Publication 845: Part II
PART II
USE OF A SIGN ON THE INTERNET
Article 2
Use of a Sign on the Internet in a Member State
Use of a sign on the Internet shall constitute use in a Member State for the purposes of these provisions, only if the use has a commercial effect in that Member State as described in Article 3.
Article 3
Factors for Determining Commercial Effect in a Member State
(1) [ Factors] In determining whether use of a sign on the Internet has a commercial effect in a Member State, the competent authority shall take into account all relevant circumstances. Circumstances that may be relevant include, but are not limited to:
(a) circumstances indicating that the user of the sign is doing, or has undertaken significant plans to do, business in the Member State in relation to goods or services which are identical or similar to those for which the sign is used on the Internet.
(b) the level and character of commercial activity of the user in relation to the Member State, including:
(i) whether the user is actually serving customers located in the Member State or has entered into other commercially motivated relationships with persons located in the Member State;
(ii) whether the user has stated, in conjunction with the use of the sign on the Internet, that he does not intend to deliver the goods or services offered to customers located in the Member State and whether he adheres to his stated intent;
(iii) whether the user offers post-sales activities in the Member State, such as warranty or service;
(iv) whether the user undertakes further commercial activities in the Member State which are related to the use of the sign on the Internet but which are not carried out over the Internet.
(c) the connection of an offer of goods or services on the Internet with the Member State, including:
(i) whether the goods or services offered can be lawfully delivered in the Member State;
(ii) whether the prices are indicated in the official currency of the Member State.
(d) the connection of the manner of use of the sign on the Internet with the Member State, including:
(i) whether the sign is used in conjunction with means of interactive contact which are accessible to Internet users in the Member State;
[Article 3(1)(d), continued]
(ii) whether the user has indicated, in conjunction with the use of the sign, an address, telephone number or other means of contact in the Member State;
(iii) whether the sign is used in connection with a domain name which is registered under the ISO Standard country code 3166 Top Level Domain referring to the Member State;
(iv) whether the text used in conjunction with the use of the sign is in a language predominantly used in the Member State;
(v) whether the sign is used in conjunction with an Internet location which has actually been visited by Internet users located in the Member State.
(e) the relation of the use of the sign on the Internet with a right in that sign in the Member State, including:
(i) whether the use is supported by that right;
(ii) whether, where the right belongs to another, the use would take unfair advantage of, or unjustifiably impair, the distinctive character or the reputation of the sign that is the subject of that right.
(2) [ Relevance of Factors] The above factors, which are guidelines to assist the competent authority to determine whether the use of a sign has produced a commercial effect in a Member State, are not pre-conditions for reaching that determination. Rather, the determination in each case will depend upon the particular circumstances of that case. In some cases all of the factors may be relevant. In other cases some of the factors may be relevant. In still other cases none of the factors may be relevant, and the decision may be based on additional factors that are not listed in paragraph (1), above. Such additional factors may be relevant, alone, or in combination with one or more of the factors listed in paragraph (1), above.
Article 4
Bad Faith
(1) [ Bad Faith] For the purposes of applying these provisions, any relevant circumstance shall be considered in determining whether a sign was used in bad faith, or whether a right was acquired in bad faith.
(2) [ Factors] In particular, the competent authority shall take into consideration, inter alia:
(i) whether the person who used the sign or acquired the right in the sign had knowledge of a right in an identical or similar sign belonging to another, or could not have reasonably been unaware of that right, at the time when the person first used the sign, acquired the right or filed an application for acquisition of the right, whichever is earlier, and
(ii) whether the use of the sign would take unfair advantage of, or unjustifiably impair, the distinctive character or the reputation of the sign that is the subject of the other right.
