Web use affects trade-marks
For the London Free Press – April 28, 2007
It is not always clear if the use of a trade-mark on a website to advertise one’s services is considered “use” of that trade-mark in countries other than where the website or its owner is based.
That issue can be important to determine if one is violating the trade-mark rights of another or has acquired rights to a trade-mark in another country.
A recent case from England shows that under the right circumstances, the answer is yes.
Richard Dearlove, a record producer and recording artist in the U.K. known as Diddy, brought an action against record producer and recording artist Sean Combs, known as Puffy, Puff Daddy and P. Diddy.
In August 2005, Combs announced he was to be known as Diddy. Dearlove’s lawyers wrote Combs requesting he cease using the name in the U.K. as Dearlove claimed rights to that name. He refused and Dearlove commenced proceedings for passing off — using a mark in a way that might confuse the public that your wares or services are those of another.
Dearlove’s claim included assertions that in the course of trade in the U.K., Combs had advertised and provided his goods and services using the word Diddy, including on the websites www.diddyonline.com and www.badboyonline.com.
Combs admitted the allegations about www.diddyonline.com, but disputed the website was directed toward persons in the U.K. as it was registered in the U.S.
The parties reached a settlement in 2006. Combs was allowed to use the professional name P. Diddy and undertook to remove any materials from the U.K. within his custody power or control that made reference to him as Diddy.
In January 2007, Combs changed the website www.diddyonline.com to automatically re-direct users to www.p-diddy.co.uk, where all references to Combs were changed to P. Diddy. The problem then became the www.badboyonline.com site, together with YouTube and MySpace, because they were all accessible from the U.K. and referred to Combs as Diddy.
The court reviewed the case law to determine when a trade-mark is in use via the Internet. The court took the position that placing a mark on the Internet from a location outside the U.K. can constitute use of that mark in the U.K. The fundamental question became whether or not the average consumer of the goods or services in issue within the U.K. would regard the advertisement and site as being directed at him.
Due to the fact the YouTube, MySpace and BadBoy sites all were used to advertise and promote Combs’ Press Play album and tour — including his U.K. dates — the court determined it was a use directed at users in the U.K.
The analysis will no doubt be used ito determine the issue of international trade-mark use.
