Trademark & Copyright

A Jurisdictional Guide

When the US Supreme Court recently ruled that Booking.com could trademark its domain name, the decision was a game changer for online businesses the world over.

The court decided by an 8-1 ruling that adding a “.com” combination to a generic word is no longer restricted under US trademark law. The US Patent and Trademark Office had initially denied the registration by Booking.com, arguing generic names were ineligible for trademark protection. However, this was overturned by the court which stressed consumers did not view booking.com as a generic term but as a brand offering online hotel reservations. Following the ruling, Booking.com said the decision was a good example of how the legal system can evolve to reflect the complexities of the digital age, heralding the successful conclusion of the case as a victory for any brand owner who has invested to build a global, digital brand.

Although the ruling will have a huge impact on trademarks far beyond the borders of the US, global intellectual property legislation remains a patchwork of interlinked bilateral and multilateral agreements that work in tandem with national laws in different jurisdictions.

Across the world litigation teams are forever busy working on intellectual property disputes involving patents, copyrights and trademarks. And with the breakneck pace of digitisation as business owners and legislators in diverse jurisdictions demand more protection for their brand names, such legal hurdles are set to continue.

These days global trade and innovation frequently result in product development, manufacturing, and sales originating in multiple countries around the world, thereby requiring that intellectual property protection and enforcement efforts be multi-jurisdictional in nature. Coordinating the filing of applications in countries around the world is important, not only for where products are to be distributed and sold, but also where they will be manufactured.

Consequently, with the digital transformation of businesses, products and services, intellectual property has become hugely complex in recent years, particularly for those operating in these multiple jurisdictions.

The good news is that most governments understand this critical role intellectual property plays in helping to underpin and influence all sectors of the traditional and digital economy. Even former rogue states now realise that intellectual property provides a framework that goes far beyond creativity and innovation, helping to determine national economies, international trading relations, competition and taxes etc. Intellectual property law is essential for the functioning of successful economies and plays a huge part in the wealth of nations.

The World Intellectual Property Organisation (WIPO) is currently inundated with a plethora of international issues around what constitutes intellectual property in a changing world and plays a crucial role for governments and businesses, helping nations become more aligned around legislation that will sit at the heart of the global economy.

Unfortunately, the recent Covid-19 pandemic was a setback for multijurisdictional intellectual property law as governments signalled a retreat from global institutions with a more protectionist outlook. But legal experts believe that a post-Covid-19 future is secure as all the elements were already in place for progressive approaches to intellectual property prior to the global lockdown. Moreover, many believe intellectual property law is now more essential than ever to help provide the motor for innovation amid the challenges of stalled global economic growth.

The link between intellectual property and innovation have never been more evident for future global prosperity and robust legislation will be fundamental to ensuring international trade is able to return to a healthy growth. Many believe the post-pandemic intellectual property legal order will be built on collaboration and resilience to ensure the law helps rather than hinders solutions to global challenges.

In the following pages members of IR Global write candidly about intellectual property law in their jurisdictions and how legislation is changing to ensure countries and businesses are able to adapt to the changing trends. They discuss why it is more important than ever for international businesses and nations to prevent infringements on intellectual property for the successful development of the global economy.