NZ law too slow for online TM war

by Hannah Norton10 Apr 2015
Traditional legal channels are too slow to combat rapidly increasing cases of online trademark wars, a New Zealand IP specialist says.

Bearing fancy names like brand-jacking, typo-squatting, cyber-griping, and even meta-tag deployment; online trademark infringements have surged in recent years, IP lawyer and Zone Law principal Theodore Doucas told NZLawyer.

But, with a legal system sometimes “slow to react to the rapidly-changing online environment” and with little immediate reprieve for businesses, many are opting instead to take commercial measures such as completely rebranding, he said.

Recently he worked on a case where a third party had bought a lower level domain name and filed a trademark application for his client’s brand, thereby temporarily legitimatising their illegal rights.

“Unfortunately, our client had not registered their trademark; therefore rather than going through the legal process, including an opposition which would have taken months, if not years, to resolve, the easiest commercial solution for our client, who was an emerging SME, was to rebrand.”

And that’s the biggest difficulty for New Zealand businesses faced with online trademark wars – the length of time it can take to legitimise rights in a brand, he said.

Trademark owners who have previously relied on unregistered trademark rights have to wait at least six months to have their rights recognised through registration.

“Six months is a long time in the life of an SME.

“Only then can they stop the illegal diversion of their online business to another company’s website, for example, by contacting private companies such as Google or Facebook or applying for relief through the Domain Name Commissioner.”

These registration timelines should be improved so legitimate rights are clarified earlier, he said.

“Our legal system should be promoting new ways in which we can legitimise a trader’s rights through a faster registration process especially those traders whose rights are being infringed.”

But the buck doesn’t stop in New Zealand.

Issues such as typo-squatting – where a competitor relies on typographical errors by internet users to divert them to their websites – often occur overseas, which can also cause “jurisdictional headaches” for lawyers and the legal systems, he said.

“We are becoming more reliant on private companies such as Google and Facebook to act as cyber-police… [and] disable typo-squatting domains.”

Kiwi IP lawyers are also carefully following international case law about online trademark infringements, he said.

“Globally, the law surrounding these new infringement tactics is still under construction. We look carefully at the case law and systems being developed internationally to assist us with similar problems in New Zealand.

“However, the very existence of our own Domain Name Commission shows that we are keeping abreast of these issues and creating new means to address these issues,” he conceded.