these allowed a company’s Internet site to be “linked” and “framed” to that of another, often without its knowledge and consent. The other enabled a trade mark to be embedded or “meta-tagged” in an unrelated site, thereby causing deception to users and detriment to trade mark owners. The concern deepened with the emergence of the predatory practice of “cyberpiracy” (or “cybersquatting”). Companies which were not quick off the mark in registering domain names found their names or trade marks usurped by “cyberpirates” whose intention was to obtain the names and marks for ransom.

These concerns led to a number of initiatives and proposals by the United States Government and international organisations to control, if not eradicate, the burgeoning Internet disputes and cyberpiracies sprouting around the world. Many of the proposals were directed at mollifying the interests and concerns of various sectors of the Internet community (including engineers, scientists, academics, consumers and trade mark owners). In the event, they were often not generally well received and only served to aggravate the existing concerns. Despite this, the process to seek a uniform approach to address the concerns and to resolve trade mark/domain name disputes is still being vigorously pursued, led by the World Intellectual Property Organisation (WIPO) and a new international

body called the Internet Corporation for Assigned Names and Numbers (ICANN) which is responsible for the management of the policy and technical aspects of the domain name system.

At root, the concerns stem from the fundamental conflict between the domain name system and the trade mark system. This conflict in turn reflects the tension between a recent technological phenomenon which has grown exponentially in a spontaneous, uncontrolled and unregulated manner in cyberspace and an existing legal regime designed to control and regulate rights and interests in the physical, territorial world. The fear is that, if left unchecked and unregulated, the Internet and its laissez faire system of allocating domain names will threaten the very foundation of the existing trade mark system. The purpose of this paper is to review the nature and source of this conflict and how it has already manifest itself in a number of jurisdictions around the world. The paper will also examine the international developments concerning Internet governance and will conclude with a hope and a prayer that ICANN will put in place mechanisms in cyberspace which are as effective in enforcing trade mark protection as those in the physical world.

Nature and Function of a Trade Mark

A trade mark is any word, name, device, brand, logo, shape or any visually perceptible sign capable of being represented graphically and which is capable of distinguishing goods or services1 of a person from those of another.2 The purpose of a trade mark is essentially twofold — to identify the source of the goods and to distinguish the trade mark owner’s goods from those of others.3 The primary public policy consideration underlying this purpose is the protection of consumers. Specifically, it is to prevent consumers from being confused as to the source and quality of the goods.

This is because the use of a confusingly similar trade mark can mislead a consumer to purchase goods from an unauthorised source or to purchase goods of a different or inferior quality than those which the consumer had sought.4

There is as yet no international trade mark law. Trade mark protection is still local and territorial, if not parochial. The Paris Convention constitutes the earliest and primary attempt to establish international common standards and norms for the protection of intellectual property rights (including trade mark rights). Most countries are signatories to this convention. As such, they are committed to giving foreign nationals the same treatment as that for their own citizens. However, this principle of national treatment does not confer any substantive trade mark rights within any of the member countries.

There is also no international registry of trade marks. A trade mark owner must apply to register his mark in the national trade mark registry of each of the countries where he wishes to use his mark and in accordance with the trade mark law of that country. He must muster the different procedural and substantive laws of the countries where he wants protection for his mark. Generally, any person can apply to register a trade mark in the national registry of a country as long as he has used the mark in the country or has a bona fide intention to use it in the country.5 Consequently, it is possible for a mark to be registered and owned by different and unrelated persons in different countries. It is also not uncommon for a mark to be concurrently used by different and unrelated persons in various parts of the world.

Registration of a trade mark must relate to one or more of the over 40 classes of goods and services stipulated in the Nice Agreement for the International Classification of Goods and Services. This means that if a mark is registered in respect of class 25 (for clothing), the use of an identical or similar mark in respect of, say, class 30 (for coffee, tea and other beverages) would not constitute an infringement of the registered trade mark. Protection only extends to the goods covered by the registration.

Singapore has had its own trade mark law since 1939. The law was substantially amended 60 years later in 1998. One of the avowed purposes of the amendments was to enable Singapore to meet its obligations under the Paris Convention and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). It was also an exercise to simplify and modernise the law.

Under the new Trade Marks Act, a trade mark owner in Singapore can register his mark unless it is not distinctive or consists exclusively of a sign or indication which may serve in trade to designate, amongst others, the quality, geographical origin or time of production of goods or consists exclusively of a sign or indication which has become customary in the current language or established practices of the trade.6 He must declare in the application form that the mark is being used in the course of trade or that he has the bona fide intention to so use it in relation to the goods covered by the application.7 If, within 5 years following completion of registration, a registered trade mark is not used in the course of trade in Singapore or its use is suspended, the registration may be revoked.8 The burden is on the owner of the trade mark to prove use of the mark.9 If a mark is not registered or registrable under the Act, it can still be protected under the common law action of passing-off, provided there is use of the mark.10

A person infringes a registered trade mark if, without the consent of the owner of the trade mark, he uses in the course of trade a sign which is identical with the trade mark in relation to goods and the goods are identical with those for which the mark is registered.11 Additionally, there is infringement where a sign is used in the course of trade without the consent of the trade mark owner and where because the sign

1. (1) is identical with the registered trade mark and is used in relation to goods similar to those for which the mark is registered;

2. (2) is similar to the registered trade mark and is used in relation to goods identical with or similar to those for which the mark is registered,

there exists a likelihood of confusion on the part of the public.12 This is similar to the position under the common law action of passing-off. In accordance with TRIPS, the new Act also provides for protection of a registered trade mark which is well known in Singapore.13

Nature and Function of a Domain Name

A domain name is an electronic address that identifies a location on the Internet. It is not unlike a telephone number. In its numeric form, it is called an Internet Protocol, or IP address. Each address consists of four groups of numbers separated by dots (eg. 123.44.55.678) and is assigned to a single computer or a group of computers. By using the address of a computer, a user would be able to direct messages or request information from or to the computer.

Because it is often difficult for people to remember a numerical IP address and to make it user-friendly, Internet authorities created a protocol to provide names expressed in letters which spell out words instead of numbers (eg. “telecom.com”). This protocol is called the domain name system. Each name in the system must be unique, as the existing technical limitations of the system preclude two entities from using the same name. In other words, no two domain names can be identical. However, variations of the name are permissible (eg. “telecOm.com” and “telecoml.com”). The permutations are limited only by the imagination.

The domain name is organised in a hierarchical structure, with the country code stated...