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2 Int'l J.L. Mgmt. & Human. 1 (2019)

handle is hein.journals/ijlmhs2 and id is 1 raw text is: www.ijlmh.com                                     ©2018 IJLMH I Volume 2, Issue 1 1 ISSN: 2581-5369
Trademark Law and the Internet
Riya Gulati
Paralegal at Law offices of Caro Kinsella &
Youth Ambassador for One Campaign
Ireland
I. INTRODUCTION
With the growth of internet, the trade mark law met with the issue of new type of trade mark infringement that
are committed on the internet by way of 'cyber- squatting' or 'domain grabbing'; key word advertising and the
problems that the omnipresence of the internet poses to the principle of 'territoriality' of the trade mark law.1
The trade marks are distinctive signs whose pivotal function is not only to identify the product but it also serves
as an indication of the source for the consumers. The trade mark law protects the interest of the traders and the
consumers' altogether. It is generally seen in the sphere of E-commerce that unfair trading of trade mark
usually takes place whereby the cyber- squatters who has no legitimate interests in the domain name and
usually in bad faith, registers the domain name which is identical or somewhat similar to the trade mark of the
proprietor,2 for example, where some unrelated party registered www. penneys.ie. Hence, the online consumers
have no assurance as regards to the reliability to the source from which they are buying and what actually they
are purchasing except for the domain name.3 The problem of cyber- squatting arose in late nineties in which the
traditional trade mark action involved the use of the trade mark in the course of the trade. When there was no
UDRP, some of the English courts inferred that the cyber squatters were making use of the trade mark as they
were abusing and taking undue advantage by extorting money from the trade mark owner who did not get his
domain name registered. The traditional cyber- squatting involved passive use of the trade mark where the
defendant replicated the trade mark in the domain name with the purpose of selling it to the trader or the
competitor. But now, it involves much more active use as the cyber squatter takes the domain names which
usually corresponds to the trade mark of the plaintiff with an intent of selling counterfeit goods or legitimate
goods by inducing the consumers to the website by using the complainant's mark. In the beginning, the judges
relied on the traditional trade mark principles in resolving domain name hijacking issues where the defendants
were known and present in the plaintiff's jurisdiction. There arose cases where the defendant was not present in
the same jurisdiction as that of the plaintiff and in certain cases the defendants was anonymous too. Therefore,
in these cases the traditional approach of trade mark action did not fit in. And also, the traditional jurisdiction
1 Jeremy Philips & lianah Simon, Trade Mark Use (Oxford University Press 2005) 263
2James Plotkin, 'The Model for a path forward. A proposal for a model law dealing with cyber- squatting and other abusive domain
name practices' [2015] 27 Denning Law Journal accessed 1 January 2015
3 Jessica Sganga, 'Trademark owner's strategy: Litigation v the UDRP' [2013] 13 Pepperdine Dispute Resolution Law Journal
accessed 2013 (301)
International Journal of Law Management & Humanities                                         Page 1

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