"Use of others´ trade marks in digital media: a contribution to clarification of the content and interfaces of trade mark law" is the title of the PhD thesis of Danish intellectual property lawyer Knud Wallberg.  

This thesis has now been published as a book: it's Danish but Knud is looking forward to publishing an article in English that is based on it.  The book's details are available on the publisher's website here. Meanwhile, here's a summary of the thesis:

The Internet's breakthrough as commercial media around the year 2000 quickly gave rise to legal challenges in several areas, among them in trade mark law. And since then, the challenges have grown both in nature and scope due to the emergence of new phenomena such as social media websites and online trading platforms and due to the exponential growth of users of the digital media.

Many aspects of these legal challenges have been addressed by legal scholars as well as by the courts including some of the aspects of the topic if this thesis: the use of others trade marks in digital media.   Although some of the issues have been clarified in particular through the jurisprudence of the Court of Justice of the European Union, the legal position is far from being clear and predictable.  And the main objective of this thesis is to contribute to an increased legal clarity and predictability as far as the use of others´ trade marks in digital media is concerned

The objective will be pursued by analyzing existing law within three key ramifications of trade mark law – the legislation on trade marks based on the EU Trade Mark Directive, the partly harmonized legislation regulating unfair competition and the regulation of domain names –  and the aim is to identify which  criteria that shall be taken into account when assessing whether the use of another's trade mark is permissible or not, and to define the detailed content of these criteria. The three legal ramifications do however, interact in a way that has given and continues to give rise to theoretical considerations and difficulties in legal practice. The thesis will address this issue and will thus try to identify the extent of this interaction, and to determine which interpretational principles that applies in situations where a specific use of another's trade mark is subject to regulation by more than one of the legal ramifications.

Although it has a scientific value in itself make these vertical and horizontal analysis, and to present the results,  the dissertation will ask the  additional research questions whether the applied analytical approach can be characterized as a general analytical model that can used to make legal assessments of whether a particular use of another's trade mark in a digital medium is consistent with or is in breach of trade mark law, and as such will help to improve the clarity and predictability in the field of law that is the theme of the thesis.

The dissertation is divided into four parts:

The first part addresses the theoretical and methodological considerations that form the basis for the thesis. It also contains the list of used expressions and a specific subchapter entitled "the description problem of trade mark law", which lists and explains ways of using others trade marks that are specific for the digital media and which are necessary to be aware of when conducting the following legal analyses. 

Although the focus of the thesis is an analysis of valid law the second part of the dissertation contains an analysis of how trade mark law in general and of the permissibility of using others trade marks in particular have evolved over time and up to the current legal situation. The analyses show that trade mark law and unfair competition law has been and continues to be two areas of law that can only be understood, analyzed and applied when seen as coherent areas of law. The chapter also reveals that the international treaties - the Paris Convention and the TRIPs- agreement do not contain provisions the application of which are challenged by the digital media per se.   

The third part of the dissertation is in regard to both  scope and content the principal part.  This part contains the analyses and assessment of valid law, divided into the three legal ramifications: Trade mark law, unfair competition law and the regulation of domain names. The analyses in the respective ramifications consists of a vertical part - in the form of an analysis and identification of the group of criteria that must be included in an assessment of the permissibility to use another's trade mark in a digital media, and a horizontal part - in the form of an analysis and identification of the principles of interpretation to be applied when a given use may be covered by several branches of the trade mark legislation.

As to the outcome of the analyses of the three legal ramifications, these can be summarized as follows:

The analyses of the first ramification reveals that the ambiguity in the trade mark legislation is caused not so much by ambiguities in legal texts themselves but  rather by the interpretation of the Trade Marks Directive by the Court of Justice of the European Union.

The legislative criteria of “use in the course of trade”, “consent of the proprietor” and the “double identity rule” as well as the provisions containing the limitations to the exclusive right of the trade mark owner concerning “referential use” and use for “exhausted” goods has thus been applied to the use of trade marks in digital media with only a few interpretational clarifications by legal theory and the CJEU.  The dissertation finds that this is also the case as far as application of the principles of freedom of speech and the limitations incurred by competition law are concerned: the dissertation finds that both areas of law apply as internalized parts of trade mark law.

The CJEU has however applied the criteria “the functions of the mark" and has introduced and applied the criteria "trade mark use” as being the most decisive criteria in cases dealing with the use of others trade marks.  The dissertation reveals that these criteria do have a basis in trade mark law theory and literature, so it is not the inclusion of the criteria per se that is the problem, but the often ad hoc and inconsistent way the criteria has been applied to and developed by the Court. The theoretical analyses and the analyses of the way the  criteria are applied in legal practice does show that the criteria “trade mark use” can be further clarified by applying supplemental criteria based on the contextual or technical  use of trade mark in  the digital media. By contrast, the analyses of the criteria  "the functions of a trade mark “ as it has been applied by the CJEU and has been discussed in legal theory, reveals that the content of this criterion is so unclear that it is not  a tool that is suitable for determining the scope of the rights conferred to a trade mark rights reserved – an ambiguity that ultimately can only be resolved by the CJEU.

The analyses in the dissertations second ramification finds that relevant provisions of unfair competition law (“Markedsføringsloven”) do apply   to the issue at hand – the use of others trade marks in digital media, and that the specific provisions in § 3 on misleading advertising and in § 5 on comparative advertising, both of which are based on EU-Directives, can been applied with only a few interpretational clarifications provided by legal scholars and the CJEU.

As far as the general clause on good marketing practices in § 1 is concerned , which is not subject to specific EU- harmonization, it is demonstrated that the criteria that is in  theory to clarify the scope of the clause  in general can also be used in relation to the use of others' trade marks in digital media. At the same time, it is demonstrated that there is an overlap between the trade marks act and markedsføringslovens § 1, and that this overlap in practice has led to an unclear legal situation. Although it is generally recognized in legal theory that trade mark law should be considered as lex specialis in this context, the analysis shows that jurisprudence does not consistently reflect this, and that this inconsistency is not just a problem in itself, but also makes it unclear whether the use of the general clause is consistent with the general duty to interpret and apply national law in conformity with EU-law.

The third ramification - the regulation of the registration and use of domain names - is characterized by being neither treaty-regulated nor covered by EU- harmonization. Instead the overall legal framework for the technical administration of and for determining the registration conditions for a TLD constitutes of a set of agreements concluded between the organization ICANN, each administrator of a TLDs, the accredited registrars and the individual registrant of a specific domain name, and where the administrator of each TLD has a high degree of freedom to determine the detailed conditions for the registration and use of domain names under the TLD. The thesis includes the analysis of two different forms of regulation of such conditions in the form of an analysis of the Danish Act on Domain Names and an analysis of the Uniform Dispute Resolution Procedure ("UDRP"). The domain names act regulates only the .dk TLD and includes one provision of substantial character namely § 25, which in its 1^st paragraph states that registrants may not register and use. dk domain names contrary to "good domain name practice", and in its 2^nd paragraph states that registrants of .dk domain names must not register and maintain such registrations  "solely for the purpose of resale or lease". The UDRP is a set of detailed provisions that is included in all agreements for the registration of a domain name under one of the gTLDs (.com, .net, .org, et al), and which provides the holder of a trade mark right with a remedy to get a domain name that contains his trade mark and which is registered and used in bad faith, transferred to him or deleted. .

The dissertation demonstrates that the registration and use of domain names containing others´ trade marks, is subject to the general law on trade marks and that this legislation has been able is able to address most forms of use of such domain names, but not all. This is particularly true for the non-commercial   registration and use of domain names, which on the other hand is covered by both the Danish Domain Name Act and the UDRP system, but is also true specific types of commercial use. The thesis identifies the criteria, which can be used to determine whether a particular use of another´s trade mark is subject to either of the said regulations, and demonstrate that even though the two systems employ different regulatory mechanisms –  a statutory general clause and specific contractual terms - and although both sets of rules has given rise to questions of interpretation - so it is possible to identify such criteria and to determine their content with a high degree of precision.

The dissertation's fourth and final part summarizes the results of the analyses and concludes that the final research question can be answered in the affirmative: It has thus been possible to identify and define the content of the criteria to be considered when assessing whether the use of another´s  trade mark is subject to the each of the legal ramifications respectively, to identify a number of interpretation principles of interaction within and between the branches, and to demonstrate that these factors together form an general analytical model that can help to improve the clarity and predictability in the area of law that was the theme of the thesis: the use of others' trade marks in digital media.