May 19, 2015
Smart phones are everywhere, on the streets, in restaurants, in backyards, at airports, in offices, and in homes. With the growing popularity of smart phones, comes the growing popularity of mobile applications which run on smart phones. How to address the challenges of intellectual property (“IP”) in the mobile world; was one of the topics discussed during the recent International Trademark Association (“INTA”) annual meeting held in San Diego, United States. INTA is a professional association of international trademark practitioners. The annual meetings are attended by thousands of IP practitioners from countries all over the world. Topics of pressing concerns to these professionals and the companies they represent are discussed at annual meetings. The growing popularity of online and mobile technologies and the challenges created by such popularity attracted attention at this year's INTA annual meeting. Traditionally, trademark rights have long been confined within territorial boundaries. The laws in each country determine the rights of trademark owners in that country, and also impose different obligations and requirements in that country. However, the mobile online world transcends these national borders and brings new challenges in rights clearance, portfolio management and right enforcements, among others. For example, when a new technology company creates a new smart phone application ("App"), one of the first things is to name the App. Creating brand recognition for the App using a carefully selected name can be crucial to the success of the company. Naming an App and creating a brand, of course, fall squarely within trademark law. In the traditional world, a similar task such as naming a new restaurant would rarely require clearance of the name beyond the local jurisdiction where the restaurant would locate. This is not so for a new mobile App. '
The mobile App may be simultaneously launched in multiple foreign markets, which will require name clearance in all these jurisdictions. Failure to properly clear the name in all these jurisdictions may inadvertently infringe upon other's trademark rights, possibly in a faraway jurisdiction, and bring litigation to a young company's doorsteps. For a new technology company which faces many different challenges already, this is one that could and should be avoided. Another topic discussed at the INTA annual meeting and often faced by technology companies are the management of a global IP portfolio. For example, it would be a tremendous financial burden to register IP rights in all jurisdictions where locals could possibly access the mobile App online. Some may wonder, what would be the consequences of not registering in a jurisdiction? There might be many, one of them relating to whether to use trademark marking. It is common to use trademark markings to provide notice to others of the owner's trademark. Providing such notices may be required in many jurisdictions for recovering damages. This is often an easy decision, but not so east in the mobile world. In some jurisdictions, there may be negative consequences for claiming to have a trademark that you did not register there. Therefore, if the mobile App uses trademark markings, this could lead to a violation of local law in certain jurisdictions. This could be a thorny issue. Similarly, rules governing trademark use and enforcement vary from jurisdiction to jurisdiction. A technology company may be based in Canada, but may have to enforce its trademark rights in Asia. Trademark rights recognition and enforcement in a foreign country may be different from those in Canada. Moreover, whether courts will recognize and enforce your rights set forth in your online terms and conditions may also be problematic and may depend on how well your terms and conditions are drafted to follow local laws and regulations. As one judge from China's Supreme People's Court advised the audience at the INTA annual meeting, “You have to follow (local) law if you want trademark protection.”
One take-away from the discussions and debates at the INTA meeting is this: There will be new challenges associated with the mobile world. Due to the diversity and complexity of these challenges, there also will not be any one-size-fits-all solution. With careful analysis and consideration, solutions can be found to address these new challenges, one solution at a time. --- Dr. Sean X. Zhang is an IP Partner at Dale & Lessmann LLP. To speak with Dr. Zhang, please call 416-369-7808 or send an e-mail message to him at firstname.lastname@example.org.
Tags: Intellectual Property