Speech at the conference on the international sale of movable property.
[:en]On 15.11. on the occasion of the conference on the international sale of movable property in the Aula Magna of the University of Verona, I had the pleasure of briefly presenting a topic that I have already dealt with in the following articles: the sale of the domain name e tld (internationally).
If it is of interest to you, here are the slides of the conference.[:]
But could an American in Rome also use the .eu?
[:en]On date 12 July 2012 the European Court of Justice issued a very interesting ruling in the field of internet law and e-commerce. Specifically, it stipulated that top-level domains (Tld - top level domain) ".eu" are only reserved for companies that have "its registered office in the territory of the EU'..
In particular, under EU law (Article 12 of Regulation No 874 of 2004) registration of the Tld '.eu' can only be applied for by the "domain names [...] of registered national trade marks, registered Community trade marks, [...] and holders or licensees of prior rights."
The Court of Justice, in interpreting the above-mentioned rule, considered that for "licensees of pre-existing rightsi' may not include companies or persons from the european union who limit themselves, at the request of a trade mark proprietor established in a third country, to registering the trade mark without being allowed to use it in the course of trade.
The present case, to make the matter clearer, involved a American society(Wlash Optical), which is active in the online sale of contact lenses and other eyewear. It has operated www.lensworld.com since 1998 and became the owner of the Benelux Lensworld trade mark, registering it on 26 October 2005. In November 2005, it decided to enter into a licence agreement with Bureau Gevers, Belgian company advising on intellectual property issuesto register the domain 'lensworld.eu' in its name, but on behalf of Walsh Optical itself. at the UERid.
One year later, Pie Optiek, a Belgian company competing with the American company, also applied for registration of the website "www. lensworld.eu." This request is, however, rejected.
Pie Optiek therefore brought an action against the American company, claiming that, as it was based in a third country, it was not entitled to use the .eu domain. The court of first instance dismissed the action. Pie Optiek appealed against the judgment. The Brussels Court of Appeal referred the case to the Court of Justice requesting an interpretation of Article 12(2) of Regulation No 874 of 2004. The Court thus holds that a person who is merely authorised by the proprietor of the trade mark, established in a non-member country, to register in his own name, but on behalf of the licensor, a domain name identical or similar to the trade mark itself, without, however, being permitted to make commercial use of it, cannot be regarded as a licensee of prior rights.
The Court notes on this point how the .eu top level domain was created in order to increase the visibility of the internal market in virtual Internet-based tradeby offering a clearly identifiable link to the European Union, the associated regulatory framework and the European market, and by allowing EU companies, organisations and natural persons to register in a domain that makes this link obvious.
For this reason, domain names should only be registered if requested by any party that meets the criteria of presence in the territory of the European Union. More precisely, by companies that have their registered office, central administration or principal place of business in the territory of the Unionby any organisation established in its territory as well as by any natural person residing in the territory of the European Union.
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Internet law part I: the trade mark and the domain name.
[:it]To be able to enter into this topic, it is necessary to take a preliminary look at some concepts that touch on both industrial law and the customary rules of the Internet world.
First of all, it is necessary to see how the domain name is framed within theItalian system. The legislator
regulated this figure for the first time with Art. 22 of the IPC (Industrial Property Code), introducing the prohibition to adopt as "a domain name a sign which is the same as or similar to another's trade mark where, because of the identity or similarity between the proprietors of those signs and the goods or services for which the trade mark is adopted, there exists a likelihood of confusion on the part of the public which may also consist in a likelihood of association between the two signs".
The domain name, therefore, may also be relevant as a distinctive sign because in the light of the progressive 'commercialisation' of the Internet, the entrepreneur no longer uses just any domain name, but requires a specific Internet address to make the products or services offered by his commercial site identifiable to surfers.
The doctrine and jurisprudence, even before the introduction of the aforementioned definition within the c.p.i., recognised the distinctive capacity of the domain name, recognising that "it does not seem justifiably contestable that the domain name in this case also has a distinctive character of the user of the site - capable of contributing to the identification of the same and of the commercial services offered by it to the public by means of the interconnection of networks (Internet) - with some apparent affinity with the figure of the sign, as the (virtual) place where the entrepreneur contacts the customer and concludes the contract with him".[1]
This interpretation is again confirmed following the introduction of the aforementioned Article 22 IPC by a recent decision of the Court of Milan of 20 February 2009, which definitively confirms the dominant jurisprudential orientation in favour of the recognition of the distinctive nature of the domain name formed prior to the IPC.[2]
Trademark protection regulations are also flanked by the network rules. On the Internet, in fact, the principle of "first come, first served", in on the basis of which a domain name is assigned to the first applicant, regardless of whether it conflicts with the rights of others. Domain allocation bodies are not obliged to carry out any prior checks to prevent/avoid registration - such as domain name - of signs or trade marks that are confusingly similar to a registered trade mark by a person other than the owner of the distinctive sign. In other words, under the current method of allocation of domain names, all names not yet registered (such as domain name) are freely registrable by anyone on the basis of the priority of applications, regardless of whether or not those names correspond to more or less well-known names or distinctive signs of third parties.
At this point, it is necessary to analyse the actual method of application of these rules and, to do so, it is necessary to subdivide trade marks into two macro-groups, namely non-renowned and renowned marks.
(a) cases of tomorrow's trade mark with no reputation
In the first case, if the domain name is identical or similar to another person's trade mark not having a reputation, two requirements must be met in order for that person to be able to prevent the use of that domain name:
- l'identity or similarity of the mark with the domain name (e.g. the registered trade mark is ABCD s.r.l. and the third party uses a coincident domain name www.abcd.it);
- l'identity or similarity of products or services offered. (both operate in the same branch of the market);
In that case, the principle of speciality of trade mark protection provided for and regulated by Art. 2569(1) of the Civil Code will apply.[3] and Article 20 para. 1 c.p.i. (a) and (b).
Obviously, the closer the products and services on offer are, the greater the public's confusion as to where they actually come from.
Therefore, even if there is no identity between the product sectors of the non-renowned brand and the domain nameif the bad faith of the holder of the domain name, that activity is deemed to be capable of precluding the holder of the trade mark from using it on the Internet as a further distinctive sign and therefore objectionable under Article 22 of the Code of Civil Procedure. [4]
(b) cases of tomorrow name of renowned trade mark
In the case of a trade mark with a reputation or high renown, the use of a domain name similar to the trade mark shall be deemed to be undue if the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.[5]
ABSTRACT
- the legislator, for the first time, regulated the domain name in art. 22 c.p.i. (industrial property code)
- the dominant legal orientation in favour of recognising the distinctive nature of the domain name
- in cases of domain name of an unrecognised brand name if the domain name is identical or similar to another person's trade mark, there must be identity or similarity of the trade mark with the domain name and identity or similarity of the goods or services offered in order to inhibit use of that domain name
- in cases of domain name of a renowned trade mark, it is considered undue to use the domain name similar to the trade mark also in cases of use of signs for goods and services which are not similar if the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark
[1] Court of Milan, Order of 10 June 1997 - Amadeus Marketing SA, Amadeus Marketing Italia s.r.l. c. Logica s.r.l.
[2] "The domain name has a twofold nature, technical for addressing the logical resources of the Internet network and distinctive. As a distinctive sign - constituted by the part characterising the domain name called Second Level Domain - it may come into conflict with other signs in application of the principle of the unitary nature of distinctive signs laid down by art. 22 c.p.i.". Tribunale Milano, 20.02.2009, Soc. Solatube Global Marketing Inc. and others v. Soc. Solar Proiect and others.
[3] art. 2569, para. 1. c.c.[3] "A person who has registered in the form prescribed by law a new trade mark capable of distinguishing goods or services shall have the right to use it exclusively for the goods or services for which it is registered".
[4] Court of Milan, order of 10 June 1997 "The unlawful practice of confusion known as domain grabbing consists in registering, with the Naming Authority, another person's trade mark as a domain name, for the sole purpose of appropriating the notoriety of the sign, constitutes in itself an act of infringement - censurable pursuant to art. 22 IPC - also in so far as it is an activity capable of precluding the owner of the trade mark from using it on the Internet as a further distinctive sign".
[5] Court Milan, 20.02.2009 "The unlawful practice of confusion known as domain grabbing consists in the registration, with the Naming Authority, of another person's trade mark as a domain name, for the sole purpose of appropriating the reputation of the sign, constitutes in itself an act of infringement - censurable pursuant to Article 22 of the Code of Criminal Procedure - also in so far as it is an activity capable of precluding the proprietor of the trade mark from using it on the Internet as a further distinctive sign"; Court Modena, 18.10.2005 "The assignment of a domain name (website name) corresponding to a trade mark - even if only de facto, but well known - may constitute usurpation of the sign and unfair competition in so far as it entails the immediate advantage of linking one's activity to that of the proprietor of the trade mark, taking advantage of the reputation of the sign and taking unfair advantage thereof. Moreover, the infringement of a trade mark - perpetrated by its use as the domain name of an internet site - is not precluded by the fact that that use has been authorised by the appropriate authority for the registration of domain names, nor by the fact that the proprietor of the trade mark has not previously registered the same name with that authority.".
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