Protection of Trademarks (in the Digital Space)
In today's business environment, increasingly adapted to the processes of digitalization and globalization, the protection of intellectual property is of great importance but also presents a particular challenge. However, proper management of intellectual property is a significant tool for progress in modern societies. It provides inventors and creators with recognition for their work and serves as a major incentive for further creative achievements.
Intellectual property encompasses two categories: industrial property and copyright and related rights. Industrial property rights include patents, trademarks, industrial designs, geographical indications, and geographical names. By providing their holders with a better position in the market, these rights encourage the expansion of quality products and services, ensure greater competitiveness, and create a foundation for overall economic, social, and cultural prosperity.
According to the applicable legal provisions in Montenegro, a trademark is a right that protects a sign used in commerce to distinguish the goods or services of one legal or natural person from the same or similar goods or services of another legal or natural person. In other words, a trademark represents a legally protected sign used in commerce to identify and differentiate products and services (for example, the Nike brand's trademark consists of the recognizable symbol known as “The Swoosh” - a simple, curved shape with one end thicker and wider, tapering towards the other end, resembling a checkmark).
Thus, the main functions of a trademark are the identification of products/services, as well as the enhancement and creation of the business image of a legal or natural person in commerce. Trademark registration is the first step on the path to building a brand. A trademark protects the product, while the brand sells it. The importance of trademark protection is perhaps best illustrated by a statement made by Don Keough, the Chief Operating Officer of Coca-Cola from 1981 to 1993: 'My role as an executive in this company is very simple: to protect and enhance its trademark.'
However, the digital age has brought greater accessibility and proliferation of trademarks but has also increased the risks to their security. Therefore, a thorough understanding of national and international legal frameworks is crucial to ensure adequate protection.
Below, we will delve into the regulations governing trademark protection at the national and international levels.
Protection of Trademarks at the National Level
The primary law regulating this area in Montenegro is the Law on Trademark ('Official Gazette of Montenegro', No. 72/2010, 44/2012, 18/2014, and 40/2016), which, according to its Article 1, governs the conditions and procedures for trademark registration.
The trademark registration process begins with the submission of an application to the Directorate for Intellectual Property, the central national institution for the protection of intellectual property in Montenegro, which commenced its work in 2008. A trademark is established from the moment the recognized right is entered into a special trademark register, which represents a publicly accessible electronic record of trademarks.
A sign can be registered as a trademark in a manner that allows for the precise and clear identification of the object of protection. The sign itself may consist of words, letters, numbers, images, colors, shapes, or combinations of these signs. The sign may include words written in a specific font, recognizable slogans, color combinations, graphics, musical tunes, or combinations of words. Just a few successful examples of well-designed and widely recognized signs include: Apple's bitten apple logo, Coca-Cola's distinctive red and white design, or the startup sound of the Windows operating system.
The Law also stipulates negative conditions, i.e., reasons why a sign cannot be protected as a trademark. For example, a sign that has no distinctive features and does not contribute to distinguishing the product or service from others available on the market cannot be protected as a trademark.
When these conditions are met, and the trademark is registered, from the date of publication of the registration, the trademark holder enjoys legal protection. This includes the exclusive right to use the trademark-protected sign for marking goods and/or services and the right to prohibit others from unauthorized use. Otherwise, the trademark holder has a legal basis to initiate appropriate legal proceedings to prevent further misuse and to claim damages.
Protection of Trademarks at the International Level
In addition to trademark protection at the domestic level, there are also international aspects of trademark protection in Montenegro. Montenegro is a signatory to the Paris Convention for the Protection of Industrial Property, the Madrid Agreement Concerning the International Registration of Marks, and the Protocol Relating to the Madrid Agreement.
Paris Convention for the Protection of Industrial Property
The Paris Convention for the Protection of Industrial Property, dated March 20, 1883, and revised several times, most recently in 1967, serves as the foundation for the international protection of industrial property and regulates patents, trademarks, and other legal instruments for the protection of industrial property. Despite originating in 1883, it remains one of the most important international treaties in the field of intellectual property, with over 170 member countries, including Montenegro since 2006. As a result, Montenegrin laws that pertain to the protection of intellectual property are aligned with the Paris Convention to varying degrees.
The Convention is based on several key principles:
• The Principle of Priority Right, which stipulates that the owner of a trademark, after filing an application in one country, has a period of 6 months to file the same application in any of the other member countries of the Convention while retaining the original filing date. The priority right enables the protection of intellectual property for domestic legal entities on a global level, and for foreign legal entities in the Montenegrin market.
• The Principle of National Treatment, which requires each member country to provide the same level of trademark protection to foreign natural and legal persons as it does to its own citizens. Thus, foreign applicants for trademark registration and protection receive the same treatment as domestic applicants, which encourages and contributes to the development of foreign investments.
• The Principle of Protection of Well-Known Marks (trademarks that, due to their long-standing presence in the market, have gained a high degree of consumer recognition), which obliges member countries of the Paris Convention to provide protection to well-known marks even if they are not registered. This allows the owner of such a mark to seek protection against various forms of misuse.
The Madrid System, established by the Madrid Agreement
The Madrid System is administered by the World Intellectual Property Organization (WIPO) and serves as a system for the international registration of trademarks, allowing for trademark protection in over 120 countries. The first step toward such protection is the registration of the trademark at the national level, specifically with the Directorate for Intellectual Property in the case of Montenegro. After that, it is possible to submit an international application to the WIPO, which, after confirming the fulfillment of formal requirements, forwards the application to each of the member countries of the Agreement where protection is sought. Each country then checks whether the trademark meets the conditions for protection under its laws. In the countries where the application is approved, the trademark is protected and registered, and the registration is valid for 10 years, with the possibility of renewal.
This process makes trademark protection faster and simpler, with the notable advantage that trademark registration and all future changes related to it can be handled through WIPO, rather than the applicant having to navigate the procedures independently in each country.
The Madrid System does not directly address trademark protection on the internet, but it plays a key role in creating the legal basis for its protection on a global level, including in the digital sphere. Once a trademark is registered through this system, it is protected in the selected countries, which allows the owner to defend against infringements that may occur online. Registration provides the owner with a legal basis for trademark protection in multiple countries, so if someone unauthorizedly uses the trademark on the internet in a country where it is protected, the owner can take legal action under that country's laws.
For example, imagine a person selling shoes not manufactured by a well-known brand like Nike, who decides to place an ad on an online sales platform using the Nike brand name and trademark to increase buyer interest, thereby misleading them. Misappropriating someone else's brand name, trademark, or slogan constitutes an infringement of intellectual property rights and a potential fraud against customers. Without trademark rights protection, consumers would have no way to safely purchase products and/or services. Adequate and reliable trademark protection discourages counterfeiting, misuse, and piracy.
The Madrid System, among other things, provides the foundation for trademark protection on social networks as well as in the e-commerce market.
Protection on Social Networks
Trademark infringements are frequent on social networks and occur in various ways, most commonly through the creation of fake profiles or pages that use protected trademarks without authorization. International trademark registration through the Madrid System provides the basis for requesting the removal of such content.
Protection at the E-Market
By registering a trademark through the Madrid System, its protection is secured in key markets, enabling effective enforcement of rights and combating infringements within the global e-commerce landscape.
The Madrid System provides additional support in the fight against cybersquatting, which involves the malicious registration of domain names and comes in various forms. It often happens that someone registers a domain that is identical or similar to the name of a well-known brand, usually with the intent to force the brand owner to buy it from them, thereby profiting from the recognizable trademark. However, some squatters have more malicious intentions and engage in this type of abuse with even worse motives - they use similar domains to create websites for identity theft, fraud, or fake surveys/notifications to collect user data. Several cases of web squatting are publicly known, including:
• Walmart44.com - A fake website using the name of a well-known store, intended to trick users into installing spyware and adware on their computers.
• TikToks.com - This domain was created in an attempt to capitalize on the growing popularity of the well-known social network. Although TikTok’s parent company initially offered to purchase the domain name, the case ended up in court, with the ruling in favor of the parent company.
• Nissan.com - A company named Nissan Computer Corporation registered this domain in 1994. Several years later, the car manufacturer Nissan Motors claimed that the domain was a case of cybersquatting. However, the court ruled otherwise.
An even more prevalent form of cybersquatting is typosquatting, which involves registering domains with minor 'typos' to deceive website visitors. Typosquatters rely on the likelihood of human error in typing and register domains with slight variations in the name. The fake address is often a subtle variation of the original - such as a difference in one letter, the addition of a hyphen, etc. In this case, protection can be achieved through the Uniform Domain Name Dispute Resolution Policy, which is an international mechanism for resolving domain disputes. The Madrid System is not directly relevant and is not a prerequisite for using UDRP; however, international registration can further strengthen the legal position of the owner, especially when domains are used in multiple countries.
Given the consequences it can cause, cybersquatting is a threat that must be taken seriously. It can lead to identity theft, data loss, damage to brand image, and financial losses, making it a problem that requires an urgent response. Education on the types and methods of cybersquatting is crucial for protecting the interests and reputation of individuals and businesses.
Conclusion
The protection of trademarks, particularly in the digital space, is becoming increasingly challenging and complex, given the global reach of the internet and easy access to information. Some of the most common infringements include unauthorized use of protected trademarks, copying, or creating fake websites that mislead and deceive consumers, while simultaneously damaging the reputation of original brands. These abuses are made possible by relatively weak regulations and underdeveloped control mechanisms in many countries, including Montenegro. What further complicates the situation is the anonymity of users and the global reach of the internet, which makes it difficult (if not impossible) to identify perpetrators, a necessary step for adequate sanctioning.
To improve the current situation, it is necessary to enhance legal regulations and strengthen cooperation with international organizations that address intellectual property protection. Additionally, it is advisable to educate businesses and the general public on the importance of trademark registration and recognizing infringements, as well as to improve the capacity of state institutions for quicker responses to reports of abuse. The introduction of stricter penalties and the simplification of legal procedures would provide additional incentives.
