Trademark laws Featured

7:31am EDT September 21, 2006
A trademark uses words, names or symbols to help identify and distinguish the goods of one source from another. The process of registering and protecting trademarks is an important function for companies looking to make their presence felt overseas.

Establishing trademarks is beneficial to companies and consumers alike in the realm of international business. “It helps to show that all goods sharing the same trademark have the same level of quality,” explains Jonathan Stern, an associate in Alschuler Grossman Stein & Kahan LLP’s Entertainment & Media Department. “For example, if I go to a McDonald’s in Cairo I know that the French fries that I get will be the same quality that I get in Los Angeles.”

Smart Business spoke with Stern about the most common international trademark disputes involving the Internet, how to resolve domain name disputes and the importance of registering trademarks overseas promptly.

There is no such thing as a universal trademark that is enforceable in every country. What type of problems does this cause?
It is quite problematic because trademark rights are entirely territorial in scope. Worldwide, hundreds of countries and jurisdictions have their own laws, their own regulations and their own registration systems. There are a number of existing comprehensive treaties that establish requirements for obtaining trademark registrations in many countries with just one filing. Usually, however, if you want global protection, the rights have to be acquired and protected on a piecemeal basis.

What is the most common type of international trademark dispute involving the Internet?
One of the most common disputes involves counterfeiting. Without any sort of uniform standard in place for the buying and selling of counterfeit goods, companies that have valuable trademarks continue to have significant and potentially expensive hurdles to surmount in globally enforcing their trademarks. Companies that manufacture goods such as clothing need to be vigilant about tracking down and stopping counterfeiters. If possible, they should work to foster relationships with auction Web sites such as eBay. This way, they can work together to implement procedures that will discourage trademark infringers from using such sites.

How common are domain name disputes?
Disputes involving domain names continue to be a problem, but less so for established companies whose trademark names have been in existence for quite some time. The main reason for this is that they’ve likely resolved their disputes by now. Companies that are in the infancy stages of creating their brand need to conduct preliminary research to make sure that their desired domain name hasn’t already been acquired. It’s also important to conduct research in countries that companies might seek to expand into to make sure they’re not unintentionally infringing on trademarks in foreign countries.

How can domain name disputes be resolved?
There is a mechanism to adjudicate disputes involving generic top-level domains such as .com, .net, .org, .biz, .info and .name. This dispute-resolution process also applies to some country code top-level domains. For example, .fr is the domain code used in France.

The generic top-level domains and country code top-level names have adopted the Uniform Domain Name Dispute Resolution Policy (UDRP), which provides a streamlined administrative procedure to help curb abusive registration and use of a domain name.

The UDRP administrative procedure covers three different situations. The first situation is when the domain name registered by the domain name registrant is either identical or confusingly similar to a trademark belonging to the complainant. The second situation is when the domain name registrant has no rights or legitimate interests with respect to the domain name in question. The third situation is when the domain name has been registered and is being used in bad faith.

Is there a system in place to help curb counterfeiters?
There is no uniform system for dealing with the buying and selling of counterfeit goods. Different countries have different statutes on their books. Some provide criminal sanctions. Almost all provide monetary damages, but in different amounts, and usually not as generous as in the United States.

What steps can a company take to safeguard against international trademark disputes?
It’s important for a company that is just developing its brand and trademarks to select a mark that is acceptable in prospective international target markets. Assuming a company can trademark its goods, it’s important to register the marks promptly. This is particularly important for companies that don’t have very large budgets because most countries follow the first-to-file rule. Also, a company should consult with legal counsel that has international trademark experience.

JONATHAN STERN is an associate in Alschuler Grossman Stein & Kahan LLP’s Entertainment & Media Department. Reach him at (310) 255-9138 or