A trademark is defined in Section 2 of the Trade Marks Act of 1993 as a mark used or proposed to be used by a person in relation to goods or services, for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other person.
Examples of trademarks would be BMW in relation to cars, or the golden arches of McDonald’s in relation to fast food. The definition above includes any mark that can be graphically represented; however, for the purposes of this discussion, we will only speak of words that can be represented as a domain name. A domain name is a unique name that identifies a website, for example, the ‘google’ in www.google.com.
One of the functions of a trademark is to identify the origin of certain goods or services. In certain cases a domain name may also assume a similar role in that it may identify the origin of a business and its goods and services. A domain name may be registrable as a trademark if it is distinctive and used in commerce in relation to goods and services. Therefore it is possible for a domain name to include a trademark, for example ‘www.sony.co.za’, ‘Sony’ being a registered trademark.
The fact that trademarks are territorial by nature and that the same mark may be registered in the same country for different goods or services creates a conflict between trademarks and domain names. For example, you can register the trademark ‘Helix’ in relation to computers in South Africa and in England. Additionally you can register the trademark ‘Helix’ in relation to computers in South Africa and in relation to sweets in South Africa. However, if your trademark is well-known, for example, the ‘Beacon’ trademark in relation to sweets, then you may have remedies to bar the registration of said trademark in relation to other goods or services, depending on the circumstances.
In contrast, a domain name is completely unique and universal and is allocated on a first-come first-served basis. For example, there can only be one ‘www.victoriassecret.com’ in the world even though X may own the trademark ‘Victoria’s Secret’ in America and Y may own the exact same trademark in South Africa.
Consider the following scenario:
Lucy is the proprietor of the well-known trademark Coco Chanel, which is registered in America, South Africa and various other countries. The website www.cocochanel.com is associated with the Coco Chanel brand. She decides that she would like to market the brand more in South Africa, so she instructs her IT department to acquire the ‘www.cocochanel.co.za’ website. Her IT department reports back to her and informs her that there is already such website and that it is used to sell clocks in South Africa. Lucy wants to know if there is a way that she can get the domain name from the clock seller.
As the trademark proprietor of a registered trademark, Lucy has three options. She can attempt to purchase the domain name from the South African clock seller, she can pursue civil litigation for trademark infringement or she can engage in alternative dispute resolution (ADR). There are generally only these three options because of the fact that most domain name registries adopt a passive attitude towards deregistration or transfer and will only proceed therewith on the basis of a court order or a decision of a recognised ADR service provider.
Due to the high costs and lengthy nature of litigation and because the clock seller refuses to sell his domain name to Lucy, she decides to attempt ADR and leave civil litigation as a last resort. Lucy can approach the South African Institute of Intellectual Property Law (SAIIPL), which is accredited as a dispute resolution provider in relation to the .za Alternate Dispute Resolution Regulations.
In terms of the new procedure anyone can lodge a complaint against a .co.za domain if the domain name “takes advantage of the rights” of that party or “is contrary to law or likely to give offence to any class of persons”.
According to the SAIIPL website “complaints can be filed against domain names which incorporate registered trademarks or even trademarks which are not registered but which are well-known. Complaints can also be filed against domain names which amount to hate speech or racism or any other such names which are contrary to public policy.”
Unlike court litigation, disputes filed with SAIIPL are normally concluded within the short period of two to three months and the fees are significantly lower than normal litigation. Thus it is better to attempt ADR before civil litigation if your complaint falls within the scope of SAIIPL’s services.
This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.