It's the end of the (Electronic Commerce) world as we know it

- Featured article by LAWYERS-ONLINE.CO.ZA

Trade Marks, Websites and gTLD’s - Protecting your trade mark in the era of electronic commerce

In today’s era of electronic commerce before selecting a mark a trade mark proprietor not only has to consider if any same or similar trade marks exist on the Trade Marks Register (e.g. IPBOFFIN); but also whether any common law marks such as company names (e.g. IP Boffin (Pty) Ltd), domain names ( www.ipboffin.co.za or www.ipboffin.com ), and well known marks exist on search engines such as Google. Even once a trade mark has been selected, an application filed and a mark registered, a trade mark proprietor m ust remain vigilant to ensure that a third party is not unlawfully using its mark or a mark similar thereto. It is becoming more and more difficult to prevent third parties infringing registered trade marks. A new relatively simple and cost effective progr amme has been implemented which provides a further mechanism by which trade mark rights can be protected, and all trade mark proprietors should consider utilizing this mechanism for maximum benefit.

During the course of 2013, approximately 1900 gTLD’s (Ge neric Top Level Domains) are likely to be released, making domain name space vast. These will include names such as .accountant, .attorney, .africa, .shop, .hotel etc. In order to provide protection for trade mark proprietors and to prevent cyber squatting ICANN (the Internet Corporation for Assigned Names and Numbers) has established a Trademark Clearinghouse (TCH). The TCH, which was launched on 26 March 2013, allows trade mark proprietors to register their marks before the new TLD is launched, thereby pr oviding protection from third parties registering a website using their trade mark after the TLD is operational. For example, a trade mark proprietor will be entitled to register www.ipboffin.attorney ( ipboffin being the trade mark which is registered with the TCH, and .attorney being the new gTLD).

The TCH is operated jointly by Deloitte and IBM, and can be considered a centralized repository and database of validated trade marks. The TCH will not necessarily prevent trade mark infringement, cybersquattin g or typosquatting, however it will assist trade mark proprietors in mitigating any damage that may arise. More importantly, if a trade mark is registered within the Sunrise Period, a preferential registration right is obtained which will allow the registr ation of the trade mark as a website name prior to registration thereof being open to the general public. A further benefit is that the clearinghouse will send alerts to the trade mark proprietor or its trade mark agent if a third party tries to register a website domain identical to a registered trade mark, thereby granting an opportunity to challenge the website domain registration.

RADEMEYER ATTORNEYS is able to assist in all company secretarial work including incorporation of all types of companies under the new Act, conversion of a Memorandum of Articles and Articles of Association into an MOI and conversion of CCs into private profit companies. Please contact our offices for a quotation.

Jennifer Eborall - Attorney
Kim Rademeyer - Partner