The 13th edition of the ‘Trophées du Droit’ (legal industry awards) was held on 28 November in an award ceremony for the best legal firms which gathered over 950 figures involved in the legal profession(1)(2).
Dreyfus was recognized this year in the category Management of legal firms and received the Special Mention:Trademark Attorney : trademarks(3).
In previous years, the firm had already been awarded a Silver Trophy in the same category of Trademark Attorney but was also recognized for its performance as an emerging team of specialists.
We would like to thank our clients for their support without which we would not have received this special award.
In October 2013, Nathalie Dreyfus was interviewed by James Nurton, editor of Managing Intellectual Property on the issue of the new gTLDs, recent developments in France and the start of her law firm.
With the current wave of new gTLDs that have recently been launched, Nathalie points out that these new strings are a “revolution on the Internet”, particularly because they now convey meaning. She illustrates the point by citing a recent UDRP case which examined whether to take the string into consideration when comparing similarities between the trademark and the name. Nathalie added that the Trademark Clearinghouse “can also be a good thing” in the sense that rights holders can more easily warn offenders in the case of litigation over names, and also benefit from this service by using Donuts’ Domains Protected Marks List (DPML). In this way they control the reservation of domain names identical to their trademarks.
Concerning recent developments in France, Nathalie points out that since 2011, cases have been heard and examined more rapidly by the courts, but that there are “fewer oral pleadings and fewer specialist judges for Intellectual Property”. Cases are also judged “on their own merits, which is very favourable for trademark owners”.
Nathalie completes her observations by highlighting the fact that since the offices of the INPI were relocated outside Paris, an online service for trademark renewal would be a welcome addition in 2014 since specific trips have to be made to these offices and there is no postal address anywhere in the capital.
Nathalie then outlined the reasons for starting her law firm. Ten years ago she noticed that many Companies were concerned by the protection of their trademarks “in countries where they didn’t even have a business” whereas, in the case of their domain names, these were visible right around the world. Growing ever since, the firm now employs over 15 people and created a platform entitled Dreyfus IPweb to “consolidate and summarize all the information available to [her] clients”.
Nathalie Dreyfus finished the interview by stating that “domain names are becoming as important as trademarks” but that they will never replace them since the Law requires that a trademark be registered if rights are to be defended on the Internet, not only with domain names but also on social networks. Trademarks are “tools for actions – the king of the distinctive sign”.
The full interview (in English) is available here.
In order to defend trademark rights more effectively, the additional solution provided by the Abused DNL Service has been set up within the TMCH. This service is now operational.
The Abused DNL Service: what does it offer?
This is a system that allows a trademark already registered in the TMCH to be linked to a maximum of 50 domain names that have already been disputed (abused labels) that concern the mark that has in fact been integrated into the TMCH.
These abused labels will then benefit from a more extensive Trademark Claims Service (TCS) during the period when new gTLDs are opened to the public. As a reminder, the TCS is a warning system that notifies Internet users registering domain names of the existence of prior rights and alerts rights holders in the event of registration of domain names identical to their trademarks. The TCS is activated for all marks registered with the TMCH. The abused labels will expand the system of automatic alerts to include domain names that suffered previous infringements in other TLDs.
Who can benefit from the Abused DNL Service?
The prerequisite is to have registered trademarks with the TMCH. The eligibility criteria for obtaining this complementary protection are, however, restrictive:
The domain names must have been the object of either a UDRP decision or a legal ruling;
It only involves those cases in which it was proven that the names had been registered illegally;
This service is only open to marks registered with the TMCH. In fact, the marks cited in the UDRP or legal decision must exactly match those registered in the TMCH (same registration number and same jurisdiction).
If a decision involves several domain names, the mark holder can choose to include one, several or all the names affected by the decision.
As an example:
Lego Juris A/S. registered with the TCMH the Chinese mark LEGO n° 75682 which had been duly validated.
Lego won a case before the UDRP, OMPI litigation n° D2013-0683, concerning the domain name <legobox.net>.
The Chinese mark LEGO n° 75682 was cited in the decision.
Lego will therefore be able to add the term “legobox” as a label to its Chinese mark LEGO n° 75682 registered in the TMCH.
Which documents must be provided?
For a UDRP decision:
– the name of the arbitration centre that gave the ruling
– the case number
– the language used in the case
– the domain name(s) involved without the string
– a copy of the decision if it cannot be located in the online database
For a judicial ruling:
– a copy of the decision
– the country in which the decision was rendered
– the name of the jurisdiction that gave the ruling
– the case reference number
– the language used in the case
– the domain name(s) involved without the string
How useful is this new service?
The usefulness of this service, though addressing real issues, remains limited. In reality, the abused labels registered only trigger the TMCH notification system, the Trademark Claims Service, once the names have been registered; no block will be applied if the mark is merely registered with the TMCH.
Accordingly, during the 90 days after the new string has been opened to the public, the applicant may receive notification warning him that the name he wishes to reserve is likely to infringe the trademark rights of a third party, and a reference to litigation will be included in the notification. The applicant is then free to pursue the registration or not, being fully informed of the violation of the trademark rights of a third party that has already been recognized either inside or outside the courts.
Equally, during the 90 days after the new string has been opened to the public, the rights holder will also receive notification informing him of a potential case of cybersquatting if the applicant confirms the registration of the name despite the warning received.
The system does not allow for the registration of domain names in the new strings but could nevertheless have a dissuasive effect.
Length of subscription of domain names (labels)
The length of registration of contested domain names (abused label) in the TMCH is linked to the length of subscription of the trademark to which they are associated.
If the mark has been registered for several years, the subscription to the abused labels will be identical to that of the trademark. They will expire on the same date.
As an example, if the mark is registered for a duration of 3 years as of 1st January 2014, and a contested domain name associated with this mark is registered in March 2014, it will only be registered until January 2017, at which time the registration of the mark must be extended in the TMCH.
What costs are involved?
The anticipated costs depend on the nature of the decision, whether based on a UDRP ruling or a judicial decision.
For a UDRP decision:
A 50$ USD fee per decision + 1$ USD per domain name (label) registered for one year.
An additional fee of 25$ USD will be required when the mark’s subscription is renewed in the TMCH if the label has only been registered for one year.
For a judicial decision:
A 150$ USD fee per decision + 1$ USD per domain name (label) registered for one year.
An additional fee of 25$ USD will be required when the mark’s subscription is renewed in the TMCH if the label has only been registered for one year.
We are at your disposal should you wish to explore the opportunity to make use of this complementary system.
The Sunrise phase for شبكة. (.SHABAKA), the generic term for “the Internet”, is still in progress. Domain names under this new gTLD are available in Arabic script only.
As a reminder, the different phases are as followed:
Sunrise period : from 31 October to 29 December 2013,
Landrush period : from 2 to 31 January 2014, and
General Availability (on First-Come, First-Serve basis) : from 4 February 2014.
To participate in the Sunrise phase, it is mandatory to have a registered trademark in the Trademark Clearinghouse (TMCH) and corresponding SMD files.
Donuts Sunrises
Donuts Inc program was partly known. It is now confirmed that 7 new gTLDs will be added to the first 7 already announced for the Sunrise. The different phases of the program are as followed:
Sunrises :
– Sunrise from 26 November 2013 to 24 January 2014 : the new gTLDs offered will be .BIKE, .CLOTHING, .GURU, .HOLDINGS, .PLUMBING, .SINGLES and .VENTURES
– Sunrise from 3 December 2013 to 31 January 2014 : the new gTLDs available will be .CAMERA, .EQUIPMENT, .ESTATE, .GALLERY, .GRAPHICS, .LIGHTING and .PHOTOGRAPHY .
Early Access Program :
From 29 January to 4 February 2014, new gTLDs will be available on a “First-Come, First-Serve” basis. EAP application fees will vary in price according to the day of the week. It will not be possible to register Premium names.
General Availability :
From 5 February or 12 February 2014 (depending on the starting date of the Sunrise), names will be available to everyone on a “First-Come, First-Serve” basis.
.XYZ and .COLLEGE : Pre-Sunrise Premium names auction
Auction sales announced by Namejet and XYZ.COM registry for 40 domain names including new gTLDs .XYZ and .COLLEGE are still in progress since their launch on 6 November, and will be closed from 22 November 2013 (for names such as LOANS.COLLEGE or LONDON.XYZ) to 28 February 2014 (for UNDERGRAD.COLLEGE or SCHOLARSHIPS.COLLEGE). The highest bidders will take possession of the domains when they become available after the Sunrise period in 2014.
A full list of domains available under auction can be found at : http://www.namejet.com/featuredauctions/xyz
Minds + Machines launches priority reservations for .BEST, .CASA, .CEO, .COOKING and .HORSE
Minds + Machines announced a Priority Reservation program. It is possible to make a domain name reservation under new gTLDs .BEST, .CASA, .CEO, .COOKING and .HORSE before they are available during the General Availability period.
However, names registered during the Sunrise period are still priority. Names subjected to priority reservations corresponding to registered names in the Sunrise period will be refunded.
Registration prices will depend on the chosen domain name.
The Chilean registry responsible for .CL has recently announced changes that will take place for registrations and dispute resolution that will bring them into line with current global practices.
These changes will take effect from December 1st 2013 and include three major modifications:
Registrations will be available to foreign entities and individuals without requiring the involvement of a local agent,
Immediate registration for domain names is now possible due to the removal of the waiting period and
Mediation will be replaced by arbitration.
The arbitration will be a procedure conducted exclusively via Internet and in Spanish. The arbitrator can, however, accept documents in other languages, and request a translation if necessary. Once the arbitrator has gathered all the evidence provided by the parties involved in the dispute and has declared that no further evidence will be admitted, no other document may be presented before the final decision unless the arbitrator himself makes the specific request to clarify a point of contention.
In 2011, Customs officers in the European Union seized nearly 115 million items suspected of infringing intellectual property rights, compared to 103 million in 2010. The number of seizures increased by 15% compared to 2010 (1).
It is often quite difficult for Customs authorities to determine the authenticity of a given item. The assistance of the IP rights holder is often a key element in the fight against counterfeit goods. According to the European Commission, this collaboration is the most effective weapon and must be reinforced.
IP rights holders can, in the context of an interception request, seek Customs’ protection. Companies can file interception requests at a national level or also for the whole of the European Union. 1,586 interception requests were filed with the service ‘Direction Générale de la Douane et des Droits Indirects’ (DGDDI) in 2012 (2).
The protection provided is valid for one year and can be renewed by simple request. It is possible to lodge an interception request as a purely preventative measure, or if the petitioner has reasons to believe that their IP rights have been, or are likely to be, violated. The interception request must be made via an application form that will differ according to whether the IP right in question is national (3) or Community-wide (4).
To validate an interception request, the rights holder must fulfill the following two conditions:
The request must contain a sufficiently accurate description of the protected right or rights so that the Customs authorities are able to select and identify goods that are suspected of being in breach of IP rights.
This must be accompanied by the relevant documents proving that the petitioner is the title holder of the rights in question.
The rights holder can ask the Customs authorities to monitor the transit of certain goods more closely. With this in mind, the title holder can provide Customs with detailed information which may be decisive in locating counterfeit goods. For example, the rights holder could indicate which shipping company is importing the genuine articles, their country of origin, in which type of container the goods are being transported and with what other merchandise, or how the genuine articles can be distinguished from counterfeit goods.
In cases where the interception request has been previously filed, Customs can hold goods suspected of being counterfeit for a ten-day period (or three days for perishable goods) in order to allow the IP rights holder to file a lawsuit: this is the procedure required for counterfeit seizure.
Where no interception request has been previously filed, Customs can hold goods on an exceptional basis for three days: this is termed “ex officio seizure” and should lead to the filing of an interception request. This being the case, informing Customs of one’s IP rights allows them to fight more effectively against counterfeit goods entering a given territory.
Do you need advice? Dreyfus team and our associates are entirely at your disposal to guide you concerning the protection of your intellectual property rights!
شبكة. pronounced as “Shabaka” in Arabic, translates to “web or internet” in English. It is the first new gTLD (generic Top-Level Domain) to be launched in the next few years. Domain names in .shabaka will be exclusively in Arabic.
شبكة. (.SHABAKA) is being launched with the following phases:
Sunrise Period: 31 October 2013, 00:00 UTC – 29 December 2013, 23:59 UTC
Sunrise Period is only open to applicants who meet the TMCH Sunrise Eligibilty Requirements. The following requirements apply:
Domain name requested must be in Arabic;
SMD File will be requested upon application;
Minimum registration period: 2 years.
Multiple applications received for the same domain name will be allocated based on the result of the auction process.
Landrush Period: 2 January 2014, 00:00 UTC – 31 January 2013, 23:59 UTC
Landrush Period is open to all registered entities and individuals.
Multiple applications received for the same domain name will be allocated based on the result of the auction process.
General Availability: from 4 February 2014, 00:00 UTC
In the context of the new gTLDs, certain candidates have chosen to set up additional protection mechanisms for right holders alongside those of the Trademark Clearinghouse (TMCH). Amongst these candidates is the Donuts company which has applied for 307 new gTLDs and is offering their Domains Protected Mark List (DPML) that aims to shore up the weaknesses of the TMCH.
The DPML is a rights protection mechanism for all the new gTLDs that will be run by the Donuts company. It comes in the form of a trademark database composed of registrations previously validated by the TMCH. It serves to block the registering of domain names containing these marks across all the new gTLDs operated by Donuts. Registering trademarks with the DPML is on a voluntary basis for right holders.
Eligibility: open to all marks registered and maintained in the TMCH and for which an SMD file has been generated (the SMD file is generated by the TMCH for each registered mark that is eligible for Sunrise periods).
Effect: the blockage of the identical mark or the mark plus a term in all the new gTLDs which will be operated by Donuts (for example, for the SONY trademark, the names sony.tld, sony-pictures.tld may be blocked but not the domain name soni.tld). This block is only active as long as the mark remains registered with the TMCH. Blocking must be done for each variation of the mark
Exceptions to the blocking process:
Marks comprising 1 and 2 letters are not eligible; marks with 3 letters can only be blocked if identical.
Domain names registered prior to the subscription of marks with the DPML.
The “Premium” names which will be marketed by Donuts separately. Overall these are generic terms that have a direct link with the marketed TLD, for example order.pizza ou book.flights.
Domain names registered prior to DPML subscriptions.
A specific domain name can be unblocked on request, providing that the domain name is identical to a mark registered with the TMCH and that the associated SMD file is provided. Such unblocking cannot be prohibited. The right holder would then receive a registration notification from the DPML.
The DPML offers several pros and cons that may be more or less favorable according to the domain name registration policy of the rights holder.
In terms of advantages, it is a powerful weapon in the fight against cybersquatting. In reality, the majority of domain names being cybersquatted today are domain names containing a trademark rather than domain names imitating a mark by approximation.
The disadvantages are the flaws in the mechanism for rights holders who equally wish to register domain names:
The need to unblock each registered domain name.
Registration is only possible for domain names that exactly match marks registered with the TMCH by providing the appropriate SMD file.
Impossible to block domain names identical to the trademark if the proponent has a mark registered in the TMCH. For example, owners of identical marks will not be able to rely solely on the DPML and have to make defensive registrations of domain names.
Impossible to block trademarks across a selection of TLDs operated by Donuts.
The obligation to renew the registration of the corresponding mark in the TMCH in order to ensure blocking within the DPML.
In summary, the automatic subscription of a trademark in the DPML is not recommended since it can lead to ‘conflict’ situations. The strategy to be adopted will depend on several factors linked both to the “quality” of the trademark and to the objectives of its holder.
An initial study is necessary to identify the risks and adopt an appropriate protection strategy.
3D printing is in constant progression and is becoming increasingly accessible. With the speed at which technologies are being developed and especially with the significant reduction in price of 3D printers, these are set to become commonplace household items. Indeed, certain models are already available to the general public from as little as 300€.
There is a risk that consumers may abandon traditional distribution methods. In reality, if people can print objects in such a simple way, why would they pay for such items? In particular, the recent development of cheap 3D printers that allows anyone to produce or reproduce objects is likely to raise questions regarding intellectual property rights.
Even if, for the time being, the 3D printers that are available to the public can only be used to reproduce small plastic objects, infringements have already been noted. The owner of this type of printer can reproduce certain protected items such as products under the LEGO brand. From now on, the development of 3D printers means that for inventors, creators and rights holders there is a serious risk of counterfeit.
In theory, four aspects of intellectual property are applicable to 3D printing: patent rights, trademark rights, design rights and copyright. In practice, copyright does not afford protection since only private copies are concerned. Since counterfeit rules do not apply to private copies, it would therefore be easy to print an object by simply omitting the trademarked elements such as the name for example.
Of course it has always been possible to copy objects, however in the context of 3D development, it is the ease of reproduction which is causing consternation. Anyone will be able to copy an object thanks to 3D printing, since no skills or particular abilities are needed.
Several lawsuits have already been filed. For example, in 2011, Paramount demanded the removal of 3D files from a cube inspired by the film Super8 by JJ Abrams. The modeling of the object had been sent and shared on the Shapeways site. The Pirate Bay, a site for exchanging multimedia and software, had opened a section called “Physibles” and was offering several files of items to be printed. Access to this was blocked on the grounds of counterfeit by order of the Antwerp Court of Appeal(1).
More recently, nuProto who had launched a printed version of an object from the series Game of Thrones, designed as a mobile phone accessory, was compelled to stop all sales by American chain HBO.
Current legislation no longer seems appropriate, and ad hoc solutions will have to be found. There is a need for appropriate Digital Rights Management (DRM) and the application of technical measures to control access to data protected by intellectual property rights in the field of 3D printing. An American patent2 has already been filed that is seeking to apply a DRM system to 3D files. Of course, such a system is in danger of being quickly outmaneuvered by counterfeiters.
The challenge that has arisen today regarding the illegal reproduction of objects appears to be a repetition of what happened several years ago surrounding the pirating of music and films, and which has only partially been resolved. The digital era is forcing intellectual property to have a fresh makeover. To be followed!
On September 30, Sedo.com published the results of its survey carried out last August in which it interviewed 360 managers responsible for their companies’ marketing and advertising programs.
The survey revealed that 54% of those interviewed were not aware that the new gTLDs would already be available this year, and 62% felt that these new strings would only serve to increase confusion on the Internet, although 64% believe that the use of these new domains will be a success.
The possibility of obtaining an address that would be easy to memorize was approved by 35% of those surveyed and 28% stated that they would buy such addresses essentially for this reason.
88% of participants affirmed that none of their clients had planned to buy one of the gTLDs, whereas 59% of those interviewed plan to use a domain other than a .COM for an advertising campaign.
The survey also provided statistics concerning the use of domain names in the advertizing and marketing sectors and revealed that just over half of those surveyed (54%) had already bought a Web address in the past and that 62% did so for personal reasons and 55% for their company’s website. 33% bought a domain name specifically for a marketing or advertizing campaign and 26% did so for a particular product.
It is also interesting to note that half of those surveyed (52%) declared that they had bought a different domain name to the one originally intended. In this category, 29% said that the problem was lack of availability for the name, 3% said the price was too high and 20% cited both the above reasons. In relation to this, 32% have had to rename a product, a service or a campaign due to lack of availability or to the price of certain domain names.
Those interviewed were also reminded that ICANN developed the Trademark Clearinghouse to help trademark owners protect themselves. A majority of participants (86%) did not know about the Clearinghouse and 85% stated that they had never taken legal action in order to resolve a violation of trademark rights. For those who were aware of the existence of the Trademark Clearinghouse but who had never used it, 49% intend to do so but have not yet had reason to call on its services.
Other replies indicated that 26% of those surveyed are waiting to see if their new web addresses will be accepted and 26% said they were not worried about breach of trademark rights.
Finally, participants were asked to identify the 10 most popular new strings. “.app” seemed to be the most promising in terms of results, followed by “.inc” and “.shop”. The least-favored string would appear to be “.llc”.
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The 13th edition of the ‘Trophées du Droit’ (legal industry awards) was held on 28 November in an award ceremony for the best legal firms which gathered over 950 figures involved in the legal profession(1)(2).
