Wednesday, 4 March 2009

Use of manufacturer's trade mark in dealer's domain name

Here's an interesting take on an old, old issue, and it involves a trade mark owner with a track record in similar situations. Volvo Trademark Holding AB took exception to the use of the domain name by a business of that name (though it appears to be a trading name of an individual, and the website is lacking details of ownership and all the other good stuff that the law requires you to put on it). The WIPO panel (as usual, a sole panellist, which always strikes me as a curious use of the word "panel") decided that the registrant was entitled to have the domain name, and rejected Volvo's complaint. Good stuff.

Why should the manufacturer wish to control the domain name - other than in the name of IP absolutism? It fits, of course, with the whole absolutist philosophy of car manufacturers when it comes to intellectual property: most of them can't bear the thought that anyone might participate in the motor industry except under their control. (In fact, Volvo used to run a TV advertisement with, as I recall, a stuntman extolling the virtues of Volvo cars, and admitting to being a control freak - I know the message the ad was trying to convey, but I was amused by the message it also succeeded in conveying, especially having acted for a number of their ex-dealers including Heritage (Leicester) Ltd.) So car makers - vehicle assemblers, as parts makers like to call them - have tried to monopolise the parts and (through their dealers and authorised repairers) service markets and we have the House of Lords judgment in BL v Armstrong, the MMC report on Ford's registered designs, the Ford registered designs case in the House of Lords, the Court of Justice of the EC's decision in Volvo v Veng and Renault v Maxicar, the block exemption and many other pieces of evidence to demonstrate this.

Having said all that, I can sympathise with the manufacturers. They go to great lengths, and expense, to create a product that consumers like and which continues to become more efficient, safer, and unfortunately less interesting, as time goes on. Along with the product, which is the only item that most consumers bother to repair and have serviced, the car makers create a substantial market for spares and servicing and of course independent traders will try to get a share of the action.

In Volvo v Heritage, it was established that a former dealer must go to considerable lengths to ensure that customers are not under the misapprehension that the ex-dealer is still a dealer. By analogy, the right to use the manufacturer's trade mark to identify the purpose or characteristics of goods or services under section 11 of the Trade Marks Act 1994 - which has to be in accordance with honest practices in industrial and commercial matters - must not be exercised in such a way as to suggest that there exists a relationship between dealer and manufacturer which does not exist.

Volvo argued that Volvospares was, effectively, doing precisely that. Under the UDRP, the respondent must be shown to be using a sign confusingly similar to the trade mark, to have no legitimate interest in it and to have registered or used it in bad faith. In the present case, the panellist took the view that Volvospares had a legitimate interest, as they supplied spare parts for Volvo cars. The presence of a disclaimer on the web site, though not conclusive, clearly helped.

Volvo argued, as one might expect, that unless the respondent dealt exclusively in original Volvo parts, it could not be said to have a legitimate interest: but here it seems their argument foundered on the basis that they themselves did not deal exclusively in original Volvo parts - that they assembled cars using components from a large number of suppliers. Hah!

It only remained for the panelist to deal with the "bad faith" argument, which took a couple of seconds, and the car maker's case was well and truly demolished: and however much I sympathise with the car-makers' position (even disregarding my particular views about this manufacturer) I have to say, a good thing too.

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