A significant change in the trademark law of the Cayman Islands
Previously, under The Patents and Trade Marks Law 2011, it was possible to gain trade mark protection in the Cayman Islands by way of an application for a UK or Community trade mark registration. With only a registration number, extension of that trademark protection could be requested in the Cayman Islands. The CIIPO would then conduct only a minimal examination of the trademark.
Furthermore, since the Cayman Islands is not a signatory of the Paris Convention, priority could not be claimed and trademark protection would be effective as of the registration date. The International Classification system was used and multi-class applications were allowed to the extent that these classes were requested for the registration of a UK or European Community trademark. Previsouly, the law also required the payment of maintenance fees payable to the Government of the Cayman Islands in January of each year. These fees could be paid up until March 31st of that year. Failure to pay annual fees would result in the suspension of protection of the trademark until payment was received. Beyond twelve months, the Registrar may cancel the record of the trademark.
What changes does the new law bring about?
As of now, the CIIPO will only accept national registration applications made directly to the Registrar.
In addition, the examination process will not be minimal, as applications will be examined on both absolute and relative grounds. There will also be a provision for opposition to the registration of the trademark.
The requirement to pay annual maintenance fees in order to maintain a valid trademark registration has however been retained.
Recommendations for registering your trademark
With the new law, which should enter into force during 2017, the timeframe to obtain a trademark registration will be extended.
We encourage you to register your trademarks directly with the Cayman Islands Registrar so as to prepare for the coming into force of the new law and for the potential issues that could arise. It is better to take prompt action in order to anticipate delays and the difficulties that the national Registrar will encounter in order to adapt to the new law.
Dreyfus & associés will certainly inform you of the developments in trademark law in the Cayman Islands. We remain available should you require any additional information.
The blockchain refers to data storage and transmission technology which is transparent and secure and operates without a central governing body nor any intermediary. It is an unalterable database that contains the history of all exchanges between its users, since its inception. Each transaction is encrypted and becomes a ‘block’ which is then validated automatically by the network. It operates with a digital currency; the bitcoin is the most common form. This currency allows for the creation a dematerialised settling of transactions.
A new type of organisation
The blockchain is thus based on a fundamental principle: the removal of an intermediary between two people involved in a transaction. There is therefore no need for trust among people interacting since the entire process is automated. While since its inception in 2007, the blockchain has been limited to financial transactions, it continues to grow and is now more widespread. It is therefore important to instill trust and confidence back in to interactions that involve more than one human individual.
What we are witnessing is the emergence of a new type of organisation. The central body that coordinates the interactions between individuals and recovers the generated value has disappeared. In these new systems, individuals themselves work together directly, without the intermediary. The operation system is indeed much more collaborative.
With this kind of decentralised collaborative application, the question now is whether to remove not only the intermediary but also the administrator, the “trusted third party” who certifies the validity of authentic deeds (for example, a notary).
The legal issues surrounding the blockchain
Henceforth, new legal challenges have begun to crop up, in particular the issue of liability. Indeed, if all actions are performed independently and anonymously, who will be liable for opening an illicit network? Even if the creator of the blockchain is identified (which seems difficult in view of the principle of anonymity which is omnipresent in such technology), the operations cannot be stopped since they are carried out independently of the blockchain.
Clearly, it is unreasonable to apply traditional legal rules to this new and expanding digital environment. It is therefore essential to establish a new legal framework that can support, in particular, the development of the blockchain. The expression “code is law” illustrates the need for a new techno-legal revolution for the digital world, independent of the physical one.
As to the regulation issue, one may wonder what position the government will adopt vis-à-vis the blockchain. While the blockchain can afford to evade the rules in force as well as State control, it can also lose its potential if the States seek to have too much influence on it.
The legal status of the blockchain
Discussions have already been held at the National Assembly in France. On May 13, 2016 an elected representative of Eure-Et-Loir département, filed an amendment to the recognition of the blockchain in payment systems and conferring upon it the same legal status as a deed. Although the amendment was rejected and the Minister of justice stated that the blockchain would not replace a notarial deed, this proposition proves that the blockchain and its legal status undoubtedly stirred debate within the government.
Another interesting debate is the legal recognition of smart contracts that are based in the blockchain. These standalone software automatically predefine certain conditions without the need for any human intervention. The advantage of this is that the conditions cannot be modified while the contract is running, thus preventing abuse or contractual fraud. Therefore, the cost of verification, enforcement and arbitration are reduced. This in turn, relates back to the idea of avoiding intervention from a “trusted third party”.
Smarts contracts are software, rather than contracts, and like the blockchain itself, do not possess any legal status. They are not binding on third parties (or at least not yet).
These technical applications of contracts could be applied to many areas: tax (collection and automatic deduction of value-added tax), insurance (traveller compensation system in case of flight delays on the Ethereum platform), real estate (registration of title deeds), health (management of patients’ information), transport (decentralised carpool service) or even online voting (secure system preventing fraud).
In any case, we are still at the beginning of what is likely to become a revolution in the coming decades. All current decisions will influence the future of the blockchain, that of our society and its organisation. Implementation of a legal framework for the blockchain is key and it is the government’s role to provide legislation on the subject.
According to the decision, from now on, anyone wishing to file an opposition must do so via an E-service, therefore fully accepting the Institute’s terms of use regarding the electroning filing of an opposition against a trademark registration as well as the use of E-Procedures. It is no longer possible to file such an opposition by any other means than the E-service.
In short, since May 1st, 2016, the French National Trademark Institute has made the online filing of an opposition to a trademark registration on the INPI website mandatory.
Futhermore, all subsequent exchanges and the submission of observations must be done exclusively via the online service of the Institute.
The legislation of the Republic of Belarus has recently evolved through a law adopted on January 5, 2016. The law will allow Belarusian law to advance its current practices in the field of trademark law. Further opportunities for trademark applicants have also been implemented. The amendment came into force on July 15, 2016.
First and foremost, with the new law, trademark registrations with the National Intellectual Property Center can now be filed not only by companies but also by citizens, including foreign citizens. Indeed, before this law was adopted, it was impossible for a foreigner to register a national Belarusian trademark.
Some of the other significant changes in the law adopted on January 5, 2016, include:
Grounds for refusal of registration
A list of grounds for refusal of registration was added and amended by the law of January 5, 2016. Before the law was enacted, the registration of trademarks exclusively composed of symbols or indications used to designate the following was not authorized:
– kind,
– quality,
– quantity,
– property,
– value of the goods,
– process of their manufacturing or selling.
According to the amendment, registration will now be refused only if the abovementioned symbols or indications are dominant components of the trademark being registered, rather than on grounds of their mere presence.
Also, if a sign is identical or confusingly similar to a design or a plant variety protected in Belarus, and if the goods or services are themselves identical of similar, it is impossible to register such a sign as a trademark.
Integration of the International Classification for goods and services (Nice Classification)
From now on, the trademark registration application must bear reference to the Nice Classification for goods and services. Before the law was adopted on January 5th, 2016, such an indication was optional.
What we have here is clearly a desire for the Republic of Belarus to harmonize its IP law with international law standards.
Restoration of expired time limits
It is now possible to restore a number of expired time limits:
– the time limit for responding to a preliminary examination request;
– the time limit for responding to an expert examination request;
– the time limit for submission of a petition for conducting an expert re-examination;
– the time limit for lodging a complaint with the Court of Appeal.
However, it is only possible to restore the abovementioned time limits within three months of the date of their expiration. In addition, time limits will only be restored in exchange for payment of the restoration fees. Finally, the applicant needs to provide proof of a reasonable justification for missing the deadline.
Additional changes have been introduced by the law adopted on January 5th, 2016, such as the prohibition of voluntary licenses between commercial entities. These amendments have allowed the Republic of Belarus to bridge the gap between its legislation and that of other countries, having signed international conventions such as the Nice Agreement.
A hashtag is a word or phrase (“tag” in English) preceded by a symbol similar to the hash (“hash”), used to thematically classify content on social networks.
In a notice published in the Official Journal of January 23, 2013 , the General Commission of Terminology and Neology defined “hashtag”, or “mot-dièse” in French, as: “A meaningful sequence of characters without spaces starting with # (hash), which indicates a topic of interest and is inserted in a message by the author to facilitate the identification thereof.”
The hashtag was first used on Twitter in August 2007. Technically, the hashtags allow the author to contextualize a publication and consolidate the contents consisting of the same keywords. Therefore, in the same manner as the domain name, the hashtag has become a real communication tool and a significant, intangible asset for companies. Faced with the extensive use of the hashtag, it is necessary that limitations on its use are set and it therefore seems legitimate to question its legal status.
The hashtag and fundamental freedoms
Under French law there is no express provision relating to hashtags. However, if some hashtags are considered illegal such as ” #UnBonJuif”, “#AntiNoir” or more recently ” #JeSuisKouachi”, it falls both within the scope of the Law on the Freedom of the Press of July 29, 1881 on racial defamation offences as well as the recent counter-terrorism law of November 13, 2014 .
Use of such hashtags is unfortunately common in that social networks do not review messages published by users until after they are published and often, only if they are subject to a specific report. This suggests that the derogatory liability, according to which the host of the publication will not be held liable if the latter is not aware of the message before it has been posted (Article 6 I. 2 of the Law of June 21, 2004 regarding Confidence in the Digital Economy ), applies to social networks and cannot be questioned in cases of disputed hashtags. Thus, there is no doubt that a user who shall commit an offence or tort through the use of a hashtag that is provided for by the law could be prosecuted and convicted by the French courts, alone or along with the social network.
However in most cases, the disputed hashtags originate from, or are taken up by persons using a pseudonym, thus making their identification complicated. One can take the example of the hashtag ” #UnBonJuif”, for which Twitter had been served a notice by various associations to take prompt action to remove them and to reveal the identity of the authors of the impugned words. Having faced controversy over the res judicata of the decision on account of the international nature of the social network, in July 2013 the associations finally managed to obtain – through mutual agreement with Twitter – the identification details of the authors of the contentious tweets.
As such, the hashtag which is used as a tool for expression and communication, falls under various criminal and civil law provisions on the protection of fundamental freedoms. Any abuse is therefore legally actionable. Despite numerous requests for the removal of tweets, so far, only Twitter has been subject to very few convictions in France, due to the abusive nature of hashtags. France alone accounts for 87% of requests worldwide.
Considering that a hashtag may enjoy legal protection under intellectual property law is a significant advantage for companies as they could avail themselves of civil and criminal law provisions to protect their trademark and image on social networks. However, no legislation has established the legal framework for this symbol yet or provided for penalties in the event of abusive practices.
Is the hashtag a work of the mind and can it be protected by copyright?
Article L. 112-1 of the Intellectual Property Code provides protection for “all works of the mind, “whatever their kind, form of expression, merit or purpose.” The following article provides a non-exhaustive list of works that can be considered works of the mind. This list allows any new creation to be considered as a work of the mind provided that it fulfills the conditions for copyright which are: originality (the imprint of the author’s personality) and physical layout of the work. It would seem that case law with respect to copyright protection can be transposed to the hashtag. However, the appreciation of originality remains subjective and case law may vary.
The tangent character of the concept of originality contributes to the uncertainty of protecting a title by copyright. A hashtag composed of a single word can hardly be protected by copyright unless it is particularly original.
Moreover, one must dissociate the hashtag symbol from the word or words that follow it. The hashtag symbol does not seem to bring originality in itself inasmuch as it has been trivialized since its first use in 2007. Therefore, the content in its entirety will not necessarily be original only because it has been attached to a word or to a group of words.
Is the hashtag a distinctive symbol or a symbol subject to trademark protection?
As with domain names or usernames, the legal nature of the hashtag is not confirmed. Indeed, the symbol is chosen and used freely and openly on social networks. In order to prevent misuse of their trademark, increasingly, trademark owners are applying for the registration of their trademark or their slogan accompanied by the symbol, “#”. The law is silent on this issue and case law is inconsistent. If it was admitted a few times that a hashtag can be protected by trademark law, it is not automatic and hashtag will only be protected by trademark law provided that they meet the criteria of a trademark which are: to be available, to have distinctive character and to be lawful.
In 2015, there were 1,398 application requests worldwide for the registration of trademarks including a hashtag, among which 159 were in France. Companies register hashtags as trademarks when developing an advertising or marketing campaign and when they want to enjoy legal protection. In the US, the operator T-Mobile USA registered in January 2015 the trademark “# 7NIGHTSTAND CHALLENGE.” At community level, one will note the application for registration of the trademark “#LOVE” by Sony Pictures. In France, the trademark “#CLIENT ADDICT” was applied by Future Telecom on June 6, 2014 and the registration was accepted by the National Institute of Industrial Property.
When registering its trademark, a company protects that trademark against any illegal reproduction or imitation and thus has legal means to fight against competitors who could, using an identical hashtag for their own trademark, generate commercial gains and thus resort to practices of economic parasitism.
In the US, in Fraternity Collection, LLC v Fargnoli, a decision dated March 31, 2015, a designer, after terminating business relations with its manufacturer, used hashtags adopting the manufacturer’s trademark (“#fratcollection” and ” #fraternitycollection”) on Instagram to sell his own creations. The Southern District of Mississippi considered that the use of a competitor’s name or of any of its products on social networks as a hashtag can in some circumstances lead to the consumers being misled.
In addition, companies have the opportunity to buy “sponsored tweets” on Twitter thus allowing them to gain better visibility on the social network. These tweets will indeed be emphasised and will normally be seen by Internet users who use that hashtag. A parallel can be drawn between hashtags used in these tweets and Google AdWords. The CJEU case law tends to consider that the use of a trademark as AdWords can amount to infringement if its use causes prejudice to the functions of the trademark, that is the specific image that the company wants the customers to have in mind.
The hashtag “#Rio2016” widespread on the Internet during the summer Olympic Games of 2016 has notably been subject to conflicts in Europe. Indeed, the German Olympic Committee banned the use of the hashtag to non-Olympic sponsor companies, citing an appeal to counterfeiting and an infringement of their intellectual property rights. However, with reference to the CJEU case law, use of this hashtag can only be prohibited if it causes prejudice to the functions of the trademark. A company is entitled to use this hashtag if it simply wants to support its country in the context of the competition, and no commercial link is established between the Olympic Games and the company (i.e. if the hashtag is not used in connection with the company’s goods and services). The hashtag “#Rio2016” was also subject to discussion in the US to the extent that the Olympic Committee has prohibited the use of the hashtag by non-Olympic companies. Some companies however, responded by confronting the Committee on the grounds of an excessively strict prohibition on social networks and therefore reminding the CJEU of its code of conduct.
If some companies have managed to protect trademarks containing the hashtag symbol, a decision of the Court of Appeal of Paris has nevertheless asserted its secondary character. The French Institut National de la Propriété Industrielle (INPI) also considered that due to its frequent use, the symbol “#” is secondary (CA Paris, December 5, 2014, No. 14/14773). The assessment of a trademark containing a hashtag is therefore made without this symbol, as a traditional trademark.
The United States does not agree with this since the trademark “#” has indeed been registered on November 25, 2014 at the USPTO. The USPTO stated that a trademark which consists wholly or partly of the character “#” or “hashtag” can be registered as a trademark if it indicates the origin of the goods or services of the applicant and provided they meet the traditional criteria of validity of a trademark. However, the California Central District Court ruled against this view in the case of Eksouzian against Albanese on August 7, 2015. The dispute concerned two competitors between whom there was an agreement prohibiting them from using the association of certain words as a trademark to promote products. The judge found that the hashtag was descriptive and as such, could not be considered as a trademark. The registration of a trademark including a hashtag is thus not automatic.
Therefore, if previously the registration of trademarks could result from a preventive exercise on the part of the holder in order to prevent a third party in bad faith from registering a hashtag infringing the trademark, the assessment of the validity of a trademark with a hashtag is now exclusively on the word or expression following the “#”. The best way to protect a hashtag will depend on its intrinsic characteristics. Whether by copyright or trademark law, the mechanisms are however not absolute and the case law remains inconsistent.
Following “@” and “.com” what is the future of “#” ?
While the impact of the Brexit on intellectual property rights is still uncertain, the state of designs is similar to that of trademarks in various ways, but some differences still exist.
The mechanism of the exhaustion of rights applies in the same way to trademarks and designs. The scope of the applicability of the exhaustion mechanism clearly depends on the decision of the United Kingdom to be a party to the EEA or not. Currently, once a good has been put on the EEA market with the consent of the rights holder, the rights relating to the designs are “exhausted”, meaning that the rights holder can no longer oppose its free circulation in the domestic market. Therefore, once the United Kingdom leaves the EU, the principle of the exhaustion of rights will no longer apply to the first goods marketed in the United Kingdom. If the United Kingdom decides not to be a party to the EEA, the government may still decide to apply the principle of international exhaustion, according to which the rights are exhausted when the good has been sold in any country.
While a mechanism of conversion of European trademarks and of RCDs would most certainly be implemented, the consequences are not the same for the European Community trademarks and designs. Such a mechanism does not currently exist for designs.
Furthermore, unlike trademarks, the designs do not involve any consequences in relation to the revocation for non-use.
It is to be noted that national British designs do not provide the same protection as RCDs. In fact, British designs do not protect the product’s decoration. Further, British titles do not have to fulfil the novelty criteria (the criteria is that of originality, meaning that the design must not have been copied or must not be similar).
Finally, a design can be registered in the United Kingdom even though it is functional.
The unregistered community design (UCD) makes it possible to enjoy protection when marketing a design without registering it .
Designs disclosed for the first time on the European Union territory (as of March 6, 2002), enjoy protection status. This protection lasts 3 years from the date that the design was first disclosed on the European Union territory. It is applicable only if the first disclosure occurs on the European Union territory.
Therefore, will a disclosure in the United Kingdom deny protection of unregistered community designs (UCD)?
It is necessary to provide legislation on this subject in order to define the limits of the protection of UCDs in the United Kingdom for the forthcoming years.
Once the exit of the United Kingdom from the European Union is finalised, community designs will no longer cover the United Kingdom. As advised in our previous article relating to trademarks “Brexit: facing the consequences”, if the United Kingdom represents a significant market for your company, it is advisable to register a British design in addition to a RCD.
Dreyfus & associés can assist and advise you on the best strategy to enhance and protect your rights.
On December 2nd, 2015, Brazil acceded the Hague Convention of October 5, 1961, also called the “Apostille Convention”, which abolishes the requirement of legalization for foreign public documents. This Convention entered into force on August 14th, 2016 in Brazil, thus making it the 111th signatory state to the Convention. This date difference is due to the mandatory period of six months and sixty days after which the Convention officially becomes effective.
What is an apostille ?
An apostille is a certification issued by a competent authority to confirm that the signature, seal or stamp on a public document was performed by a public officer in the exercise of its functions. It aims to remove the legalization chains required in the past. However, it does not recognize the validity of the document content.
The apostilles are affixed by the countries that joined the “Hague Convention” in 1961, abolishing the requirement of consular legalization. All public documents drawn up in these countries and destined to foreign countries must contain the apostille (extracts of civil status documents, criminal records, certificates of any type issued by official bodies, notarial deeds and notarial attestations of signature, certificates issued by public institutions, etc.).
What is the purpose of the Apostille Convention?
The Convention aims to facilitate the movement of public documents from one country to another. Thus, the documents from signatory states to the convention are no longer subject to a diplomatic or consular legalization requirement in order to be valid and effective with other signatories. These legalization actions are replaced by a simple system with unique verification, through the affixing of an apostille to the document, contributing to a significant reduction in time and costs. In France, the Courts of Appeal issue the apostille for public documents.
The US, China, Japan, Germany, the United Kingdom, France, India and Italy are some of the states already signatories to the Convention.
Brazil: a different legal system
Brazil is a presidential, federal republic, consisting of 26 states and one federal district (Brasilia) which has its own legislative assembly and therefore, legislates independently. The President and the Congress share legislative power, indicating that many powers come into play between the two.
Brazil also has a wide variety of legal rules and texts: for example, the 1988 Constitution is one of the world’s longest texts, given that it is here that a large number of principles guaranteeing the fundamental rights of Brazilian citizens and establishing the presidential federal system are provided for.
The Brazilian legal system is specific and the use of the apostille will prove extremely useful so as to ensure the authenticity of a criminal record or a certified proxy.
A simplified authentication of Brazilian legal documents
The originality of the Brazilian legal system lies thus in the difficulty of finding a balance between federal powers and the numerous principles laid down in the national constitution.
The Brazilian administration/bureaucracy?? is complex because of the multiple procedures, in particular with regard to the translation and authentication of documents for companies wishing to conduct business with Brazilian companies or to be set up in Brazil. The specificities of the Brazilian language are an additional hurdle to the relevant translations.
Adherence to the Hague Apostille Convention will simplify the bureaucratic procedures for foreign investors wishing to set up a business in Brazil and Brazilian companies wishing to export abroad, as well as the validation of foreign company documents in relation to public invitations to tender.
As of the 1st of January 2017, German shoemaker Birkenstock will no longer sell its products on the website Amazon.com.
David Kahan, CEO of Birkenstock USA announced the news in a letter dated July 5th, 2016 sent to several retail partners of the trademark. As of January 1st 2017, it will no longer be possible to find Birkenstock sandals on the Amazon.com website. Not only will Birkenstock USA withdraw its products from the website but the company also directed its official retailers to withdraw the products of the trademark.
What are the reasons for this decision?
According to David Kahan, CEO of Birkenstock USA, Amazon is an “open marketplace” where Birkenstock experienced unacceptable business practices that would have jeopardized its trademark. Moreover, it would not be possible for the company to resolve the matter by policing either internally or in collaboration with Amazon.
According to the company, there seem to be too many counterfeits of its shoes from China. It is thus be possible to buy counterfeit sandals at a much lower price than the retail price of Birkenstock sandals.
While several other companies had the same problems and have parterned with Amazon to solve them, this is not the case for Birkenstock. Indeed, it would imply that the company would sell its entire catalog to Amazon, which would lead to some loss of control over its products. The company preferred to no longer sell its products through Amazon.com and stop battling counterfeit on a case-by-case basis.
Counterfeiting in the US
In the US, trafficking in counterfeit goods or services is punishable by the Trademark Counterfeiting Act, 18 USC § 2320. An individual can be fined two million dollars or be imprisoned for ten years while a corporation can be fined five million dollars.
However, in respect of the infringement of intellectual property rights, there is no specialized court in that disputes are brought before ordinary federal courts (the Federal District Courts and Circuit Courts of Appeal which sit below the United States Supreme Court).
The amount of counterfeits made in the US is estimated to be relatively low. In contrast, the US is dealing increasingly with cases of infringement of the intellectual property rights of their nationals committed abroad (such as China, Russia, Chile, Egypt, Thailand, etc.).
What are the possible consequences of the withdrawal of Birkenstock US?
But for several years now, Chinese counterfeit persists and grows on the website. More and more trademarks are affected, ranging from world-renowned trademarks to small-scale jewelry designers. It is also very difficult to determine on the website which products are fake or legitimate products of the trademark. In 2015, Chinese sellers have increased their sales on the website. While there are not only counterfeit products, criticism towards Amazon is consistnt, both from sellers and buyers, urging the company to fight harder against such practices.
Yet Birkenstock USA will leave the Amazon ship on the 1st of January, 2017. It will be interesting to see how a company can survive without relying on the widest and best known online marketplaces. A matter to be followed.
On June 8th, 2016, in Vietnam, the Ministry of Information and Communication and the Ministry of Science and Technology issued a joint memo concerning the recovery of domain names with the <.vn> ccTLD that infringe the Vietnamese Law of 2005 on Intellectual Property.
However if the memo establishes several administrative procedures to resolve disputes on domain names, it nevertheless still failed to mention several important points of dispute and in particular those concerning cybersquatting and typosquatting.
An update on Vietnamese legislation on intellectual property rights
In Vietnam, two laws are important for intellectual property rights and <.vn> domain names: the Law of 2005 on Intellectual Property and the Law on Information Technology 2006. The Law on Information Technology 2006 regulates disputes relating to domain names by providing for four dispute settlement modes (Article 76 of the memo): negotiation, conciliation, arbitration and litigation before the competent courts for each procedure. The Law on Intellectual Property adds that dispute settlement can be done through administrative proceedings before the Ministry of Information and Communication and the Ministry of Science and Technology. These procedures are faster, less expensive than a lawsuit, and they allow an intellectual property rights holder to request cancellation or transfer of the disputed domain name.
However, the “VNNIC” (Vietnam Internet Network Information Center) is based on the Law on Information Technology, which does not recognize the cancellation or transfer of a domain name and which advocates dispute settlement through courts or arbirtration and not through administrative proceedings.
This difference in legislation is a challenge for intellectual property rights holders who wish to exercise their rights.
This explains the need for such a memo to be released by the Vietnamese ministries.
Developments in the Vietnamese Law on Intellectual Property
The circular of June 8, 2016 includes positive measures for intellectual property rights holders.
Indeed, deadlines have been set to force offenders to stop their illegal activities and to transfer domain names to their rightful owner. Also, if the deadline is not met, the administrative authorities can now take action against those offenders who have refused to comply.
Thus, these administrative proceedings make it possible to request the removal of website content linked to the disputed domain name. According to Article 8 of the Circular, the offender will have to respond to the injunction within thirty working days of the administrative decision and remove the relevant content. It is also possible to request the transfer of the domain name to its rightful owner within thirty days (Article 9).
Finally, if the deadline is not met, the relevant ministries can send a request to VNNIC in order for the infringed domain name to be transferred to the legal owner.
However, even though such developments are positive, they are not sufficient since the conditions to access them are too restrictive. Thus, according to Article 7 of the memo, in order to request the transfer of a domain name, it is necessary to have:
a domain name identical or similar to a trademark confusing for Internet users;
the disputed domain name must be associated with a website that contains infringing data;
finally, the domain name should direct to infringing content.
These infringing data and content include:
advertisements, new product launches and offers for goods and services identical or confusingly similar to those of the rights holder which damaged their reputation and business;
slanderous and libelous information against the legitimate owner of the goods and services.
It is unfortunate that this new circular was not sufficiently far-reaching in regulating disputes involving infringing domain names. However, it is a step forward in the fight against cybersquatting in “.vn”.
Cybersquatting and Typosquatting overlooked by the new memo
The memo released on June 8th, 2016, fails to include disputes involving cybersquatting or typosquatting where administrative proceedings are required.
As a reminder, cybersquatting refers to a situation in which a person has consciously registered a domain name in bad faith which is identical or similar to a company’s goods and services or its trademarks in order to resell the domain name to that same company, at an inflated price. Typosquatting involves typos, misspellings, voluntary typographical errors so that a domain name is similar to a company name or trademark.
Whether for cybersquatting or typosquatting, the offender does not create a complete website with the infringing information automatically. Consequently the condition of the new Vietnamese memo for a domain name to direct to an infringing website is not met. Therefore, it is not possible for an intellectual property rights holder to benefit from the administrative procedures in these cases. It is possible for them to go through a UDRP procedure since <.vn> is not in the list of ccTLDs involved in the procedure (unlike <.com > or <.fr>).
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A new law will be passed soon in the Cayman Islands making it mandatory to file a trademark registration application with the Cayman Islands Intellectual Property Office (CIIPO).
