Lawyer Monthly Magazine - May 2019 Edition

between the two trademarks, or used on goods and services which are not similar to those of the original trademark, but benefitting from the registered trademark’s existing reputation and gaining an unfair advantage. In order for infringement to be valid, certain conditions must be satisfied, such as the similarity in the overall impression created by the two trademarks, any evidence of actual confusion by consumers and the physical proximity of the goods in the marketplace. An example of confusion in relation to trademark infringement was examined in various case law in relation to online marketplace platforms. For example, in the case Lancome v. eBay the Brussels Commercial Court refused to hold eBay liable for counterfeit cosmetic products sold through its website. In contrast, in the case of L’Oréal v eBay, it was stated that eBay was held liable for infringing activity taking place on its online marketplace. Specifically, the Court ruled that an owner of a trademark may prevent an online marketplace operator from advertising goods offered for sale on the marketplace bearing that specific trademark, in cases where the advertising of the product is not transparent as to the origin of the product. What is important to have in mind is that it does not matter whether the infringement takes place over the internet or not; the elements which need to be satisfied for trademark infringement remain the same. However, the peculiarities and the nature of the internet may make it difficult to prove in certain cases that the requirements are satisfied. This is something which always depends on the circumstances of each case. Trademark infringement also faces issues relating to jurisdiction. In the EU, the ECJ states that generally, the only courts that are in the position to assess whether or not an action is infringing on the rights of a national trademark are the courts of the Member State in which the trademark is protected. Therefore, the issue lies in determining jurisdiction in terms of the location of the expected damage, versus the location where the trademark in question is registered. Despite the above, trademark infringement is a lot easier to prove than the tort of passing off, mainly due to the fact that trademark infringement is governed by statutory law, whereas passing off is governed by common law; also, trademark infringement deals with registered rights, whereas passing off deals with unregistered rights. Proving passing off means that one needs to show goodwill, misrepresentation by the other party and that the misrepresentation has caused damage to the goodwill. Therefore, as lawyers, we always advise our clients who wish to protect their work to proceed with registrating their work from the beginning. What options are there for businesses wanting to protect their assets online? In order for a person’s work to be eligible for copyright protection, it should be original and created by them individually; it must exist in some physical form for any period of time and the work must be classified as creative. In Cyprus, as in many other countries, no official registry exists, and no registration requirements must be met in relation to such works. The protection of the work simply exists from the date of its creation, namely that the creator will have copyright protection once the aforementioned criteria for protection are met. It is important that each owner of the copyright has in place all proof relating to their creation, including the progression of the work, ideas, drafts, rough notes, sketches etc., which will serve as evidence that they are truly the creators of the specific art. To help protect the copyrighted work, it is advisable to mark the work with the International copyright symbol © as well as the owner’s name and date of publication of such works accompanied by the phrase “all rights reserved”. It will also indicate who the owner was at that time in case it is then necessary to approach them for asking permission to use the work. Additionally, the owner could What is important to have in mind is that it does not matter whether the infringement takes place over the internet or not; the elements which need to be satisfied for trademark infringement remain the same. MAY 2019 39 Expert Insight www. lawyer-monthly .com

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