Hi GarryI'll give it a try. Of course, my answers
will probably not be to your liking, but remember they are simply my qualified opinion:
***********
How can a business - in the business of making 'Business Forms',
get the trademark of 'business'?
***********
Without knowing the specifics
of this mark and the classes to which it belongs, I'd say that it is probably a design
mark (i.e. a distinct/stylized graphical form of the word 'business') which could
be trademarked in theory (although I've never seen it tried before).
Afilias and
Neulevel's decisions to include designmarks was a policy decision, one which cannot
be changed (without a lot of trouble) now.
If Business Form's TM is not a style
mark, then certainly this would be one of the most difficult English words to receive
as a trademark in a predominently English-speaking country that is a WIPO member,
as it is a word that all businesses use. Many other wordmarks are also next to impossible
to trademark in many jurisdictions and include superlatives (e.g. best, quickest),
city and country names (usually only those within the jurisdiction itself), and the
word 'trademark'.
And of course, in most jurisidctions you can't trademark the
industry in which you are doing business, e.g. 'computer' if you are in the computer
industry (which is why the wordmark 'business' (by itself) would be declined in many
offices).
* * *
Surely, this is against unfair competition Law?
Another
thing - How can they have a hope in hell of stopping other businesses, making business
forms, from using their mark?
* * *
Once again if it is the stylized form of
that mark, then they may have claim to that mark. But you raise an interesting point
...
It is of interest to note that just because a company has a trademark, doesn't
necessarily mean that they can use that mark in any way that they want. Trademark
owners often still have to ensure that their mark doesn't encroach on another TM
owner's rights - something that is ultimately 'settled' in legal courts, not in a
trademark office.
Accordingly, even though such rules of what can and can't be
trademarked exist, some offices may have the tendency to liberally give out marks
more than others, knowing that if problems exist, then objections will be made by
competitors, or post-registration issues will be settled litigiously. The reason
why most TMs take a while to go from filing to registration date is to allow objections
to be heard and to allow the TM registrant to demonstrate that they are using the
trademark. Of course, in practice, not all potential-objectors know about the mark
until it's too late.
Certainly, the founding principles of trademark registrations
never foresaw using the marks as a basis for registering a domain name.
*********
Can
any lawyer explain why some trademarks can be allowed to have priority with their
mark over others using same word(s) on the Internet? Please explain why this is not
against unfair competition law.
* * * *
I've offered my opinion to this question
in the reponse below (subject: 'not quite').
I think it's important to not lose
sight of the original intention of Afilias' Sunrise period, and that was to allow
people with obvious trademark rights, to claim their name first so that cybersquatters
would not extort their names. (Of course, "Everyone hates cybersquatters", so this
is probably how Afilias and Neulevel managed to get ICANN to side with the trademark
owners so readily). Of course, as we have seen, apart from the obvious registrants
with no TM whatsoever, many companies with trademarks for generic words (mostly designmarks)
have used this rule to their advantage. Therein lies the quandry for Afilias. They've
made the policy, now they have to stick to it. In hindsight, it may have been best
to only allow registrants with a non-common word trademark to have first-rights,
but the large trademark owners such as Sun, Apple, Caterpillar (to name but a few)
with common wordmarks (Sun, Apple and Cat) would surely have made their objections
heard.
Ultimately this was a policy decision by Afilias and as an independent
business they simply decided on their policy on who gets priority (rightly or wrongly)
in the registration process a long time ago. This was then sanctioned by ICANN (which
seems to be swayed more by commercial interests than by individual interests these
days). There is no doubt that the intellectual property factions exert a lot of influence
over the net: I read yesterday that close to 60% of Internet websites are now run
by just 14 companies! Quite a far stretch from where the Internet was just five or
six years ago.
You use the word 'corrupt'; I'd tend to say that the rulemakers
(politicians et al) tend to favour the parties with the most influence and/or the
most money, and in this case, it was the intellectual property owners.
Of course
the moral rebuttal to this argument ('why should they be the ones ...') is extremely
compelling. However to fight them you need to be prepared to play their own game
... which usually involves legal action and a great deal of time and expense. Rightly
or wrongly, this is the status quo.
Regards
Alex