The use of a third party’s trademark on the internet is a widespread practice. More precisely, it involves the illicit use of the distinctive signs of a company: an actual offence that is configured as unfair competition, according to art. 2958 of the civil code. In fact, this article specifies how
the adoption of distinctive signs or names, such as to generate confusion with those that others legitimately use, falls within the category of deeds of unfair competition.
Generally speaking, unfair competition involves actions that are able to damage a third party’s company, as they do not comply with the standards of professional correctness. Think, as an example, of trademark debasement and dilution: they occur when the distinctive ability of the trademark itself is damaged, and no longer identifies a specific product, to the point of causing confusion in the consumer. Turnishing, in particular, is the phenomenon whereby a well-known brand is used to identify lower-quality items. Blurring, on the other hand, consists in connecting the brand to products other than those that originally distinguish it. In both cases, these are behaviors that cause a prejudice to the brand’s distinctiveness and reputation.
Unfair online behaviour
It is very common to come across the misuse of a trademark on the internet in order to attract traffic to sites other than those legitimately referable to them: this causes confusion among consumers. Using a well-known brand as username on social media is one of the most common illicit practices occurring on the web; such behaviours, because of the specific features of this market, end up prejudicing trademark owners. It is a fact that happens with the advent of digital marketing. The same goes for using a well-known trademark as adword, meta-tag or for the registration of a domain name: this specific practice is called ‘domain grabbing’.
Registering a domain with a brand name
The use of a third party’s trademark on the Internet occurs when a domain name is registered with the name of well-known brand in order to benefit from its reputation. Such a conduct is capable of jeopardising the registration of a domain name and, moreover, can be a source of misunderstandings for consumers. Thus, customers risk being misled by future references to the brand in question on the site. Case law, as confirmed by expert trademarks and patents lawyers, has made definitely clear that the domain name is one of the distinctive signs of the company and the creation of a brand and, consequently, has expressed itself in favor of its full protection. The domain name, in fact, can be assimilated to all extents and purposes to an industrial property right, and as such be object of protection given its identifying function, even on a technical level.
Domain name protection
Art. 22 of the Italian criminal code refers to the principle of unity of the distinctive signs, which can be applied to protect the domain name. Thanks to it, a trademark owner can prevent its use for services or products, whether they are similar to theirs or not, in the event that the use of the sign without a just reason causes a damage to the trademark owner, or allows the other party to obtain an undue advantage. In addition to that, Art. 7 of the civil code refers to the right to name, and states that the termination of the harmful fact can be requested by the person affected by the prejudice resulting from the improper use of their name by others.
Use of a third party’s trademark as an adword or meta-tag
Among the possible online misuses of well-known brands that cannot be easily spotted by consumers is the use of a brand as a meta-tag. These are key-words that:
- are not immediately visible on web pages
- are aimed at making searched within the website easier
- enable increases in visibility
The consequence is that when users search for a certain brand, they land on pages that have nothing to do with the brand even if they use meta-tags that are attributable to it. Thus, the site in question benefits from the high visibility related to the popularity of the brand, which otherwise it could not have. Furthermore, the brand itself is debased as it is compared to a lower-value brand.