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Tuesday, 25 January 2011

Rogue websites: a problem ... and a prize

If only cyber-pest control were so simple ...
The IPKat has made much in recent weeks of the difficulties faced by the World Intellectual Property Organization (WIPO) in its battle with the World Intellectual Property Database (WIPD) over the latter's deceptive and misleading imitation website -- which remains obstinately online even several months after its existence was first reported (see earlier Katposts here, here and here, for example).  Interest is particularly keen in intellectual property circles because the WIPO is the United Nations agency charged with the promotion of intellectual property rights and it is its own IP rights that appear so difficult, if not impossible, for it to protect.  However, the issues at stake go far wider than WIPO since it could equally well have been any other UN agency that was the target of this infringing activity.

Let us take the following hypothesis.  This time it is not WIPO but its sister agency the World Health Organization (WHO) which faces a problem.   An imitation website, featuring an organisation calling itself the World Health Department (WHD), can be accessed on www.whd.biz [nb at the time of posting this item, that URL was a parked domain].  A logo closely similar to that of the WHO adorns the WHD's home page; the artwork and fonts are generally similar too.  There are no email, phone or fax contact details but, under "contact", an address in Prague, Czech Republic, is listed.  From this website the WHD offers "WHD-approved" medicines and pharmaceutical products. Some of these products are genuine pharma products with expired "use-by" dates; others are suspected of being counterfeit or of having no curative function. The WHD also sends materials to distributors and suppliers of pharmaceutical goods and to the health ministries of a number of developing countries; while carefully worded so as not to state that they are invoices for goods purchased, they look superficially as though they are.

Reports reach the WHO that this site exists and that its sales offers and not-quite-invoices have deceived or induced a number of businesses and recipients to place orders or pay money.  There are concerns that the activities of the WHD will place the health of consumers at risk, diminish the financial resources available for health in developing countries and damage the reputation of the WHO itself, since some people are convinced that the WHD is a service provided by it or under its auspices.

The WHO has written to the person named as owner of the website and has asked him to cease and desist. The individual in question has neither ceased nor desisted and, since the site earns him valuable income, he is unlikely to walk away from it without a struggle.  Now the WHO comes to you and seeks advice, informing you that it does not hold any registered trade marks for its name or logo but that it is entitled to a degree of legal protection under Article 6ter of the Paris Convention on Industrial Property Rights. 

Your brief is to sketch out a responsible, affordable and legal plan for taking out WHD's www.whd.biz website as swiftly and efficiently as possible, ensuring that it attracts as little traffic until this is achieved and that, as far as possible, there is no repetition of this deception by its perpetrator. 

Please send your advice to the IPKat by email here, with the subject line "Rogue sites", by close of play on Sunday 6 February 2011.  The best entries will be hosted on this weblog and readers will be given the chance to vote for the winner.   The prize?  A brand-new copy of Alexander Tsoutsanis's excellent Trade Mark Registrations in Bad Faith, just published by Oxford University Press (details here).

7 comments:

Anonymous said...

you don't say if this competition is open to employees of wipo :-)

Anonymous said...

Ha Ha - you don't say if the competition is open to employees of wipd either!

Anonymous said...

Section 58(4) TMA 1994, anyone? Equivalent provision in Czech law?

Anonymous said...

yes there is - section 4, but these relate to registration of the marks. There should be provision for enforcement of unauthorised use of the unregistered marks. Do these exist in UK?

Anyway, WIPD have changed their logo so now they can rip people off without fear of action on behalf of WIPO.

Anonymous said...

58 Emblems, &c. of certain international organisations: Article 6ter.

(1)This section applies to—

(a)the armorial bearings, flags or other emblems, and

(b)the abbreviations and names,

of international intergovernmental organisations of which one or more Convention countries are members.

(2)A trade mark which consists of or contains any such emblem, abbreviation or name which is protected under the Paris Convention

*shall not be registered without the authorisation of the international organisation concerned,*

unless it appears to the registrar that the use of the emblem, abbreviation or name in the manner proposed—

(a)is not such as to suggest to the public that a connection exists between the organisation and the trade mark, or

(b)is not likely to mislead the public as to the existence of a connection between the user and the organisation.

(3)The provisions of this section as to emblems of an international organisation apply equally to anything which from a heraldic point of view imitates any such emblem.

(4)Where by virtue of this section the authorisation of an international organisation is or would be required for the registration of a trade mark,

*that organisation is entitled to restrain by injunction any use of the mark in the United Kingdom without its authorisation.*

Anonymous said...

WIPD may have changed the logo on their webpage but the webpage icon which appears on the tab header and by the web address is still the WIPO logo...

sim only deals said...

Thanks for the share. Have a great day!

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