Trademark Infringement and Domain Disputes

Trademark infringement is the unauthorized use of a trademark – registered or not – by another party. 

In order to prevent such misuse the legitimate holder of the mark must first do two things:

1. Discover the infringement by conducting regular searches.
2. Challenge and possibly prove in court that infringement is taking place

A skilled trademark attorney is necessary to successfully achieve both tasks. First the trademark holder – plaintiff – must establish that he or it is the actual owner of the trademark and that the mark is entitled to protection. 

Once this has been done and infringement has been uncovered, it must be proven.  The standard by which infringement is deemed to exist is the likelihood of confusion by consumers if both marks are in use. 

There are a number of different criteria by which infringement is established.
In other words, a court decides if confusion will take place by examining one or more of the following factors:

These first two factors are extremely important and determine the majority of cases:

1. The similarity of the marks.  This can include the wording, the overall impression, the shape and even the colors used.
2. The similarity of the goods or services.  Royal Taxi and Royal Catering are unlikely to be mistaken for one another.
3. The strength of the mark.
4. Evidence of actual confusion.
5. Proximity of the goods, physically, to one another.
6. The advertising and distribution methods used.
7. How careful consumers are likely to be in selecting a supplier.
8. The defendant’s intent in using (or misusing) the mark.

• If you have more questions or may need legal assistance regarding a Trade Mark matter, Consult Your Case for Free with a local experienced Intellectual Property Lawyer.

Domain Names and Trademark Disputes

Your domain name is more than just your address on the internet.  Consumers associate it with your company and its products.  With so many domain names registered on the internet today, disputes have become common and the adjudication of them has much to do with trademark law.

This becomes relevant both in protecting your domain name from others and in choosing one which will not be lost. One element of that law is that if significant time passes where the alleged infringer goes unchallenged, the original holder of the mark is deemed to acquiesce with the usage which may then no longer be disputed.

On the internet, information is almost instantaneous so that a challenge to improper use must take place quite quickly. In choosing a domain name, a user is subject to legal action if he makes use or benefits from someone else’s trademark if the two marks can be confused by the public.

A trademark is protected if it:

• Especially distinctive
• Has become identified with another company’s products
• Registered and used by another entity.

The factors listed above as being likely to cause confusion in trademark infringement, are also relevant in domain name disputes.  Because of the nature of the internet, the deliberate intent of the accused party is commonly invoked.  The new offence of “cybersquatting” refers to the intentional registration of domain names that match trademarks of other companies and are likely to be wanted because of the brand identification.

The similarity of criteria among trademark infringement and domain dispute situations, strongly suggests consulting with your trademark attorney regarding domain name matters as well.