E-commerce is chosen for daily purchases by an increasing number of Spaniards. According to the latest data collected by the National Commission for Markets and Competition (CNMC)e-commerce revenues within our country rose 16% year-on-year, registering a turnover of 15.3% with more than 335 million transactions in the last quarter.
These figures show the considerable economic growth opportunities linked to e-commerce, but they are also reasons for the increased risk in terms of counterfeiting and intellectual property infringement, on the one hand, and existing protections, on the other.
According to a study of the EUIPUS (European Union Intellectual Property Office) and EUROPOL (European Union Agency for Law Enforcement Cooperation), the categories most affected by counterfeiting in e-commerce are perfumery and cosmetics and pharmaceutical products, with more than 70% of seizures at EU borders related with internet sales.
How to register an e-commerce trademark and what can be done to protect your intellectual property
- The intellectual property of the website
According to EU copyright principles, “a website of a creative nature is considered to be an intellectual work of a multimedia nature”. In this sense, the website covers the following elements:
- Design. The call look and feelthat is, the aesthetic appearance of the web determined by the graphic characteristics, contours, colors and layout of the text.
- graphic structure. This is created as long as the software on which it is based is the original created by the author.
- Domain name. It must be unique, that is, two sites cannot be associated under the same domain name
- Coexistence in it of several intellectual works (text, images, video)
What are the illegal activities that infringe intellectual property?
- Deep linking. It consists of inserting within a web page a link (hyperlink) that takes the user to a different page. This operation can lead to a serious risk of confusion between the two sites, which is why it is considered illegal.
- Framing. It consists of inserting features and content from another site into the structure of the graphical interface of the website. It is a case of hoarding or illegal appropriation of the merits of other people’s products.
- cybersquatting. The use of domain names corresponding to other brands or products for resale.
- Typosquatting. It consists of buying domains that look like links or URLs but actually contain a typographical error. This tricks users into performing a new search.
- Domain grabbing. It is about registering a domain name with a distinctive sign or word to the company itself.
The last three cases are related to the so-called “principle of time precedence issue” which is based on assigning a domain name to the first requested party. For this reason, the Industrial Property Code recognizes the domain name as a distinctive sign of the company in the same way as the brand, the name of the company or the sign and grants it the same protection.
- Trademark registration in e-commerce
Registering an e-commerce trademark guarantees its exclusive use, so that competitors cannot illegally exploit or take advantage of it.
What is the procedure?
First of all, an exhaustive analysis must be carried out to verify that the trademark meets the corresponding requirements: it must be new, distinctive, lawful and truthful.
When creating a brand, it is necessary to indicate the class of products to which it will be associated, according to the Nice Classification. The latter provides for 45 classes, divided into 34 types of products and 11 different services.
In addition, the brand must have territorial protection to be able to register in Spain or allow international expansion. Finally, it must be taken into account that the protection of the intellectual property of brands is not infinite. In order not to lose rights, it must be renewed every ten years. The renewal procedure can be carried out in the 12 months prior to the expiration date and, at most, in the 6 months after.
- Tools for the protection of intellectual property in electronic commerce
When talking about e-commerce protection, it almost always focuses on consumers. However, the importance of the risks associated with product counterfeiting and intellectual property infringement against the entrepreneurs themselves is often overlooked.
How can companies defend themselves?
The EUIPO, in collaboration with the main e-commerce markets, offers three tools:
- notification systems. They allow entrepreneurs who see their intellectual property infringed to send a notification. The greatest amount of information possible must be provided in order to carry out the appropriate verifications.
- IP protection programs. Applied by a limited number of marketplaces, they allow you to manage all the reports sent and control the category pages that may have elements that infringe industrial property.
- Contact point. These are systems that facilitate assistance in the event of problems with protection programs or notification systems. In fact, not all international e-commerce sites have notification forms and contact points make it possible to find the contact details to which the appropriate notifications can be sent.
“In an increasingly digital shopping landscape, it is essential to focus on intellectual property to protect one’s own work and related economic interests. An e-commerce site must be carefully structured from a legal point of view and legally protected. Only then can it become an effective tool to attract customers and create a company’s digital identity.” it states Noelia Lázaro, Marketing Director of Packlink.
