Making your (trade)mark in cyberspace

I am grateful that retired Supreme Court Justice Florentino Feliciano, a highly respected jurist both within the Philippine and the global judicial environment, who is a former law professor of mine, has again invited me to a whole-day lecture and discussion forum called Trade, Investment and International Law: Perspectives For Development which is being held this Wednesday, July 12. Just a couple of months ago, a successful first session was held.

As usual, this is being hosted by SyCip Law (SyCip, Salazar, Hernandez and Gatmaitan), supported by companies like San Miguel Corp. and Nutri Asia Inc. The sole lecturer who will lead the discussions is a distinguished expert, Dr. Peter L.H. Van den Bossche. He is professor of International Economic Law, head of the Department of International and European Law, and director of Law and the Language Studies program at Maastricht University in The Netherlands.

Perhaps a number of our WTO (World Trade Organization) functionaries, past and present, have heard of him since Prof. Van den Bossche was a counselor to the appellate body of the WTO in Geneva. Justice Feliciano was a member, then chairman of this appellate body.

The event that I am attending will be held at the SyCip Law auditorium in Makati. Those invited include officials and staff of relevant government agencies, business leaders, representatives from trade organizations, and members of the bar and the academe.

I think it is an excellent opportunity for me to state now that we should always endeavor to attend as best we can lectures/discussions like this one within the context of our busy schedules. It has been my own personal experience that they do provide extremely fertile sources of knowledge, timely data and case studies, and incisive analyses of issues.

Indeed, education and learning never end. The statement "To be able to be caught up in the world of thought – that is being educated," was so well said by Edith Hamilton. I have been privileged and lucky to have been able to attend forums and interactions like this forthcoming one promises to be.

Beyond graduate school were the international conferences I had to attend which were thorough learning experiences in themselves. Alongside these conferences were sessions with very knowledgeable experts as speakers. Inevitably, there is an invaluable reservoir of knowledge that you store inside you, as you move along practicing your profession and performing your responsibilities as a government or private functionary. I am grateful to have had that, and am grateful that these learning experiences continue to this day. It is a bit of advice I am sincerely imparting to the youth of today.

One of those who e-mailed me regarding my article on cybersquatting was a young law graduate who is reviewing for the bar in September. He prefers to remain anonymous, but told me that he and a number of co-graduates of his follow my articles on the evolution of this new discipline, ICT (Information and Communications Technology) Law. He wrote that they are looking forward to an introduction of trademark law within the context of the globally interconnecting Internet of today. That’s the reason this two-part series is being written.

Initially, one thing is certain: trademark laws are as important in cyberspace, meaning the "virtual world," as they are in the "real world," if not even more important, so it’s vital to learn how to protect yourself, your company, or your client’s company if you’re a legal practitioner, by using, registering, and enforcing trademarks properly, and in order to respect trademarks owned by others.

Cybersquatting is probably the most widely known form of trademark violation on the Internet, but it is certainly not the only kind. A business can infringe on another’s trademark in cyberspace even if domain names are not the issue. Just as another corporation can defy trademark law simply by selecting the wrong name for its enterprise, products and services in the real world, the same thing can happen in the virtual world of the Internet.

For the purposes of this article, let me use the definition of a trademark under the now-famous Lanham Act of the US: It is "any word, name, symbol, or device, or any combination thereof used by a person... to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown."

There are so many trademarks that are well known in the Philippines, where you have Rustan’s, ShoeMart, Jollibee, Globe Telecom, Smart Communications Inc., St. Luke’s Medical Center, etc. Trademarks such as Coca-Cola for carbonated beverages, Volvo for automobiles, Häagen-Dazs for ice cream, etc., are world-renowned.

In cyberspace, trademarks that are very well-known are: BlackBerry, which identifies a handheld device for accessing e-mail; E-bay, which identifies online auction services; Yahoo!, which identifies directory services, etc. In addition to words, a symbol can of course be used as a trademark. Currently, some of the famous symbols are the Microsoft windowpane logo, the AOL triangle, and Apple Computer’s high-tech, one-bite-taken fruit, etc.

But not every word, name, symbol, or device can function as a trademark, and some words, names, symbols, or devices are stronger than others. Generally, US and European courts have classified trademarks as falling under several categories, which I am enumerating in descending levels of strength: a) arbitrary or fanciful, such as newly coined words like "Chikka," "Ajonet," "Lucent," and "Intel." These arbitrary trademarks do not in any way describe the goods or services with which they are used. Globally, as examples of arbitrary trademarks that do not describe goods or services, I can give as examples: Google for search services, Apple for computers, etc.; b) suggestive, which are those that indirectly describe the goods or services they identify, such as Win-Book for notebook computers running the Windows operating system, etc.; c) descriptive, which are those that describe the goods or services they identify, like The Weather Channel for information on the weather, and Travelocity for travel services, etc; d) generic, which is the name of a particular product or service, such as "cell phone," "personal computer," "modem," "e-book," etc. Generic terms are not entitled to trademark protection and hence can be used by anyone.

An interesting case is one that was filed about a week ago by Citigroup Inc., a large, worldwide US firm and its banking subsidiary, Citibank N.A., against an online stockbroker by the name of Citisec Online.Com. The latter is set to undertake a maiden stock offering this July. The suit is being filed therefore in the wake of the respondent’s big plans for a stock offering, the cause of action alleging an outright breach of the trademark rights of Citigroup, Inc., over its registered "Citi" marks, which include, among many others, "Citibank," "Citiphone," "Citiservice," "Citicard," etc.

Citigroup pleads that the court order CitisecOnline and Citisecurities to stop using their names or any other trademark using the word "citi." Of course the complaint asks for damages.

The fundamental issue is, therefore, whether the word "citi" is generic or not. Being sub judice, I will not make any comment except to state that I have been informed that one of the defenses of the respondent is that it was given approval by the SEC (Securities and Exchange Commission) for the use of the corporate name, and that there are now hundreds of corporations registered with the SEC with names beginning with "citi."

(To be continued)

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