Smart phones are everywhere, on the streets, in restaurants, in backyards, at airports, in offices, and in homes. With the growing popularity of smart phones, comes the growing popularity of mobile applications which run on smart phones. How to address the challenges of intellectual property (“IP”) in the mobile world is always a hot topic. This is also a difficult topic fueled by the growing popularity of online and mobile technologies and legal challenges created by such popularity.
Traditionally, trademark rights have long been confined within territorial boundaries. The laws in each country determine the rights of trademark owners in that country, and also impose different obligations and requirements in that country. However, the mobile online world transcends these national borders and brings new challenges in rights clearance, portfolio management and right enforcements, among others.
For example, when a new technology company creates a new smart phone application (“App”), one of the first things is to name the App. Creating brand recognition for the App using a carefully selected App name can be crucial to the success of the App (and the company). Naming an App and creating a brand, of course, fall squarely within trademark law. In the traditional world, a similar task such as naming a new restaurant would rarely require clearance of the name beyond the local jurisdiction where the restaurant would locate. This is not so for a new mobile App.
The mobile App may be simultaneously launched in multiple foreign markets, which will require name clearance in all these jurisdictions. Failure to properly clear the name in all these jurisdictions may inadvertently infringe upon other’s trademark rights, possibly in a faraway jurisdiction, and bring litigation to a young company’s doorsteps. For a new technology company which faces many different challenges already, this is one that could and should be avoided.
Management of a global IP portfolio can be challenging. For example, it would be a tremendous financial burden to register IP rights in all jurisdictions where locals could possibly access the mobile App online. Some may wonder, what would be the consequences of not registering in a jurisdiction? There might be many, one of them relating to whether to use trademark marking. It is common to use trademark markings to provide notice to others of the owner’s trademark. Providing such notices may be required in many jurisdictions for recovering damages. This is often an easy decision, but not so easy in the mobile world. In some jurisdictions, there may be negative consequences for claiming to have a trademark that you did not register there. Therefore, if the mobile App uses trademark markings, this could lead to a violation of local laws in certain jurisdictions. Thus, to register or not to register, and where, could be a thorny issue.
Similarly, rules governing trademark use and enforcement vary from jurisdiction to jurisdiction. A technology company may be based in Canada, for example, but may have to enforce its trademark rights in Asia. Laws and legal rules governing trademark rights recognition and enforcement in an Asian country may be different from those in Canada (and often are!). Moreover, whether courts will recognize and enforce your rights set forth in your online terms and conditions may also be uncertain and may depend on how well your terms and conditions are drafted to follow local laws and regulations. “You have to follow (local) law if you want trademark protection,” as once a judge from China’s Supreme People’s Court advised.
There will be new challenges associated with the mobile world. Due to the diversity and complexity of these challenges, there also will not be any one-size-fits-all solution. It is therefore important for a young start-up company to plan ahead, carefully review its current or initial market(s), its contemplated future growth path, its potential future market(s), the priorities assigned to these markets, the company’s business plan and its marketing plan, and seek legal advice early on to understand how its growth may be assisted (or hindered) by the legal environments in the intended market(s). With careful analysis and consideration, solutions can be found to address these new challenges, one solution at a time.