Legal Eye
Worried about protecting your fashion company on the world wide web? Where there’s a will there’s a way, as Lisa Egan reports.
Having a presence on the internet is an essential part of any advertising and promotion strategy for a business. While many use this marketing tool legitimately and with great effect, many others are using it to gain an unfair advantage by trading off other people’s hard earned reputations. So what can you do to protect your business and make sure you get the most out of the online environment?
Domain names
Websites are vital marketing tools for business. However, when many businesses go to register their trading name or trademark as a domain name, they find that a competitor has purchased the rights to use the domain name and is using it to direct internet traffic to its own website.
There are very simple steps which can be taken to stop this kind of conduct, and ultimately, force unscrupulous businesses to transfer the registration of the domain name to its rightful owner. The first step is to write to the offending party to see whether they are willing to resolve the dispute amicably. If this is not possible:
• if the domain name bears a .au extension, then a complaint should be lodged with the Australian Domain Name Administrator (AUDA) located at www.auda.org.au; and
• if the domain name does not end in a .au extension, then a complaint should be lodged with ICANN, located at www.icann.org.
Once a dispute is lodged each business is required to submit evidence supporting their claims and arbitration then takes place. If the domain name is found to be registered by a business in bad faith or without proper cause, then the registration of the domain name can be forcibly transferred to the rightful owner. This is a straightforward and cost effective procedure.
Search engine marketing
Search engine marketing has become one of the most powerful forms of promotion and advertising available to a business on the internet. Search engines such as Google and Yahoo hold auctions for “keywords”, which are words which people commonly use when searching the internet.
The purchasers of the keyword then receive advertising space on the results page of a search for that keyword. So, unlike normal search results, once a keyword has been purchased, the purchaser no longer has to rely on working its way up ordinary web page rankings to be visible to potential customers. These links often appear above and/or to the right of standard search results and are identified as “sponsored links”.
One of the most common keywords used to search for a product or service is a registered trademark and the use of another business’ trademark as a keyword by a competitor can cause problems for trademark owners.
In Europe and the US, courts have held that use of a trademark as a keyword is not an infringement of a trademark. However, it is unclear whether Australia will take the same approach. In any event, it is likely that even if this is not trademark infringement, such conduct is likely to be misleading and deceptive.
There are, however, ways you can ensure that your business is not unnecessarily exposed.
Each search engine provider publishes a policy on the way in which it handles its sponsored links programs. Many also provide a straightforward method for dealing with complaints.
For example, Google’s AdWord policy (its sponsored links) does not allow the use of a registered trademark as a keyword by anyone other than the owner of the rights to use that trademark.
If a competitor has purchased your trademark as a keyword and is using it to place advertisements on Google, you can send a complaint to Google (https://services.google.com/inquiry/aw_tmcomplaint) and have the sponsored link removed.
The emphasis in Google’s system is on the ownership of a registered trademark. Other search engines do not have this emphasis. It is therefore important, before placing any such advertisement or challenging another business’ right to use your trademark, to check the policies of the search engine featuring the advertisement and obtain legal advice.
Whether it is standard advertising and promotion, or domain names for a website and keywords to be used in association with a sponsored link, the principles of protecting your business remain the same. Registering your brands as trademarks ensures that you have a quick and efficient way to enforce your rights against competitors.
Lisa Egan is a senior associate at Middletons. The law firm has extensive experience in dealing with intellectual property issues faced by the fashion industry.