22 December 2016

Does your business have an online e-commerce platform or marketing website or are you in the process of developing a new website? Despite the ubiquity of the internet, we see a surprising number of issues arising from businesses launching or redeveloping their websites without obtaining adequate advice about domain names, intellectual property and data protection.

Protecting your Intellectual Property (IP)

Development of a strong brand is more important than ever and conducting competitor research has never been more critical. Now that most businesses are online their IP is much more public. This also means that previously geographically distant businesses are much more likely to become competitors in the online market place. Some confusion has arisen for new businesses which have assumed incorrectly that because a company name or domain name is available, the name is “not in use” and, consequently, they are free to use the name.

It is also necessary to conduct searches with the World Intellectual Property Office to determine if anyone has a registered trade mark that might be infringed by the proposed name and to consider if anyone might have a common law trademark (a pre-existing unregistered use of the name) which might be infringed by the name proposed.

Businesses must take care that the overall appearance of their website does not infringe the trade dress of their competitors by replicating the appearance of a competitor’s site. Issues have arisen for clients in respect of infringement of copyright images, often inserted into sites by developers who have had insufficient regard to the source of content and its ownership. We can provide advice about the licensing issues associated with using digital content. We can also guide you through the process of instructing a web developer and the contractual considerations necessary to ensure that your developer performs their obligations and does not expose you to allegations of IP infringement or inadequate security.

Domain names

Common problems arise where domain registrants are contacted by organisations claiming to be Registries who have been contacted about the registration of trademark or brand identical or similar domains. While some businesses may seek to make defensive registrations of trademark identical or similar domains, the increase in the number of new domains approved by ICANN (The Internet Corporation for Assigned names and Numbers) means that it is not realistic for many businesses to register all of the domains corresponding with or similar to their brand. This intentional expansion of the domain space highlights the distinct difference between the functions of domain names as address identifiers pointing to a specific location on the internet and trademarks as a badge of origin for goods or services.

For many businesses, vigilance is the key to ensuring that other similar domains are not being used to redirect traffic intended for their site to direct competitors. It is possible to challenge domain registrations which infringe trademarks before the appropriate registry. Website operators that are concerned about competing domains should obtain advice about which domains to register and about the prospects of having trademark identical domains transferred under proceedings before the appropriate registry.

Privacy

Do you understand what information your website gathers and have you got a privacy policy that covers your activity?

The British Pregnancy Advisory Service ran into trouble because it did not understand that its website stored its site user’s sensitive data in a way which was insecure and breached the seventh principle of the UK Data Protection Act 1998.

To protect against such breaches it is essential that:

1. the contract you have with your web developer defines their responsibility to ensure that your site is secure and that you have appropriate independent testing of its security features;
    
2. you have an appropriate privacy policy and provide adequate notice about the cookies you have used on your site to track users; and
    
3. the information requested in your online forms is adequate and not excessive.

From IP infringement, to reputational issues and data protection compliance, talk to our Technology & IP team for advice about how you can avoid some of the common pitfalls of online trading.

Paul Motion, Partner & Solicitor Advocate prm@bto.co.uk T: 0131 222 2939