The thesis is a comprehensive review of the law and practice relating to authorities that regulate intellectual property rights (trademarks, geographical indications, trade names and domain names) in EU member states and in Ukraine. It contains a wide-ranging analysis of legislation governing intellectual property rights in France, the UK, Germany, Austria, the Netherlands, Poland, Sweden, Portugal, Denmark and Finland.
A thorough review is undertaken of international treaties, directives, conventions and other legislation from outside Ukraine, as well as of court practices within Ukraine and in EU Member States that protect intellectual property rights. In particular, the thesis refers to a need to amend existing Ukrainian legislation to improve the potential for search engines to better identify the existence and terms of registered trademarks.
The necessity to consolidate numerous provisions into national legislation aimed at improving the mechanisms for the implementation of subjective rights to trademarks as keywords in search engines has been emphasised.
The thesis stresses that the legislation of Ukraine, in the context of its approach towards EU law, should be updated as soon as possible in line with European legislation regulating the functioning of modern information technologies (IT) and the Internet. The evolution of electronic commerce, popularization of the Internet and growing demand of intellectual property rights protection, led to a variety of problems that have to be regulated legally. These, however, are not always foreseen by the legislator in time. It is common for different branches of science to intersect and as a result to create totally new legal formations. For example, the intersection of keyword advertising technologies and trade mark law resulted to the emergence of clearer and more detailed legal regulations.
As the virtual world increasingly intersects with real life, companies around the world might be interested in a clearer regulation of keyword advertising. A great number of well-known firms in Ukraine, the UK, France, Germany, Austria, the Netherlands, Belgium etc. are faced with the problem of the sale of keywords, which correspond or are identical to famous trade marks, by Internet service providers (ISPs) to third parties. One of the main reasons behind this trend is the public’s growing preference for online shopping, either for products or services. As an Internet user conducts a search based on certain words / phrases, ISPs then produce a list of sites, which best matches those keywords in decreasing order of relevance. As a result, in order to attract more clients, owners of specific websites started buying keywords from the most popular ISPs. This situation led to the point where trade mark proprietors complained about the infringement of their trade mark’s rights.
A recommendation to consider the establishment of a special chamber to review disputes arising on the Internet as a part of the jurisdiction of the High Court on Intellectual Property Issues has been developed (as a result of the constitutional reform and creation of the High Court on Intellectual Property Issues). It is highly important due to the constant increase in the number of Internet infringements.
A comparative analysis of EU Member-States and European Court of Justice (ECJ) case law on violation of rights to commercial signage is presented. The disparities between Member States’ law lead to the comfortable positioning of ISPs in particular countries, rather than others, precisely on account of their favourable regulations in regard to keyword advertising. It should be emphasized that the Dutch case law differs from the French in that the questions that arose in the Netherlands concerned the liability of the advertiser rather than the ISPs, which was their focus in France.
The legal analysis of using trademarks as keywords in advertising through the Internet has been deeply and precisely examined in the thesis. The study provides a review of the main functions of trade marks, as it is critical for overall understanding of the keyword advertising controversy. It is argued that the advertising function carries no less significance than the essential function, particularly when the research aim of thesis was to analyse keyword advertising in the context of trade mark law. The material is based on the most recent European Union case law in combination with its statutory regulation both in Ukraine and the EU.
It is not right for a company to escape liability, offering its services from a particular EU country with favourable legislation, while others have to suffer financially for its misconducts. It may turn out that business structures will move to particular countries under the sole purpose of escaping liability. For the moment, French and Belgian legal practice recognise the use of trade mark signs by a competitor as a trade mark infringement, in comparison to the UK and Germany, where no un
