12 November, 2019 Company news

Internet logo protection

Many continue to ask, why do I need to register a trademark if I have an online store and everything is conducted on the Internet?

And Bliss Law Firm tirelessly repeats that the owner of ТМ has a wide range of rights and opportunities to protect his brand, especially in the era of doing business on the Internet.

Consider the case of the famous cosmetic company Holy Land as an example of a lawsuit.

Holi Land LLC applied to the court as the owner of a trademark registered in the 35th grade of the Nice Classification, which is confirmed by the corresponding certificate of Ukraine.

The position of the Claimant-owner of TM: Holy Land LLC was revealed that on the web pages of the defendant’s website, the unlawful use of marks for the Claimant’s goods and services is carried out without his permission during the offer of goods for sale, which is confirmed by a certificate with information about the site owner. The Plaintiff Company considers such actions to be a violation of its intellectual property rights and asks the court to prohibit the use of the trademark on the certificate, as well as designations similar to it.

Respondent's position: he did not recognize the claimed claim, considering it unreasonable, since on the main page of his website the brand name of the Holy Land company is contained exclusively in the list of brands whose goods are distributed by the defendant. At the same time, in the above certificate of the Claimant for the trademark there are no goods that would be covered by the registered mark, and the 35th class of the Nice Classification covers specifically services, not goods.

Thus, the respondent does not provide any of the services under the sign of the plaintiff, and on its website does not offer any services under the sign of the plaintiff. The defendant independently sells goods, including the plaintiff’s brand, which he himself acquires for further distribution - therefore, here the interests of the plaintiff and the defendant cannot overlap.

The position of the court: the claim of LLC "Holy Land" is subject to satisfaction in full, since:

  • Registration for the 35th class of the Nice Classification indicates the exclusive right to use TM in the 35th class.
  • The use of the mark for goods and services, namely the placement of the indicated mark on the site for advertising purposes, is the plaintiff's exclusive right, since the indicated services are the same or related (similar) to the services of the Claimant's TM so much that they can be confused.
  • The actions of the defendant on the use of the mark for goods and services of the Claimant on the web pages of the plaintiff violate the property rights to the intellectual property of Holy Land LLC, since this company has the exclusive right to use the mark for goods and services.

The court concluded that for another person to take actions regarding the use of TM Holy Lend, it is necessary to obtain the Plaintiff’s respective permission, and the implementation of such use without such permission is unlawful and violates the intellectual property rights of Holy Land LLC.