USA-UK-CANADA-NZ / TRADEMARKS / DOMAIN NAMES

In an article in the Australian Intellectual Property Journal, May 2000, Volume 11 no 2, entitled When are Domain Names Trade Marks – When they are "Used"?, Paul Sumpter takes as his starting point the statement that "domain names are not in themselves trade marks: they perform the function of an address in cyberspace; but they can come into conflict with trade mark owners’ rights when they operate as a trade mark". To illustrate the types of conflict which may arise, the author refers to the case law of the United States (such as Avery Dennison Corporation v Sumpton), of the United Kingdom (the One in a Million case), of Canada (Tele-Direct (Publications) Inc v Canadian Business On-Line Inc) and of New Zealand (such as Oggi Advertising v McKenzie). These "robust and pragmatic" cases do not, in the author’s view, provide evidence that domain name cases are extending the boundaries of trade mark function and famous brand protection. "Perhaps what [they] herald is a nudge in the direction of the convergence of world trade mark law." [20014]