Trademark for online business and e-commerce

The world is steadily moving online. Today, online business and e-commerce is no longer just a trend but, shall we say, a dominant reality for many entrepreneurs. Do you sell products online? Do you provide services online ? Do you have your own online shop ? Great! But have you ever wondered how to protect your brand in this borderless digital space? Registering a trademark for an online shop or any other online business has its own peculiarities.

The Internet, on the one hand, offers incredible opportunities: global reach, quick access to customers. On the other hand, it is an environment where infringement of your trade mark is much easier than offline. Competitors can copy your logo in a matter of minutes, register a similar domain name, create a fake page on social networks. Anonymity and the speed of information dissemination, to put it mildly, create both new opportunities and entirely new risks for brand owners.

Therefore, protecting a trade mark online is not just a formality, it is a vital necessity. In this article we, as lawyers with 20 years of experience in the field of intellectual property, will understand the peculiarities of registration and protection of TMs specifically for e-commerce. Ready to dive into the world of digital branding and its legal aspects? Then go for it!

I. Peculiarities of TM registration for online business

Registering a trade mark is a standard procedure, but when it comes to online business, there are certain nuances. The digital environment has an impact on the choice of ICT classes, interaction with domain names and brand representation on social networks. Let’s take a closer look at these features.

Subsection 1.1: Choosing classes of the Nice Classification

One of the first and, without exaggeration, the key points when registering a TM for an online business is the correct choice of classes of the Nice Classification of Goods and Services (International Classification of Goods and Services). After all, it depends on what kind of activity your brand will protect. And online activities can be, well, you know, quite multifaceted.

Which classes are most relevant for e-commerce?

1. Class 35:This is perhaps the most important class for any online storeor service that deals with online sales. This class covers:
   • Advertising: Promotion of your goods or services on the Internet.
   • Case management; administrative activities; office work.
   • And the most important thing for us is services for the retail or wholesale sale of various goods, including via the Internet. This wording directly refers to the activities of online stores. It also includes services for hosting other goods in one place, allowing customers to conveniently browse and purchase those goods in online stores or through catalogues.
2. Classes of goods you sell: If you do not just provide sales services, but sell specific goods under your own TM (e.g. clothing, electronics, cosmetics), you must register TMs for these goods in the appropriate classes (e.g. Class 25 for clothing, Class 9 for electronics, Class 3 for cosmetics, etc.) Class 35 covers the sales service, and the product classes cover the goods themselves. Don’t get confused!
3. Class 42:This class is relevant if your online businessis related to technology, which is only logical. This includes:
   • Scientific and technological services and related research and development.
   • Industrial analysis and research services.
   • Development and design of computer hardware and software. This is important if you are developing your own website, platform, or application.
   • Providing software as a service (SaaS): If your business operates on a SaaS model.
   • Building and maintaining websites for others.

Examples of class selection:

• An online clothing store of your own brand: Class 35 (online shopping services) + Class 25 (clothing).
• A marketplace that brings together different sellers: Class 35 (services for listing goods for others, sales services) + possibly Class 42 (if you provide a platform as a service).
• Online course subscription service: Class 41 (education, training) + possibly Class 42 (if there is a SaaS component) + Class 35 (advertising, promotion).
• Developer of a SaaS platform for business: Class 42 (SaaS, software development) + possibly Class 9 (if the software is downloadable).

Choosing the right Nice Classification classes for youronline business is a guarantee that your trademark will protect exactly what you actually do online. You shouldn’t skimp on classes if your business is diverse, but you shouldn’t try to “row everything in a row” either. You need a balanced approach.

Subsection 1.2: TM and domain name

When we talk about online business, what immediately comes to mind is the address of your “home” on the web – the domain name. And here an important question arises: what is the relationship between your domain name and your trade mark? Does one protect the other?

This is a very important point, and there is often confusion here. It must be clearly understood: registration of atrade mark does NOT automatically give you rights to the corresponding domain name. Conversely, registeringa domain name does NOT automatically give you the rights to the trademark. They are two parallel processes governed by different rules and organisations. A TM protects your brand, the identifier of your products/services, while a domain is essentially a technical address on the internet.

So a few tips regarding domains and TMs:

1. The ideal is identity or consonance: Try to choose a domain name that matches your brand name as closely as possible. This will make it easier for customers to find your site and strengthen brand recognition.
2. Check availability in advance: Before finally approving the brand name and applying for a TM, check whether a suitable domain name is free (and preferably whether social media accounts are free). It will be very frustrating to register a TM and then find that the desired domain is taken.
3. Consider different domain zones: Think about which domain zones you need protection in (.com, .ua, .com.ua, .net, .org, perhaps thematic zones like .store, .shop, .app, etc.). Registration of several domains may be advisable to protect against cybersquatters.

But what if the desired domain is already taken?

Here we come to the topic of domain disputes. It often happens that someone (cybersquatter) registers domain name, which is identical or confusingly similar to your registered trademark, in order to resell it to you at an inflated price or to use it for unfair purposes (for example, to create a rival site, phishing).

To resolve such disputes, there is a special, out-of-court procedure called the UDRP (Uniform Domain Name Dispute Resolution Policy), or Uniform Domain Name Dispute Policy. It applies to most generic top-level domains (.com, .net, .org, etc.) and some national domains. Such cases are handled by specialised arbitration centres (e.g. at the World Intellectual Property Organisation (WIPO)).

To win a dispute under the UDRP procedure and get the domain for yourself, the owner of the TM needs to prove three things:

• That the disputed domain name is identical or confusingly similar to your trade mark.
• That the current domain owner has no rights or legitimate interests in the domain name.
• That the domain name was registered and is being used in bad faith.

The UDRP procedure is usually faster and cheaper than traditional litigation.

So, a trade mark and a domain name are two key assets for an online business. A strategy for them should be developed in parallel and as early as possible.

Subsection 1.3: TM and social media

Well, where can a modern online business go without a social media presence ? Facebook, Instagram, TikTok, LinkedIn – these are powerful channels for brand promotion, communication with customers and, of course, sales. But here, too, certain challenges await the owners of trade marks.

How does TM interact with social media?

1. Page/account name (nickname): Ideally, your business page name or account nickname should match your brand name or be as close to it as possible. This is again a matter of recognisability and avoiding confusion. Therefore, as with domains, check the availability of your desired name/nickname in key social networks at the brand selection stage.
2. Use of TM in content: Your registered trade mark (name, logo) should be actively used in the content you publish: in page design, images, videos, product/service descriptions. This is not only branding, but also confirmation of TM usage.

What to do if someone uses your TM on social media?

This is, unfortunately, a common problem. Someone may create a page or account with a name identical or very similar to your brand name in order to:

• Impersonate you.
• Sell counterfeits.
• Spread negative information about your brand.
• Simply “borrow” the nickname you want.

What to do in such a case?

• Contact the owner of the page/account: Sometimes it may be a misunderstanding and the issue can be resolved through negotiations.
• File a complaint with the social network administration: Most popular social networks (Facebook, Instagram, Twitter, YouTube, etc.) have their own trademark policies and specific procedures for filing complaints about infringements. You will need to provide proof that you are the owner of the registered trade mark (a copy of the certificate) and explain the nature of the infringement.

Complaint procedures:

They usually involve filling out a special online form on a social networking site. Detailed instructions can be found in the help sections or rules of the respective platform.

The administration of the social network considers the complaint and may take measures: delete the offender’s page/account, transfer the rights to the page with your TM to you (in some cases) or refuse to satisfy the complaint if the violation is not obvious. Social media response is not always quick and effective, but it is an important defence tool.

So, an active social mediapresence for online businesses is a must, but don’t forget to protect your brand on these platforms as well. Book the necessary names/nicknames in advance and be ready to assert your rights in case of infringements.

II. Infringement of TM rights on the Internet

Protecting atrade mark offline is one thing, but fighting infringement in the limitless and often anonymous space of the Internet is, well, a different story. Unfortunately, the online environment provides infringers with plenty of tools to misuse other people’s brands. From stealing traffic through the use of similar domains to outright counterfeiting – online offences in the TM sphere are extremely diverse and, what is worse, widespread. In this section, we look at the most common types of online offences and talk about why they are so difficult to detect and prove.

Subsection 2.1: Types of online offences

The Internet is, unfortunately, a veritable Klondike for those who want to profit at the expense of other people’s names. Internet offences, related to trade marks, can be very different, sometimes ingenious and sometimes downright brazen. Let’s take a look at the most common “schemes” faced by brand owners online:

1. Domain name manipulation (cybersquatting, typosquatting ): This is, you could say, a classic of the genre. Violators register domain names that are either completely identical to your TM (if you did not take care of the domain registration in advance) – this is cybersquatting, often with the purpose of reselling you the same domain at an inflated price. Or register names that are very similar to your TM, differing by one or two letters, hyphen, or designed for typical typos of users (for example, amaz0n.com instead of amazon.com) – this is called typskvoting. The main goal here is to intercept some of your targeted traffic, which due to the error ends up on a fake site, which can contain anything from competitor adverts to malware.
2. Invisible use of TMs (meta tags, keywords): A rather insidious method. Your competitor can “sew” your registered trade mark into the meta tags of their website (text invisible to the user, but visible to search engines) or use it as a keyword when setting up contextual advertising (for example, in Google Ads). As a result, when a user searches for your brand, he is “slipped” a competitor’s site in the output or in adverts. This is a way of “borrowing” your brand recognition to attract other people’s customers.
3. Selling counterfeit goods: Online is an ideal environment for selling counterfeit goods. Entire fake online shops, pages on popular marketplaces (from local ones like Prom or OLX to global ones like Amazon, eBay, AliExpress) are created that offer supposedly original goods under your brand name, but at suspiciously low prices. Of course, these are counterfeits that cause you direct financial losses (lost sales) and, just as importantly, destroy your brand’s reputation due to the low quality of the fakes.
4. Fake social media pages: Creating pages, groups or profiles on Facebook, Instagram, TikTok and other networks that completely copy the style of your brand and pretend to be an official representation. The goals can be varied: misinforming consumers, spreading negativity about your brand, collecting subscribers’ personal data, selling counterfeit goods, or simply blocking your desired page name.
5. Phishing using TM: This is already a direct fraud. Attackers create websites or send emails that very accurately imitate the design and style of your official website or newsletters. The goal is to trick gullible users out of confidential information under the guise of your brand: account logins and passwords, bank card numbers and CVV codes, etc. Using a recognisable TM significantly increases the fraudsters’ chances of success, because people tend to trust familiar names.

This is just the tip of the iceberg of Internet offences. With the development of technology, unfortunately, the ingenuity of infringers is only growing, with more and more new ways of unfairly exploiting other people’s brands online.

Subsection 2.2: Difficulty of detection and proof

Unfortunately, the fight against online trade mark infringements often resembles a battle with a hydra: if you cut off one head, two new ones grow. And this is not surprising, because the Internet environment creates a lot of difficulties related to the detection of infringements and their subsequent proof in the legal field.

Why is it so difficult?

1. Anonymity of infringers: One of the main advantages of the Internet for unscrupulous individuals is the ability to operate anonymously or under false names. It can be extremely difficult to identify the owner of a website selling counterfeit goods or a social media page spreading fakes. They may use temporary email addresses, hide their real IP addresses using VPNs or proxy servers, register domains through fake persons or WHOIS data hiding services. This makes it much more difficult to bring claims or lawsuits against a particular person.
2. Cross-border nature of infringements: The Internet has no borders. The infringer may be physically located in one country, the server hosting its website in another, and the target audience of the infringement in a third. This creates legal conflicts: under the laws of which country should the dispute be considered? How to enforce the court judgement if the offender is in another jurisdiction? This significantly complicates the process of protecting rights.
3. Rapid change of content and “migration” of infringers: Online, everything happens lightning fast. A website with a counterfeit that you discovered today may no longer exist tomorrow, but appear at a new address. A social media page may be quickly deleted after a complaint, but a new one may be created immediately with a slightly changed name. Violators easily “move” from one hosting site to another and change domain names. This requires constant monitoring and rapid response, and makes it difficult to record evidence.
4. Difficulty in capturing evidence: Capturing an online violation in a way that can be accepted by a court or other authority is also a challenge. An ordinary screenshot may not be enough. It often requires notarisation of web pages, the use of specialised services to capture content, or control purchases (in the case of counterfeit goods). This requires time, resources and specific knowledge.
5. Huge amount of information: The Internet is an ocean of content. It is virtually impossible to track all potential violations manually. Even with the use of automated monitoring tools, there is always a risk of missing something.

All these factors make detecting infringements and proving them online much more difficult than in the offline world. Therefore, trade mark owners need to be prepared to be proactive and use specialised tools and strategies to protect their rights in the digital space.

III. Ways to protect TM on the Internet

Having understood how insidious and diverse online abuse can be, the logical question arises: how, in fact, to protect your trademark in this digital maelstrom? Sitting back and watching your brand being used by unscrupulous competitors or fraudsters is definitely not an option. Fortunately, there is a whole arsenal of tools and mechanisms that allow you to effectively counter online offences. In this section, we will look at the main ways to protect your TM online, from monitoring to litigation.

Subsection 3.1: Internet monitoring

Your brand’s first line of defence online is vigilance. Waiting for someone to inform you of a fake website or social media page imitating your brand is, to put it mildly, not the best strategy. It is much more effective to be proactive, i.e. to constantlymonitor the Internet space for possible violations.

What is monitoring and why is it necessary?

Monitoring is the systematic tracking of mentions of your brand, company name, trade mark (both verbal and graphic – logo) in various segments of the Internet:

• Search engines (Google, Bing, etc.).
• New domain name registrations.
• Social networks (Facebook, Instagram, TikTok, LinkedIn, etc.).
• Online marketplaces and noticeboards (Amazon, eBay, AliExpress, Prom, OLX, etc.).
• Mobile application shops (App Store, Google Play).
• News sites, blogs, forums.

The purpose of this constant “scanning” is to detect as early as possible any attempts to misuse your TM, whether it is the registration of a similar domain (cybersquatting), the appearance of a fake page on a social network, the sale of counterfeit goods or the use of your brand in competitors’ advertising. The sooner you detect a breach, the sooner you can take action and minimise potential damage to your business and reputation.

Is it possible to monitor manually?

Theoretically – yes, but practically – almost impossible. The amount of information on the Internet is huge and constantly growing. Even if you type your TM name into a search engine every day, you will only cover a minuscule fraction of potential infringements.

Online monitoring tools:

Fortunately, there are special online tools and services that help automate the monitoring process:

• Google Alerts: A simple and free tool from Google that sends you alerts every time a new page mentioning your keywords (such as your TM name) appears on the internet. This is the basic level of monitoring.
• Specialised social media monitoring services: There are platforms that focus on tracking brand mentions specifically on social media.
• Comprehensive brand protection platforms: These are usually paid services that offer a wide range of monitoring services, including tracking domain names, marketplaces, app shops, social networks, and sometimes even counterfeit detection.
• Image monitoring tools: Some services use image recognition technology to look for misuse of your logo.

Regular monitoring is the foundation of effective protection of your brand online. It allows you to keep your finger on the pulse and respond to any threats to your brand in a timely manner.

Subsection 3.2: Notice and Takedown procedure

So, thanks to monitoring, you have discovered an infringement: some site has content that illegally uses your trade mark (e.g. they sell counterfeits under your brand or use your logo without permission). What to do? One of the most common and often quickest ways to take action is through the “Notice and Takedown” procedure.

What is a Notice and Takedown?

It is essentially a request to an “intermediary” – a person or company that provides the technical capacity to post content on the Internet – to remove the infringing content. Such intermediaries can be:

• Hosting provider: The company on whose servers the offending site is hosted.
• Website or platform owner: If the violation occurs on a major website, marketplace, or forum that provides a venue for users to post content.

The idea of “Notice and Takedown” is based on the “safe harbour” principle that applies in many countries (e.g. in the US under the Digital Millennium Copyright Act – DMCA, although it is more about copyright, similar principles apply to TM). Intermediaries (hosting providers, social networks, etc.) are usually not liable for content posted by their users, provided that they promptly respond to reasonable reports of infringements and remove illegal content.

How do I make a Notice?

In order for your notice to be considered and acted upon, it must be written correctly and contain all the necessary information:

1. Your contact details: Name/company name, address, phone number, email.
2. Information about your trade mark: Name of TM, number of registration certificate, classes of ICTU. Attach a copy of the certificate.
3. Clearly identify the infringing content: Provide a direct link (URL) to the page(s) where the infringing content is posted. Clearly describe exactly what the infringement is (use of your logo, name, sale of counterfeit goods, etc.).
4. Justification for infringement: Explain why you believe this content infringes your trademark rights.
5. Statement of Good Faith: Include a statement that you are the owner of the TM (or an authorised representative) and that you believe in good faith that the use of your TM in this manner is not authorised by you, your agent or the law.
6. Information Validity Statement: Confirm that the information in your submission is accurate.
7. Your signature ( physical or electronic).

Where should I send my appeal?

Find contact details of the responsible person or IP department (abuse department, legal department) at the hosting provider or on the platform’s website. Many large companies have special online forms for filing such complaints.

If your complaint is properly and reasonably made, the intermediary is likely to remove the infringing content or block access to it to avoid liability. This often allows the infringement to end quickly without having to go to court.

The Notice and Takedown procedure is an effective tool for dealing with obvious infringements of TM rights on the Internet, especially when the infringer is difficult to identify or is located in another jurisdiction.

Subsection 3.3: Addressing Domain Name Administrators

We have already touched on the topic of domain disputes and cybersquatting. What to do if someone has registered a domain name that is identical or confusingly similar to your trade mark? Apart from the judicial route, there is an effective out-of-court mechanism – contacting domain name administrators through the UDRP (Uniform Domain Name Dispute Resolution Policy) procedure.

UDRP is the Uniform Domain Name Dispute Resolution Policy developed by ICANN (Internet Corporation for Assigned Names and Numbers). It applies to most generic top-level domains (.com, .net, .org, .info, .biz, etc.) and some national domains. It is a mandatory procedure for all ICANN-accredited domain name registrars.

Advantages of UDRP:

• Speed: Case processing usually takes about 2-3 months, which is much faster than litigation.
• Cost: The UDRP procedure is usually cheaper than litigation, especially when it comes to international disputes.
• Effectiveness: If you can prove all three necessary elements (discussed below), the chances of the disputed domain being transferred to you are quite high.

How does the UDRP procedure work?

1. Filing a complaint:You (the TM owner) file a complaint with one of the accredited dispute resolution centres (e.g. WIPO Arbitration and Mediation Center). In the complaint, you must
   • :Identify the disputed domain name.
   • Provide evidence of your trade mark rights ( a copy of the certificate).

Prove three elements:

• That the disputed domain name is identical or confusingly similar to your TM.
• That the current domain owner has no rights or legitimate interests in the domain name.
• That the domain name was registered and is being used in bad faith.

1. Domain Owner Response: The Dispute Resolution Centre notifies the current domain owner of the complaint and gives them an opportunity to file their response within a certain period of time (usually 20 days).
2. Appointment of Arbitrator (Panel): The Centre appoints one or three independent arbitrators to hear the case.
3. Hearing and Decision: The arbitrator(s) will review the complaint, the response (if any) and the evidence submitted and decide whether to transfer the disputed domain name to you or leave it with the current owner.
4. Enforcement of the decision: If the decision is in your favour, the domain name registrar is obliged to transfer the rights to the domain to you.

The UDRP process is designed to resolve the transfer of a domain name. It does not seek monetary compensation or other sanctions from the infringer. If you want to recover damages, you will have to go to court.

The UDRP is a powerful tool for fighting cybersquatting and the unfair registration of domain names that mimic your brand name. It is a relatively quick and effective way to regain control of a domain that should rightfully belong to your brand.

Subsection 3.4: Contacting social media and marketplace administrations

In addition to domain names, the battlefield for brand integrity often unfolds on social mediapages and virtual marketplace showcases . As we have already found out, creating fake accounts or selling counterfeit goods on popular platforms is a common practice of infringers. What to do in such cases? Contact the administration of these platforms directly.

Large social networks ( Facebook, Instagram, Twitter, TikTok, YouTube, LinkedIn, etc.) and marketplaces (Amazon, eBay, AliExpress, Etsy, as well as local ones) are interested in maintaining their reputation and combating fraud and infringement of intellectual property rights on their platforms. Therefore, they usually have their own trademark protection policies and procedures for handling complaints from rights holders.

How to file a complaint?

1. Find the relevant section/form: Each platform usually has a “Help”, “Rules”, “Intellectual Property Policy” or similar section on its website. There you will find information on how to file a trademark infringementcomplaint and, most often, a special online form for this purpose.
2. Fill out the form/write a request:You will need to provide:
   • Information about yourself ( the owner of the TM or its representative).
   • Information about your trademark: Name, registration number, classes of the Nice Classification, link to the registration (if any). Attach a copy of the certificate.
   • Link to the infringing content: The exact link to the page, account, product advert, post, etc.
   • Description of the infringement: Clearly explain what the infringement of your trademark rights is.
   • Other necessary data in accordance with the requirements of a particular platform.
3. Submit a complaint.

The administration of the platform considers your complaint. The review period may vary from several days to several weeks. Based on the results of the review, the administration can:

• Sustain the complaint: Remove the infringing content, block the offender’s account, remove the advert for the sale of counterfeit goods.
• Request additional information: If something is missing to make a decision.
• Reject the complaint: If the violation is not obvious or your complaint is not sufficiently substantiated.

Appealing to the administrations of social networks and marketplaces is an important tool in the arsenal of online TM protection. It allows you to respond promptly to many types of violations without the need to immediately go to court.

Section 3.5: Judicial defence

Out-of-court methods are a good thing; they often allow you to quickly “put out the fire”. But what if the infringer ignores your demands, the “Notice and Takedown” procedure does not work, the administration of the social network refuses the complaint, or you need not only to stop the infringement, but also to recover damages? In such cases, the most powerful, albeit the most complicated tool remains – judicial protection of your trade mark rights.

Appealing to thecourt is, in fact, an ultimatum measure, which is resorted to when other means are exhausted or insufficient. The court may not only oblige the infringer to stop illegal use of your TM, but also charge him with compensation for the damage caused, oblige him to destroy the infringing goods, publish the court decision, etc.

Features of litigation in the field of Internet law:

Online infringement litigation has its own specifics due to the very nature of the Internet:

• Jurisdictional issues: Where to file a lawsuit? Where the defendant is located? But it is difficult to establish it, and it may be abroad. Or at the place where the offence is committed? And where is it “committed” on the Internet? Or at the place where the consequences (losses) occur? These are complex questions, the answer to which depends on the specific circumstances of the case and the law.
• Identification of the defendant: As we have already mentioned, anonymity is a big issue. Before filing a lawsuit, it is often necessary to make efforts to establish the identity of the infringer (through requests to domain name registrars, hosting providers, ISPs, sometimes involving law enforcement agencies).
• Gathering and presenting evidence: Proving the fact of online infringement in court also requires a special approach. Ordinary screenshots may not be enough. The court may require notarised protocols of inspection of web pages, expert reports, data from web archives. It is important to properly record the evidence before it disappears.
• Proving damages: It can be difficult to calculate and prove the amount of damages caused by online infringement (e.g. from the sale of counterfeit goods or from “stealing” traffic).
• Technical complexity: Internet law litigation often requires the involvement of technical specialists and experts to explain certain aspects of the functioning of the network, websites, advertising, etc.

Despite all the complexities, judicial defence remains the most effective way to assert your trade mark rights, especially in complex or systematic cases of infringement. The decision of the court is binding and can be a powerful precedent for preventing future infringements. Of course, this route almost always requires the involvement of qualified lawyers specialising in intellectual property protection and internet law.

Conclusions

Trademark protection for online business and e-commerce is, in other words, a necessity. The specificity of the digital environment requires special attention when selecting ICTU classes (especially Class 35), domain name registration and social media presence. Remember that TM and domain registration are different processes.

The Internet creates new threats: cybersquatting, counterfeiting, fake accounts, phishing. Combating them is complicated by anonymity and the cross-border nature of the network.

However, there are tools for protection: constant monitoring, Notice and Takedown procedures, domain dispute resolution (UDRP), recourse to platform administrations and judicial defence.

The key to success is to be proactive: register TMs on time, choose classes carefully, monitor the web. Brand protection online is, nevertheless, a constant endeavour.

Polikarpov Law Firm lawyers are ready to help you at all stages – from registering a TM for your online business to dealing with infringements. Contact us so that your brand will be reliably protected in the digital world!