In these digital days, when internet access spans the globe, what kind of borders are there, in terms of intellectual property (IP)?
A recent ICAEW Legal Alert helped clarify.
The case was between a European and a US company, both of which ‘had the same distinctive word – Merck – in their names’. To deal with this, they’d worked together to draw up boundaries around ‘their respective uses of the word worldwide’.
But the case was brought because the European group was concerned that the American group’s use was spreading, and seeping into Europe.
They ‘started a legal action against them in the UK for trade mark infringement and breach of the agreement’.
So what was their concern?
Mainly, ‘that the Americans were using ‘Merck’ in the domain names of various websites allegedly targeting the UK, and on Facebook, Twitter, LinkedIn and other similar sites’.
This threw up the interesting question of whether the US group was, explicitly, ‘‘targeting’ UK consumers’ – a question that needed addressing before the UK courts could even establish ‘if they had jurisdiction to hear the case’.
We’re highlighting the issue because the list that emerges to clarify this seems useful.
‘It is not enough’, says the Legal Alert, ‘that a website is accessible from the UK. The test is whether average consumers would consider that the website is targeted at them.’
Here’s our summary of the list of factors agreed upon. If a website ticks yes to any of these, it can be regarded as ‘targeting the public in the UK’.
• Does the site state that it is aimed at UK customers? Does it, for instance, say the company ‘serves customers in the UK, or in multiple countries that could include the UK’? Or does it ‘include the UK, or a list of the areas, including the UK, where the owner of the site is prepared to send orders’?
• How much UK traffic is there to the site?
• Does the company operate multinationally?
• Is the site in English?
• If it’s a shopping site, in which currency does it list its prices?
• Does it use international contact numbers?
• What’s the domain name?
• Does it use a ‘UK-specific top-level domain name’?
• Where is the site-owner located?
• Has the owner ‘spent money on an internet referencing service to make it easier for consumers in the UK to access the site’?
We thought this clarification might interest businesses in any context trying to ascertain another, international company’s intentions.