This post was first published on 7th July, 2014.
In this post, we will look into whether the mere use of trademark as part of a domain name or as an email id or even as private communication between parties can stand as proof of use of a trademark.
Documentary proof is generally submitted to show that an Applicant has been continuously using an impugned mark. It is an effort for Applicants to show trademark examiners how they use the trademark to represent the source of origin of products and services. In order to consider a document as evidence for the use of a trademark it should comply with the following:
a) The impugned mark should be reflected clearly on the document;
b) The mark should be used in reference to the identification of production or services to which the mark is applied; and
c) The document should be accessible to the relevant public.
For example, acceptable evidence may include labels or tags attached to a product that provides a physical indication that the mark applied on it is available for public use. It may also include advertising and marketing material displaying the mark.
In light of the aforementioned factors, we are now attempting to examine whether Trade Mark Offices consider domain names, emails and private communication as acceptable proof of use. Generally, mere submission of these instruments are not considered as sufficient proof of use of the mark in several jurisdictions.
The Indian Trademark Manual in Paragraph 18.104.22.168 states:
“Use of a mark as a domain name will not assist unless the evidence shows that the relevant goods/services have been offered for sale under the domain name. Prominent use of the domain name in web pages offering goods and services for sale may constitute trademark use, but each case should be considered on its own merits taking account the way the domain name has been used.”
In a more stringent manner the US Trademark Manual issued by the USPTO in paragraph 904.03(i)(B)(2), provides that:
“When a mark appears in the computer browser area as part of the URL, Internet address, or domain name of the website that houses the web page, consumers generally do not recognize this as trademark use. Instead, this use merely identifies the Internet location of the website where business is conducted and goods or services are offered.”… “Similarly, the use of the mark embedded in an e-mail address would be viewed as part of the website address where applicant may be contacted, rather than as a trademark.”
Furthermore, the guidelines issued by the ICAAN as part of Trade Mark clearing guidelines for the Sunrise domain name registration processes, specifically states that:
“Inclusion of a mark in a domain name, email messages, licenses to use a mark that include the mark as part of business name or business cards cannot be submitted as acceptable proof of use of evidence”
It is a well-settled principle that trademark protection is always limited to the goods and services to which the mark is applied. Domain names, email ids or private communication, however, do not provide an indication as to the goods and services to which said mark would be applied and therefore fail to function as specimens to prove the use of a trademark.
However, we cannot generalize that no email or private communication can be considered as proof of use. In cases where private communication including emails referring to the good or services to which the mark is applied, stating the sale or advertisement of such good or services, such communication may be considered as proof of use.
Image from here.