The trademark often is infringed when we see the globalized world and the market becoming more virtual. Such an online marketplace which is primarily the e-commerce platform is accessible worldwide and provides efficient services that help in giving the customer more options while purchasing the product. Taking the example of
Territoriality of TM
Issues concerning the trademark owner and providers of online marketplace inevitably occur due to the nature of e-commerce. Since e-commerce are accessible worldwide and the nature of TM is territorial. Such availability of e-commerce across the world tends to create various disputes among similar TM owners in two jurisdictions. Since this TM does not provide the protection worldwide and protect nationally where the TM is registered and tends to be used in the general course of nature. Therefore, there are probable chances that the TM has multiple users across the world.
This means the control over the TM has with the owner in that specific country and the original offer of those products for sale in that specific country. Nevertheless, in case of products being sold outside the domain of the specific country where the TM owner doesn't have the right, then it is highly probable that it will end up infringing the TM of other owner in the target country. Such an e-commerce industry generally sells the product even outside the specific country. In the case of parallel importation where the person purchases the product for their personal use in the country where the trademark owner has consented to put it in the market of that country, such trademark infringement rules won't follow. If that person transports the product to another country and further offers to a sale then there will not be any infringement as per the principle of parallel import.
Such a global nature has resulted in the product being sold anywhere to any interested parties, the major question that remains unresolved that whether such use of the trademark will be considered infringement.
This was the recent case on the trademark rights of brand Beverly Hills Polo Club which are owned by different entities in the US and EU/
In this case,
Summarizing the same, a trademark to be used in the e-commerce website can be accessed around the world on the premise that the consent of the owner has been taken where the product has been specifically marketed.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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