trademark infringement

Question

I am the owner of the brand igl in Malaysia. I authorized my distributor in Netherlands to distribute my brand in his home country. We secured our own website domain of iglnetherlands.com.
Then we recently found out that our competitor in Netherlands registered the domain igl.nl and points it to their own website mdst.nl

We did not register for the igl trademark in Netherlands. What can we do to protect ourself in this situation?

Answers: 1 public & 1 private

Lawrence lau
IP Broker

There are perhaps two (or three) issues involved with your question.

a) trade mark dilution - is IGL a generic term or a reference specific line of goods/services? If the competitor is deliberately misleading (potential) customers there may be a case for passing off but in proving ownership if you are too late in registering trademark, the authorities might conclude that the competitor has legitimate use of the domain

b) tortious interference with contractual relations ... you haven't identified the precise legal relation with your authorised channel. whether distributor, principal-agent, or rep. Depending on the precise wording it dictates who has legal standing to bring action in the EU jurisdiction. If the competitior is interferring with contract (and you need to consult a lawyer) then there may be a case.

c) domain name - a trademark is different from a domainname which is just textual placeholder in a namespace. There are specific procedures the registrars have for resolving cybersquatting and related disputes. Some specific cases on poisoning google search results may be relevant but in general, protection for domain names is weaker than the traditional trademark which is association with a good/service. There are mechanisms I'm aware of to "fix" such without recourse to the courts.

In summary, you've entered a jurisdiction (EU) which plays by slightly different rules than Malaysia (which is relaxed on IP by world standards) and now faced with the cost of fixing the problem, whether by negotiation (by buying the domain and reimbursing costs .. a form of pinkmail) or legal means (if can prove dilution). This is where an ounce of prevention could have prevented a pound of punishment (sadly IP is still underappreciated as competitive advantage). I hope this alerts you to what needs to be done in entering other markets (China etc).

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