Dreyfus

Does the URS procedure benefit trademark owners? The situation two years later after its implementation

Since its creation and according to the report on the protection mechanisms of ICANN, updated in September 2015, over 300 URS proceedings have already been initiated. Most of the complaints are filed during the first months when the domain name is created. 68% of the decisions rendered were due to a lack of response from the domain name holder after formal notice was served. 94% of the decisions rendered have resulted in the suspension of the domain names involved. The speediness and reduced cost boasted by the URS procedure thus appears to be appealing.

However, the choice between URS and UDRP should not be merely limited to an assessment of these elements. Everything will depend on the facts and circumstances of each case and on the results that trademark holders wish to obtain. Is the domain name genuinely of value to them? What are the commercial stakes? Do they wish to merely block the domain name? To cancel it? To transfer it? If trademark owners opt for the URS procedure, they can only secure a temporary suspension of the domain name. But, if it turns out later that the domain name was of value to them, they will have to wait until it falls back into the public domain to be able to register it, all the while hoping that a third party does not do so before them. And while it is still possible to backorder (offer proposed by some registrars to register a domain name as soon as it falls back in the public domain), the results are not guaranteed and therefore, the URS procedure is no substitute for the UDRP procedure which allows domain names to be transferred. Therefore, if trademark owners wish to use the domain name, they will have to resort to the UDRP procedure. Other factors are also to be taken into account.

Does the trademark owner meet all of the requirements of the URS system? It is interesting, in choosing between the URS and UDRP procedures, to analyze the reasons behind the dismissal of some complaints. Thus, in a decision dated April 10, 2014, the NAF dismissed the complainant’s claim on the ground that the latter was not able to prove ownership of the trademarks which it claimed to own. Indeed, the expert held that the company which was the trademark holder was not the applicant company and that no link was established between the two.[i] Similarly, a complaint was dismissed due to the inability of the complainant to demonstrate the absence of legitimate interest and the bad faith of the domain name holder. In that case, it was not established that the domain name used was associated with the trademark since the website page did not include any reference to the said trademark.[ii]

It is also to be noted that the URS procedure offers no possibility of correcting irregularities. In such cases, the complaint is simply dismissed. Complainants must, therefore, be particularly attentive to details when drafting their complaints. Thus, in a case dated April 12, 2014, Wolfram Research, Inc. invoked the rights held by Wolfram Group, LLC against the domain name < wolfram.ceo>. The complaint was dismissed due to the fact that no link was established between the two companies.[iii] Three days later, Wolfram Group, LLC rectified its mistake by filing a new URS complaint, leading to the suspension of the domain name at stake.[iv]

The choice of the URS system must really be a strategical one. Under this procedure, the infringement must be manifest and the evidence of that infringement must be clear and convincing. For example, a URS proceeding initiated in June 2014 led to the domain name <stuartweitzman.email> being blocked.[v] Yet, on appeal, the experts considered that the condition which was previously satisfied and according to which the domain name holder should not have had any interest in the domain name, was no longer fulfilled following the filing of additional evidence. There is no safe bet as concerns the outcome of a URS proceeding. Indeed, the holder of the domain name <stuartweitzman.email> had also registered the domain name <lufthansa.email>. Despite the similitude in the facts, the examiners upheld, on appeal, the suspension of the domain name.[vi] It is equally very interesting to note that, in the case of the domain name <stuartweitzman.email>, following the URS proceedings which was lost on appeal, UDRP proceedings initiated in November 2014 led to the transfer of the domain name.[vii] The choice of out-of-court proceedings is therefore not an obvious one and the implementation of a strategy is essential to ensure an effective defense of trademarks.

To make it more difficult to choose between the URS and the UDRP procedures, trademark holders must also take into consideration the domain name itself. The URS procedure will constitute a real challenge for generic or descriptive domain names. It will be more complicated for applicants to demonstrate a lack of legitimate interest on the part of defendants, the more so since complaints will be limited to 500 words in terms of arguments. In contrast, it will be easier for defendants to prove this legitimate interest by the very nature of the domain name. In addition, trademark owners will have to assess whether the risk of re-registration of the domain name by third parties is low or high. In the event of a URS procedure, the blocked domain will fall back into the public domain. Depending on the domain name, trademark owners may thus potentially expose themselves to the risk of cybersquatting.

Due consideration must therefore be given to all of these elements and issues when deciding between the UDRP and URS procedures, the latter procedure producing positive effects only in very specific circumstances. Nevertheless, and irrespective of the outcome of an out-of-court URS or UDRP procedure, it will still be possible for parties to initiate proceedings before a national court.

Dreyfus & associates proposes to assist you with any URS or UDRP and worldwide considering the best strategy for recovery and protection of your rights.

[i] NAF, April 10, 2014, case n° 1550933, Aeropostale procurement Company, Inc c/ Michael Kinsey et a.

[ii] NAF, March 20, 2014, case n° 1545807, Virgin Entreprises Limited c/ Lawrence Fain

[iii] NAF, April 12, 2014, case n° 1553139, Wolfram Research, Inc. v. Andrew Davis et al.

[iv] NAF, April 30, 2014, case n° 1554143, Wolfram Group LLC v. Andrew Davis et al.

[v] NAF, June 24, 2014, case n° 1554808, Stuart Weitzman IP, LLC v. yoyo.email et al.

[vi] NAF, April 28, 2014, case n° 1552833, Deutsche Lufthansa AG v. yoyo.email et al

[vii] WIPO, November 6, 2014, case n° D2014-1537, Stuart Weitzman IP, LLC v. Giovanni Laporta , Yoyo.Email Ltd

The New Trademark Act 2013 and the Trademark Rules 2015 have since September 1, 2015, effected sweeping changes to the local trademark regime of the British Virgin Islands (BVI).

Already in 2004, the subject had stirred up Dreyfus’s interest. Indeed, previous articles have mentioned the adoption of those two laws which aim to update the UK law that was in force since the 19^th century. Two years later, those laws are finally published.

Thanks to this amendment, the BVI are now moving away from the UK system which required the prior registration of a UK trademark to be able to register a trademark in the BVI.

The BVI are thus finally building an autonomous and independent system.

This new law is applicable to all trademarks registered or renewed as from September 1, 2015, while trademarks registered or filed before this date will continue to be governed by the former law, meaning the UK law.

What does this change in the law mean for the registration of trademarks in the BVI?

• First and foremost, this new system means that it will no longer be possible to extend the protection of trademarks registered in the UK to the BVI. For a trademark to be registered in the BVI, the trademark would need to be filed locally at the Registry of Corporate Affairs.

• Equally important will be the fact that from now on it will be possible to register service marks. Indeed, under the former UK law, trademarks could only be registered for goods; which were moreover classified according to a somewhat obsolete system.

• The system will now be based on the latest version of the Nice Classification (45 classes of goods and services).

• It will also be possible to make a foreign priority application for a trademark in the BVI in accordance with the Paris Convention or the WTO agreement (TRIPS agreements).

• The registered trademark will be protected for a period of 10 years, renewable every 10 years as from the registration date with a grace period of 6 months.

• It will be possible to oppose the registration of a trademark in the BVI within the three months following the publication of the application – which will be available on the website of the local Gazette.

The only question that remains to be answered in the wake of this new amendment relates to the trademark registration fees in the BVI. Relatively cheaper under the former law, like the designation of  French Polynesia for trademarks registered in France, trademark holders fear a rise in the registration fees following the coming into force of this new law.

Watch this space for further developments…And do not hesitate to contact us for any question relating to the protection and defence of trademarks worldwide.

Tea Adoro, a company holding four Tea Adoro trademarks, operates tea houses, tea bars and delicatessens. In view of expanding its business, Tea Adoro uses the service of an external provider to create its websites and to register its domain names. However, in the Whois database, the service provider is the holder of the domain names in dispute. In addition, Tea Adoro is deprived of the codes for access to social networks and cannot have control over the relevant web pages.

This is a serious situation! Companies may as such be technically and financially dependent upon their service providers and domain names’ holders, and it may drive to cybercrime and commercial blackmail.

Tea Adoro accordingly filed a motion before the Tribunal de Grande Instance de Paris against the service provider that created its websites, in order for the domain names to be transferred back and for the access codes to be communicated so that it can have actual control over the disputed domain names.

The Presiding Judge of the Tribunal de Grande Instance de Paris, by virtue of an interlocutory order issued on 16 March 2015[1], ordered the service provider to transfer the registered domain names to Tea Adoro.

After restating his jurisdiction, the Presiding Judge of the Tribunal de Grande Instance de Paris found that the evidence provided was insufficient to show a breach of trademarks. However, the receipts and exchanges of emails determine that the registration of domain names was performed by the service provider on behalf of Tea Adoro. The Judge in chambers states that “this situation qualifies as a manifestly illegal nuisance” due to the fact that Tea Adoro is unable to use the trademarks and therefore to carry on with the online selling of products under these trademarks. Therefore, he ordered the transfer of domain names and for the communication of access codes to social networks.

This matter shall be considered along with a judgement of 9 June 2009[2] in which the Cour de Cassation held that the transfer of a domain name could not be obtained in chambers (en référé) under article 809 of the Civil Procedure Code which states that the Presiding Judge of the Tribunal may take protective or restoration measures in order to prevent an imminent damage or to end a manifestly illegal nuisance. According to that judgement, the transfer of a domain name does not qualify as “either a protective measure or a restoration measure.” If the transfer of a domain name cannot be obtained in chambers under article 809 of the Civil Procedure Code, this decision delivered by the Tribunal de Grande Instance de Paris specifies that the procuring of the transfer of a domain name by virtue of a quick judicial proceeding is however possible by means of a special motion as provided at article L.716-6 of the Intellectual Property Code in relation to trademark infringement. This solution shall meet the requirements of trademark holders.

[1] TGI Paris, 16 March 2015, Tea Adoro and Mrs R. / Millenium Brands Distribution c.v. and Millenium Sales & Marketing Ltd

[2] Cass. Com., 9 June 2009, n°08-12.904

Since May 13, 2015, the United States and Japan can  officially be designated for the international registration of industrial designs.

As was the case for the international trademark system, industrial designs were introduced by the Hague Agreement of 1925. The Agreement allows applicants to register an industrial design in several countries by filing one single international application before the International Bureau WIPO.

This filing system offers many advantages. Firstly, it considerably reduces paperwork while allowing registration in several countries. Also, managing the industrial design subsequently becomes easier as renewals, modifications and all other necessary measures to protect the industrial design can be carried out through a single procedure.

Furthermore, it is interesting to note that unlike the international trademark system, filing international industrial designs requires no application or prior registration at a national level.

Finally, the only limitation to this system of industrial design relates to the number of Contracting Parties. Indeed, only Contracting Parties of the Hague Agreement, as updated several times by the Geneva Act of 1999, can be designated for international registration. In other words and once more, similarly to international trademarks, in order to designate certain countries, applicants will still be required to register their industrial designs at the national level and a fortiori go through the relevant paperwork.

While there are currently 95 Contracting Parties to the Madrid Agreement and to the Protocol relating to this Agreement on the registration of international trademarks, there are unfortunately only 64 Contracting Parties for the international registration of industrial designs.

Indeed, several countries have not yet joined the system, including Australia, China, the Russian Federation, Ireland and Mexico. However, the good news is that we can now add the United States and Japan to the list of countries that can be designated.

Although we cannot yet speak of truly international industrial designs, it should be remembered that the system of international trademark as we know it, also took some time before it attracted the number of parties it now boasts of – for the initial Madrid Agreement dates back to 1891 and new members were still added to the list in 2015.

On 31 October 2015, the People’s Democratic Republic of Algeria will accede to the Madrid Protocol, thus finalising the process of standardisation within the international system of marks.

As of that date, the 95 Member States of the Madrid System will all be governed by the same protocol, allowing them to designate all the members of the system in the registration of their marks.

The Madrid System is governed by two treaties: the Madrid Agreement and the Protocol, concluded in 1891 and 1986 respectively.

States that are parties to one of the two treaties can then designate in the international registration of their marks only States that are parties to that same treaty.

In other words, States that are parties to the Agreement can’t designate in the registration of their marks States that are exclusively parties to the Protocol, and vice versa.

Algeria, which was party to the Madrid Agreement since 1972, was the last Member State of the Madrid System yet to accede to the Protocol, thus limiting the international registration of its marks to the 55 Member States to the Agreement.

Thanks to this final accession, the Madrid System is significantly simplified, since the Member States will base themselves solely on the Madrid Protocol to register their international marks.

In particular, it will no longer be necessary to wait for the registration of the basic mark to extend the protection to Algeria via the international trademark system.

In a judgment of July 31, 2015, the United States Court of Appeals for the Ninth Circuit (Name.space, Inc., v. Internet Corporation for Assigned Names and Numbers, Case No. 13-55553, 2015-07-31) ) upheld the judgment delivered in first instance dismissing Name.space’s application, which also purported to force the integration of its domains in the IANA root.

As a matter of fact, with the aim of expanding its domains, Name.space which already operated various TLDs in a parallel but hardly accessible root, had tried integrating other internet roots more accessible to the general public.

According to Name.space, integrating the root server of IANA (Internet Assigned Numbers Authority), the authority responsible for managing IP addressing on the internet, seemed to be the best strategy to make its domains accessible to as many people as possible.

The latter had firstly applied to the registration office NSI (Network Solutions) in 1997 for the integration of its domains in the root.

Following NSI’s refusal, Name.space had then sued NSI for anti-trust. Name.space had ultimately lost its case before the court of first instance as well as on appeal, on the ground that NSI was acting under a government contract, to which anti-trust law does not apply.

After this failure, Name.space then decided to apply to ICANN.

At the launching in 2000 of a round of introduction of domains by ICANN against payment of $50,000 per unit, Name.space submitted its proposal for 118 domains. Like for many other candidates, ICANN rejected Name.space’s application.

During the second round in 2012, ICANN had launched a similar procedure for the price of $185,000 per domain. However, Name.space could not apply, being unable to pay for 118 of its domains at such price.

On 17 October 2012, Name.space then decided to sue ICANN before the District Court of California for anti-competitive conspiracy, abuse of its dominant position, anti-trust, and infringement of Name.space’s trademark rights on its domains.

When its claim was dismissed by the District Court in 2013, Name.space filed an appeal with the United States Court of Appeal of the Ninth Circuit which on July 31, 2015, ruled in favour of ICANN.

The court of appeal supports its decision on the ground that ICANN established plausible business reasons for the requirement of higher prices, and that it had not hindered other operators from applying.

There was no evidence that ICANN was intentionally trying to harm Name.space in its endeavour.

The Court of Appeal, only ruling on issues regarding the application of law at this stage, did not decide on the issue of trademark infringement since the domains were not active yet at the time of the first judgement.

These domains being active now, Name.space could in theory file a new complaint for trademark infringement. However, it is highly unlikely that such an endeavour would turn out to be successful since the USPTO clearly asserted that the domains could not be protected as trademarks. (cf. Trademark Manual of Examining Procedure, 1215.02(d)).

It comes as no surprise that Name.space failed once again in its battle to include its domains in the IANA root.

From April 15 to June 15, a priority registration period had been opened for trademark holders wishing to register their dedicated Frogans networks and to create Frogans addresses capable of containing their trademark.

Since June 15, the entrepreneurs now have the possibility, for a period of 4 months, to register their Frogans networks and addresses in priority.

OP3FT, a non-profit organisation, launched a new type of website under Frogans Technology, called Frogans Sites.
Those sites are based on a new software layer, which is very simple to use, in the form of a platform for the publishing of content on the Internet.

This software layer is secured by the preliminary allocation of a “.frogans” TLD which allows servers to be renamed. The “.frogans” TLD is a “Dot Brand” with the sole purpose of securing the technical infrastructure of the addressing system of Frogans sites.
Only OP3FT is the holder of domain names in the “.frogans” extension and their registration is closed to third parties.
The “.frogans” should therefore not be confused with the classic top-level domains.

Access to Frogans Sites is given via a Frogans network composed of Frogans addresses, which are easy to remember and comparable to web domain names.
Those addresses comprise the Network Name and the Site Name, separated by an asterisk character (*) in the following form: NetworkName*SiteName.

Each Frogans address thus refers to a Frogans network, which can be of three types:
– Dedicated Frogans Networks: used on the Internet beginning with a customised network name.
– Public Frogans Networks: used on the Internet beginning with the network name “Frogans”.
– Internal Frogans Network: used on the intranet beginning with the network name “Intranet”.

For example, a Frogans address could be in the form “Dreyfus*Contact”, referring to a site dedicated to getting in touch with Dreyfus law firm (telephone numbers, address, email…).

The Frogans sites are accessible via a free software, called Frogans Player, which is similar to a web browser. Their form is not predefined and they are small enough to be loaded with a slow connection or on cheap devices.

This feature helps to reduce costs both for the customer and the website developers because the Frogans sites will be available in a single and unique version irrespective of the platform or device.

The Frogans sites are also multilingual, since the Frogans addresses may contain international characters and therefore write in over 170 languages, using the writing orientation that we prefer (right to left or left to right). This feature was vital for developers who particularly wanted to open the Frogans technology to the Asian market.

The aim of Frogans technology is to make Internet sites easier for the average customer and the future developers to use and to develop, but also to allow them to express their creativity through those sites. Those new sites will also allow their creators to have a total control on their content through its unique display version, and thus guarantee them a better security.

On 15 April 2015, the priority registration period for registering addresses which are part of the dedicated Frogans networks was opened to trademark holders for a period of 2 months, that is, until June 15, 2015.

The allocation of addresses is based on the “first-come, first-served” principle, and the duration of the registration period can be between 1 and 10 years.

To be accepted in the process, the trademarks need to be registered either:
– With a national office, as NIIP or USPTO for the United States
– With a regional office, as OHIM or OAPI
– With an international office of WIPO

These can also include non-registered marks provided that they are validated by a court decision, or that they are protected by a statute or a treaty.

The following types of trademarks are however not eligible to Frogans Addresses:
– figurative or sound trademarks
– unregistered trademarks
– trademarks registered with offices of federated states or with local offices
– cancelled, invalidated, opposed or rectified trademarks
– trademarks which have not been definitively registered

The availability of Frogans Addresses can be verified in the Whois database which can provide information relating to FCR (Frogans Core Registry) operators or to holders of Frogans networks.

This system thus blocks the access to reserved names, and a list of all registered Frogans addresses can be downloaded on the Operator’s site.

A specific UDRP procedure (UDRP-F) has also been made available to all trademark holders wishing to institute proceedings against potential cybersquatters.

Aggrieved third parties can equally trigger an “abusive report” capable of resulting in the annulation of dedicated Frogans Network, if they succeed to produce proof of their ownership of the reproduced mark.

The priority period for the trademark holders having ended on 15 June, the latter have now given priority to entrepreneurs for a period of 4 months, that is, until October 15, 2015.

Any person, individual or organisation, irrespective of his initiative, his country or his occupation, and who wishes to develop an initiative based on the publication of Frogans Sites, can then register Dedicated Frogans Networks with the name of their choice: generic term, geographical name, a community name, trademark, etc.

Following the priority period for the entrepreneurs, developers will be the next ones to benefit from it, before the opening of the Frogans technology to the general public.

Dreyfus offers to assist you during this priority registration period by taking into account the best strategy for promoting and protecting your rights with respect to this technology.

2014 was a successful year for the European Patent Office (EPO). In its report published on February 26, 2015, the EPO witnessed a rise of 3.1% of patents filings submitted to the EPO. A new record number of 274,174 patent filings was reached in 2014, from around 266,000 in 2013.

This significant rise was observed in France, the Netherlands and the United Kingdom.  The number of patent filings declined, however, in Finland, Switzerland, Spain and Japan. The United States and China witnessed a spectacular rise although they already had a high volume of applications in the previous years.

In 2014, the largest number of filings in the most active technological sectors at EPO came from European companies, such as Philips, Siemens, BAS, Robert Bosch and Ericsson. This rise shows both the economic strength of the European economy in terms of technological innovation and the stability and variety of its patent portfolio. It is worth noting that several US and Asian companies are amongst the top 10 of these rankings.

The largest increase of applications with the EPO occurred in the biotechnology, transport, IT, digital communications and measurements industries.

An ambitious program to modernize and reform the EPO in various key areas of operations was launched with a view to managing effectively the rise in patent filings. The EPO will upgrade its IT infrastructure, its human resources policy as well as cooperation with Member States to keep costs down. The program was already implemented successfully in 2013 and the EPO will pursue it in the next few years.

Rapport annuel 2014

Whilst art and right are apparently two opposed universes, they are in reality deeply connected as artists usually care much about the recognition and respect of their works. Legally, moral rights currently are the most efficient tool to ensure the respect of their works. In France, these copyrights are based on property rights and moral rights. Whilst property rights are often assigned to editors, producers and other professionals, moral rights however belong to their author until her death and then to her heirs. According to article L. 121-1 al. 2 of the Intellectual Property Code, the moral right is perpetual, not subject to statutes of limitations and inalienable.

Recently the architect Jean Nouvel, who created the cultural building Philarmonie de Paris, deemed that his moral rights on the work were violated because of certain works that apparently were incorrectly performed.  After an opinion page in the Monde newspaper relating his disappointment concerning the project whose inauguration to the public seemed to be premature, he decided to sue the Philarmonie de Paris in order for the final deliver to correspond faithfully to his original view.  His lawyer indicated that he requested the Court to order that « modified works» be made in order for the twenty six « non-compliances » to be corrected with reference to the initial drawing.  However, the architect does not claim for any compensation, which strengthens the symbolic character of the moral right.

While the building which is dedicated to music opened on 14 January, its construction is in fact not completed. Jean Nouvel has himself confirmed that «the building has been opened within a timeline that did not allow architectural and technical requirements to be met ». After the project, which has been financed entirely with public funds, ran into significant financial difficulties, the architect also added that the architecture of the building was « martyred, the details sabotaged, so taxpayers will have to pay, once again, to correct these absurd decisions ». Therefore, the architect wished to assert his moral right, particularly the right to respect of his work.

On this matter, the Court of Cassation has already brought several elements of appreciation to lower courts in many matters pertaining to moral rights on architectural works. In a case of 11 June 2009, the Court stated that: « it was up [to the Court of Appeal] to determine whether, by way of their nature and importance, the changes made did or did not exceed what was strictly necessary and were or were not disproportionate to the aim pursued by the owner». The rule was not new as a decision of 7 January 1992 already confirmed that « the utilitarian nature of a building commissioned from an architect forbids him to try to impose an absolute intangibility of his work, to which its owner has the right to bring amendments when it is necessary to adapt it to new requirements; however the judicial authorities must assess whether the alterations made to the architectural work are legitimate, in terms of their nature and importance, with regards to the circumstances which constrained the owner to make them ».

The Tribunal de Grande Instance de Paris, which will probably rely on these precedents, will therefore have to decide the fate of the Philarmonie de Paris whose design had been attributed to Jean Nouvel in 2007.