Baker & McKenzie Presented by Gabriela Vendlova 3 December 2002 Intellectual Property Rights: Importance of Trademark Protection in the Digital World

Baker & McKenzie GENERAL ISSUES OF TRADEMARK LAW KEY ISSUE: THE GLOBAL REACH OF INTERNET VS. THE PRINCIPLE OF TERRITORIALITY OF TRADEMARK LAWS PRACTICAL PROBLEMS OF INTERNET-RELATED TRADEMARK USE HOW TO SOLVE PROBLEMS OF INTERNET-RELATED TRADEMARK USE

Baker & McKenzie KEY ISSUE: THE GLOBAL REACH OF INTERNET VS. THE PRINCIPLE OF TERRITORIALITY OF TRADEMARK LAWS  Use of trademarks on the Internet has cross-border, international and potentially multi-jurisdictional exposure and impact  Trademark law, by contrast, has always been used on the principle of territoriality -uncertainty for any use of trademarks on the Internet.

Baker & McKenzie PRACTICAL PROBLEMS OF INTERNET- RELATED TRADEMARK USE Conflict of Laws  country where the server with vendor’s website is located (one country)  country for which market is the vendor’s website intended (one or more countries)  any country from which the vendor’s website may be accessed (all countries worldwide)  other (e.g. Country of Origin Rule) Conflict of Trademarks  trademarks from different territories (countries) meet in “cyberspace”  uncertainty of trademark use on the Internet  monopolization of trademarks on the Internet

Baker & McKenzie HOW TO SOLVE PROBLEMS OF INTERNET-RELATED TRADEMARK USE  Multinational or global treaties and regulations (to minimize conflict of laws)  Localization of websites by vendors (to minimize conflict of laws and conflict of trademarks)  Trademark searches and investigations (to minimize conflict of trademarks).

Baker & McKenzie SPECIFIC TRADEMARK INTERNET- RELATED ISSUES DOMAIN NAMES AND TRADEMARKS TRADEMARK ABUSE OF WEB TECHNOLOGIES

Baker & McKenzie DOMAIN NAMES AND TRADEMARKS Registration of Trademarks as Domain Names Registration in Bad Faith - cyber-squatting - competitors Registration in Good Faith Registration of Domain Names as Trademarks

Baker & McKenzie TRADEMARK ABUSE OF WEB TECHNOLOGIES Hyperlinking and Trademark Infringement Deep linking (as a specific type of hyperlinking) may constitute confusion by customers about the origin of the trademark used within the deep-linked websites and therefore such deep-linking practices may be regarded as trademark infringement. Metatags and Trademark Infringement Unauthorized use of third party’s trademark in metatags may infringe trademark, given that such use has misleading character concerning the origin of the trademark or goods and/or services associated with such trademark.

Baker & McKenzie EU LAW (IN RELATION TO TRADEMARK INTERNET- RELATED ISSUES) EEC DIRECTIVE TO APPROXIMATE THE LAWS OF THE MEMBER STATES RELATING TO TRADEMARKS (89/104/EEC) EC REGULATION ON THE COMMUNITY TRADEMARK (40/1994/EC) EC DIRECTIVE ON CERTAIN LEGAL ASPECTS OF INFORMATION SOCIETY SERVICES, IN PARTICULAR ELECTRONIC COMMERCE, IN THE INTERNAL MARKET (“E-COMMERCE DIRECTIVE”) (2000/31/EC)

Baker & McKenzie EEC DIRECTIVE TO APPROXIMATE THE LAWS OF THE MEMBER STATES RELATING TO TRADEMARKS (89/104/EEC) Limited harmonization Member States remain free to fix the provisions of procedure concerning the registration, the refusal, the revocation and the invalidity of trademarks Does not exclude the applicability to trademarks of the provisions of laws, other than trademark law, of the Member States - such as provisions relating to unfair competition, civil liability or consumer protection Lists examples of signs which may constitute a trademark

Baker & McKenzie EEC DIRECTIVE TO APPROXIMATE THE LAWS OF THE MEMBER STATES RELATING TO TRADEMARKS (89/104/EEC) (cont’d) Trademarks must actually be used Same protection under the legal systems of all the Member States No opposition to the use of a trademark subsequent to another trademark when the use was knowingly tolerated for a substantial length of time Consistent with the Paris Convention

Baker & McKenzie EC REGULATION ON THE COMMUNITY TRADEMARK (40/1994/EC) Directly applicable in all Member States without any need for transposition into local law Introduces the Community Trademark Establishes the Office for Harmonization of Internal Market (OHIM) Although the Regulation does not deal with trademark protection in the Digital World, it introduces “global” Community Trademark, which is globally protected within all Member States of the EU. Such global protection minimizes conflict of trademarks and conflict of laws, at least within the EU.

Baker & McKenzie EC DIRECTIVE ON CERTAIN LEGAL ASPECTS OF INFORMATION SOCIETY SERVICES - IN PARTICULAR ELECTRONIC COMMERCE, IN THE INTERNAL MARKET (“E-COMMERCE DIRECTIVE”) (2000/31/EC) Legal framework for e-commerce and information services in general Applicable law (“Country of Origin Rule”) Country of Origin Rule does not apply (inter alia) to copyright, neighboring rights, and other rights including industrial property rights (i.e. trademarks). -does not resolve the conflict of law problem with respect to trademarks

Baker & McKenzie STATUS OF TRADEMARK LAW IN TRANSITION COUNTRIES (IN RELATION TO TRADEMARK INTERNET- RELATED ISSUES) - IMPLEMENTATION OF EU LAW CZECH REPUBLIC SLOVAK REPUBLIC POLAND HUNGARY

Baker & McKenzie CZECH REPUBLIC European Union Legislation and Its Implementation General issues EEC Directive to approximate the laws of the Member States relating to trademarks (89/104/EEC) -Implemented -Conflicts between CTM and registered or pending national trademarks -National exhaustion of trademark rights (Czech Republic) Regulation on the Community trademark (40/1994/EC) - Directly effective as of the date of accession to the EU

Baker & McKenzie CZECH REPUBLIC EC Directive on certain legal aspects of information society services - in particular electronic commerce, in the Internal Market (“E-commerce Directive”) (2000/31/EC) - Not yet implemented EC Regulation on the export and re-export of goods infringing certain intellectual property rights (3295/94/EC) Specific National Legislation - None

Baker & McKenzie CZECH REPUBLIC Domain Names and Internet - No specific legislation -Registration of trademarks as domain names: CZ-NIC - special request only - Registration of domain names as trademarks: Industrial Property Office - as any other trademark - has refused to register certain domain names (lack of distinctiveness)

Baker & McKenzie CZECH REPUBLIC Case Law - Several court decisions - Preliminary injunctions in Internet trademark disputes Jurisdiction and Applicable law - No specific amendments to national private international law - No specific guidelines Emerging Issues - New Trademark Act (2003) - Community exhaustion of trademark rights

Baker & McKenzie SLOVAK REPUBLIC European Union Legislation and its Implementation – Issues EEC Directive to approximate the laws of the Member States relating to trademarks (89/104/EEC) Implemented Regulation on the CTM (40/1994/EC) - Directly effective as of the date of accession to the EU EC Directive on certain legal aspects of information society services - in particular electronic commerce, in the Internal Market (“E-commerce Directive”) (2000/31/EC) EC Regulation on the export and re-export of goods infringing certain intellectual property rights (3295/94/EC) - Implemented

Baker & McKenzie SLOVAK REPUBLIC Specific National Legislation - None Domain Names and Internet - No specific legislation -Registration of trademarks as domain names: EuroWeb Slovakia - rules for domain name registration - protection of trademark holders -Registration of domain names as trademarks: Industrial Property Office - as for any other trademark - has refused to register certain domain names (lack of distinctiveness)

Baker & McKenzie SLOVAK REPUBLIC Case Law - No court decisions Jurisdiction and Applicable law - No specific amendments to national private international law - No specific guidelines Emerging Issues - Interested in harmonization of international private and procedural law

Baker & McKenzie POLAND European Union Legislation and Its Implementation – Issues EEC Directive to approximate the laws of the Member States relating to trademarks (89/104/EEC) - Implemented - Interim provisions (incompatibility with EU law) - Regional Exhaustion (Poland + States of free trade Zone) Regulation on the CTM (40/1994/EC) - Directly effective as of the date of accession to the EU EC Directive on certain legal aspects of information society services - in particular electronic commerce, in the Internal Market (“E-commerce Directive”) (2000/31/EC) - Not yet implemented (expected to be implemented in Spring 2003)

Baker & McKenzie POLAND Specific National Legislation - None Domain Names and Internet - No specific legislation -Registration of trademarks as domain names: NASK - no internal rules for trademark protection - since December 2002: trademark arbitration -Registration of domain names as trademarks: Patent Office - as for any other trademark - has refused to register certain domain names (lack of distinctiveness)

Baker & McKenzie POLAND Case Law - No court decisions Jurisdiction and Applicable law - No specific amendments to national private international law - No specific guidelines Emerging Issues - Poland has implemented Directive 98/71/EC on the legal protection of designs. This Directive gives a legal basis for registration of computer symbols and typefaces as designs.

Baker & McKenzie HUNGARY European Union Legislation and its Implementation – Issues EEC Directive to approximate the laws of the Member States relating to trademarks (89/104/EEC) - Implemented - National exhaustion of trademark rights (Hungary) Regulation on the CTM (40/1994/EC) - Directly effective as of the date of accession to the EU

Baker & McKenzie HUNGARY EC Directive on certain legal aspects of information society services - in particular electronic commerce, in the Internal Market (“E-commerce Directive”) (2000/31/EC) - Partially implemented (Act CVIII of 2001 on Certain Aspects of Electronic Commercial Services and Information Society Services - Country of Origin Rule, Limited Liability of Internet Service Providers) Specific National Legislation - None

Baker & McKenzie HUNGARY Domain Names and Internet - No specific legislation - Registration of trademarks as domain names: Council of Hungarian Internet Service Providers - internal rules for trademark protection - active protection of trademarks - Registration of domain names as trademarks: Patent Office - as for any other trademark Case Law - Several pending litigations - A few preliminary injunctions

Baker & McKenzie HUNGARY Jurisdiction and Applicable law - No specific amendments to national private international law - No specific guidelines Emerging Issues -Registrars' liability for trademark infringement -Relation between pending trademark and domain-name registration (for an identical denomination)

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