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page looks at questions about trademarks, cybermarks and
It covers -
on copyright and trade mark protection for book, film
and other titles appear in the final pages of this guide.
A trademark is something that is used to identify and
distinguish goods, whether or not unique, from those manufactured
or sold by others. A service mark is similar but distinguishes
services rather than tangible products. The mark can be
a word, a symbol, a design or some combination of such
elements. In some countries it could also be a sound,
colour or even texture.
Trademark law exists partly to protect consumers, providing
an indication of quality. That indication has a value
for the trademark owner, embodying a goodwill that can
be monetised and that is often significantly more valuable
than manufacturing facilities or other tangible assets.
It allows the owner of the mark to build/maintain a brand
- evident in Nike's swoosh, the Coca-Cola ribbon, the
brunette on Redhead matches, the dog on the EMI label
or the big budgie on Rosella soup cans.
The legislation - specific enactments and registration
schemes within individual countries, harmonised through
international agreements - is situated at the boundary
of industrial property law closest to trade practices
law, concerned with the regulation of misleading behaviour
among competitors in the marketplace.
Marks have been used by businesses and other entities
(eg churches and universities) for many centuries. Contenders
for the oldest continuously used marks include Lowenbrau
(in use since 1383), Stella Artois (1366), Wielicka
salt (1241?) Weihenstephaner beer (1040?) and Weltenburger
Kloster Barock Dunkel beer (1050?). The 1266 'Bakers
Marking Law' is claimed as the earliest English enactment
on marks and the earliest UK litigation over a mark dates
Trademark law as such emerged in the 1870s, with the first
modern UK law in effect from 1862, first Japanese law
in 1884 and the first Australian national trademark law
This site features a more detailed profile with background
about the nature and history of trademarks, searching
trademark databases and other issues -
- history, rationale, registration regimes, Australian
and international law
- the evolution of marks and trademark law
frameworks - Madrid and other agreements
- a snapshot of the Australian regime
- major writing about trademarks and trademark protection
- legislation, naming patterns, valuation and other
- marks and logos as a focus of contention about culture
- registering and protecting marks
- tools for identifying whether a mark is protected
in Australia and overseas
- a discussion of logos as an area of trademark protection
- protection of colours and shapes as trademarks
- the emergence of sounds, smells and even colours as
- geographical indications and other certification marks
- leading Australian disputes regarding trademarks
- historical background to the development of trademarks
as a business practice and regulatory issue
is also a multi-page note on appellations
and other geographical indications.
names in space
Intellectual property aspects of domain names - in
particular domains that are the same as those of trademarks,
corporate names and celebrities - have been a major point
of contention across the globe.
That reflects national variations in trademark and other
law (eg rights of personality or celebrity): while international
treaties such as the Paris Convention seek to harmonise
the legislation of individual states there are differences.
It also reflects disagreement about mechanisms for preventing
or resolving perceived infringements of rights, such as
the Uniform Dispute Resolution Process (UDRP) established
by ICANN for gTLDs
and the US AntiCybersquatting Protection Act (ACPA),
discussed in detail here.
Those mechanisms have been assailed as contrary to "spirit
of the web" and overly biased towards the interests
of major corporations.
We'll be providing more information about domain naming
and cybersquatting in the near future. In the interim
the following articles provide different perspectives:
Michael Blakeney's 1999 Murdoch E-Law Journal article
on Interfacing Trade Marks & Domain Names is
a concise analysis by a leading Australian thinker.
Marketing Your Website: Legal Issues Relating to the Allocation
of Internet Domain Names, a 1998 article
by Brian Fitzgerald, Leif Gamertsfelder and Tonje Gulliksen
in the Uni of NSW Law Journal, is a brief introduction
from down under.
Dan Burk's 1995 paper
Trademarks Along the Infobahn: A First Look at the
Emerging Law of Cybermarks, available in the Richmond
Journal of Law & Technology, has become a classic.
David Loundy's 1997 paper
A Primer on Trademark Law & Internet Addresses
is also good value, albeit from a US perspective and predating
Kenneth Dueker's Trademark Law Lost in Cyberspace:
Trademark Protection for Internet Addresses paper
in the Harvard Journal of Law & Technology
is less incisive but offers facts and figures. 14% of
the 'Fortune 500', for example, found that their preferred
domain name had been registered by another entity - something
that's driven defensive registration in new gTLDs and
ccTLDs. For perspective from the Max Planck Institute
see Torsten Bettinger's 1997 Trademark Law in Cyberspace:
The Battle for Domain Names paper
and Annette Kur's 1998 The Domain Name Versus Trade
Mark Dilemma paper.
Webvertising: Unfair Competition & Trademarks on the
Internet (London: Kluwer 1999) edited by Mathias Stecher,
is a compilation of national reports from 15 countries
examining unfair competition, trademark law and domain
Sally Abel's Trademark Issues in Cyberspace: The Brave
New Frontier paper
in the Michigan Telecommunications & Technology
Law Review updates discussion in the US immediately
prior to the contentious Anti-Cybersquatting Protection
Act (ACPA), intially referred to as the Trademark
Cyberpiracy Prevention Act.
The constitutionality and general effectiveness of that
Act - increasingly criticised as badly drafted and potentially
allowing profiteers with deep pockets to ride roughshod
over legitimate owners of trademarked names - is being
contested in litigation involving Playboy, Yahoo!, the
New York Yankees and others.
The OECD's 2002 paper (PDF)
on Cybersquatting: The OECD's Experience & the
problems it illustrates with Registrar practices and the
WHOIS system counters some of the more problematical
claims in Milton Mueller's passionate but - for us - often
very unpersuasive lament Ruling the Root (Cambridge:
MIT Press 2002).
In decrying ICANN's closeness to government and intellectual
property interests Mueller charged that
interests now view expanded WHOIS
functionality as a way to identify and serve process
upon the owners of allegedly infringing Web sites ...
'technical coordination' of the domain name system is
already being leveraged to police the content of Web
sites as well as their domain names. Moreover, public
law enforcement agencies, notably the US Federal Bureau
of Investigation, have become deeply interested in the
use of WHOIS to supplement their law enforcement activities.
Ultimately, the intent seems to be to make a domain
name the cyberspace equivalent of a driver's license.
Only, unlike the driver's licenses database, this one
would be publicly accessible to anyone and everyone
to rummage through as they pleased.
a detailed, although dry, discussion of the more general
1995 Australian Trademarks Act see Trade Mark Law in
Australia (Sydney: Butterworths 2000) by Brian Elkington,
Michael Hall & David Kell.
Tom Blackett's Trademarks (Basingstoke: Macmillan
1998) offers a crisp introduction to trademark management
and other issues.
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