Our office will broach the following subject: “Domain name jurisprudence news: focus on new gTLDs disputes”.
The virtual world is in constant evolution. This is why it is important to understand the new digital challenges and be aware of the legal risks relating to web 2.0. During this day, participants will share their knowledge on a variety of topics including the arrival of new gTLDs , the latest domain name litigations, e-reputation or familiarization with Cloud Computing.
On July 16, 2013, the Tunisian Government submitted to the Director General of the World Intellectual Property Organization (WIPO) its request to join the Protocol relating to the Madrid Agreement concerning the International Registration of Marks (known as the “Madrid Protocol”).
The Madrid Protocol became effective with respect to Tunisia on October 16, 2013.
This accession contract contains the following declarations:
the time limit of one year to notify a refusal of protection is replaced by 18 months and a refusal resulting from an opposition can be notified after the expiry of the 18-month time limit, and
Tunisia wants to receive an individual fee instead of a share in the revenue produced by the supplementary and complementary fees concerning either an international registration or a renewal registration.
This new accession favors trademarks holders who might include Tunisia when depositing an international mark or extending existing international registrations to Tunisia.
Some countries have put in place new validation procedures or have accepted for registration names composed of accented characters (or Internationalised Domain Name – IDN).
ARGENTINA: The Argentinean registry Nic.ar has set up a validation procedure for previously registered domain names that will be effective on October 28, 2013. Domain name owners will have to submit authenticated documents proving their identity.
If the registered data is not validated, domain names could be blocked or cancelled. These domain names won’t be able to be renewed, transferred or updated!
COSTA RICA: Nic Costa Rica will update contact information for domain names in .CR between October 7 and November 29, 2013. This update will be carried out by email or phone.
COLOMBIA: From October 15, French accented characters will be accepted for .CO domain name registration. There will be no particular registration period but a “first come, first served” basis will be put in place for domain name allocation.
Besides French IDN, the registry will accept German, Hungarian, Latvian, Lithuanian, Polish, Portuguese and Russian characters. Since the beginning of 2013, Scandinavian characters (Danish, Finnish, Icelandic, Norwegian and Swedish) have been already accepted.
TUNISIA: The Tunisian Internet Agency (ATI) approved two characters’ domain name registration and new IDN: á, â, ã, ä, å, æ, ç, è, é, ê, ë, ì, í, î ï, ñ, ò, ó, ô, õ, ö œ, ù, ú, û, ü, ý, ÿ, ß.
Contrary to Colombia, Tunisia is already organising registration periods:
from August 1, 2013 until January 31, 2014 for local governmental organisations,
from October 1, 2013 until January 31, 2014 for applicants holding registered trademark in Tunisia,
from December 2, 2013 until January 31, 2014 for applicants holding a .TN registration and
after January 31, 2014 registrations will be opened without any condition.
SEYCHELLES: .SC registry will accept from now on one and two characters’ domain name registration (except country codes from ISO3166 list). The registry wants to identify applicants with the best potential in order to maximise the development of high-quality names and increase the use of .SC domain names. This program won’t be opened to marketing on Internet but aims to find applicants who have a legitimate right to promote the .SC trademark as a strong one.
Within the new gTLD program, ICANN had to assign centres to manage disputes.
Hence it concerns also post delegation dispute such as Registration Restriction Dispute Resolution Procedure (RRDRP) and the Trademark Post-Delegation Dispute Resolution Procedure (Trademark PDDRP).
RRDRP covers dispute resolution between on the one hand institutions and private individuals and on the other hand a community-based new gTLD Registry Operator in order to solve possible deviation problems of the latter about registration restrictions.
Trademark PDDRP has aimed to handle Registry Operator’s bad manners as regards trademark’s rights violations for top-level and second-level domain names.
After a proposal request on last April 30th, a Memorandum of Understanding (MoU) has been signed by ICANN with new providers for these services. Among them the Asian Domain Name Dispute Resolution Centre (ADNDRC) and the National Arbitration Forum (NAF) for Trademark PDDRP and the NAF will be in charge to manage RRDRP.
The process of rights protection as part of new gTLD release becomes clearer. These new nominations are a very good example of it.
Appeal Court of Paris, 26 June 2013, Stéphane Briolant and SA Camard et associés against SA ARTprice.com (1)
In a decision made on 26 June 2013, The Paris Appeal Court ruled that the company Artprice.com, international leader in valuations of the art market on Internet, should pay almost €900,000 to photographer Stéphane Briolant and auction house Camard et associés.
The Appeal Court upheld the claims of counterfeit and parasitic competition regarding the reproduction, and digitalization, without permission, of both the auction sales catalogues and photographs.
As regards the auction sales catalogues edited by the Camard company:
Firstly, the Appeal Court reiterated that a catalogue can be considered to be a protected work according to article L 112-3 of the Intellectual Property Code as long as “the work of selection, classification and presentation reflects the personality of the author”. (2)
The Court considered that certain auction catalogues reveal an originality which “ is demonstrated by their composition, the methodical presentation of lots in a certain order, the choice of quotes and the drafting of biographical summaries, all of which display a unique character which distinguishes them from other auction catalogues and demonstrates an esthetic approach reflecting the author’s style.”
This being the case, the Court upheld that even the partial reproduction of these catalogues, without permission, constitutes counterfeit.
As regards the photographs reproduced in the catalogues:
The Appeal Court sought to distinguish between original photographs and those which are not considered to be intellectual works “due to their purely technical and informative nature”.
The Court recognized the originality of certain photographs in which the photographer had gone beyond a mere snapshot of the objects but had specifically researched their situation and context.
Appeal jurisdiction concluded that Artprice.com, by reproducing the original works on its site, had also committed counterfeit.
Artprice.com has lodged an appeal against this decision and also intends to file a complaint in the courts against the photographer and the auction house, being of the opinion that they “have deliberately misled the Appeal Court in order to obtain a favorable decision for their own ends, notably by the presentation and use of false intellectual documents and by concocting a scenario of fanciful events.” (3)
To be followed!
1) http://juriscom.net/wp-content/uploads/2013/07/caparis20130626.pdf
2) Based on article L. 112-3 of the Intellectual Property Code
3) Press release by Artprice.com on July 9 2013 http://serveur.serveur.com/Press_Release/pressreleaseFR.htm#juillet2013-9
French Polynesia achieved autonomous status by law on 3 March 2004(1).
A Law of 6 May 2013(2) and a Decree of 22 July 2013(3) have outlined the means by which a national trademark can be protected in French Polynesia under the same conditions as in metropolitan France, notably as regards the duration of protected rights.
French trademarks registered with the French IP Office (INPI) and French designations of international trademarks are not the only rights to be affected, the same applies to patents, utility certificates, designs and French semiconductor topographies accorded by the INPI.
For IP rights filed prior to 3 March 2004 there will be no difficulty since there will be automatic recognition without any formalities being required. For rights filed after 1st January 2014 an extension of the scope of protection to French Polynesia will be possible via payment of an additional tax.
For all other rights, validation is essential in order to be protected in French Polynesia:
A period of transition has been established for rights filed between 3 March 2004 and 31 December 2013(4) during which the registration of national marks must be validated in order for them to be extended to French Polynesia.
It is important to precise that renewals done after 3 March 2004 must be validated.
When can trademarks be validated for French Polynesia?
Requests to obtain recognition must be made between 1st September 2013 and 1st September 2015.
Our firm would be happy to answer any further questions you may have on this subject.
______________________________
(1) Law no 2004-192
(2) Article LP 138 of Law no 2013-14
(3) Decree no 1002/CM
(4) For rights filed between 1st September 2013 and 31st December, recognition will be possible during the 4th quarter of 2013, immediately following publication of a new Decree by the French Polynesian government.
ICANN is starting this month to post Registry Agreement redlined versions to highlight changes between an executed agreement and the current standard.
So far, ICANN has signed 44 new gTLD registry agreements and none of them have important changes from the approved base agreement.
For information, among the 460 applications invited to contracting, 121 applicants have responded to their invitation, 52 contracts have been sent out for signature and therefore 44 applicants have signed Registry Agreements.
The city of Paris opens two subscription periods where first “.paris” will be allocated.
The first period will enable various types of entities to obtain a domain name matching their name or trademark, chosen according to their status (large company, institution, SME, start-up, association).
The second period will consist of candidates selected according to high-value generic domain names such as “visit.paris” or “<street name>.paris”.
Interested entities can subscribe on the website http://mondomaine.paris.fr until December 16th 2013. Their applications will be evaluated according to various criteria such as the nexus of the name to Paris, the services quality or financial criteria.
Our office can advice you and provide you with any additional information you might need.
As a reminder, it has long been established as jurisprudence that acts of counterfeit can be proven by all valid means(1). The process of infringement seizure is facultative. This exceptional recourse offered by the Intellectual Property Code(2) is without dispute the most thorough approach and the evidentiary method that is the most used for questions of counterfeit.
However, this procedure has very strict guidelines concerning both its authorization mechanisms and its terms of execution(3), and because of this its validity is very often challenged by alleged counterfeiters. Infringement seizure must be authorized by Order of the president of the Tribunal de grande instance (High Court) in response to a request presented to him. Judges are particularly keen to ensure that the terms of the Order are respected by the bailiff, and contravening the limits set by Order can lead to either the total or partial nullity of the infringement seizures.
The ruling by the Cour de cassation (Supreme Court) on February 12 2013(4) is an illustration of how keen judges are to ensure that the terms of the Court Order are respected. The Chamber of the Supreme Court sanctioned the patent holder, who had initiated the infringement seizure, with a fine of 100,000€ in damages and interest in favor of the alleged counterfeiter due to procedural abuses during the seizure.
The petitioner, the Vetrotech Saint-Gobain International (Vetrotech) Company, holder of a European patent relating to fire-resistant safety glass, alleged that the Interver Sécurité (Interver) Company manufactured and sold in France types of glass produced from characteristics described in one its patent applications. As a result, the Vetrotech Company requested an infringement seizure at Interver’s premises. Going beyond the terms of the High Court Order, the bailiff asked 24 questions relating to the processes used in the manufacture of the product. Confirming the initial decision, the Paris Appeal Court(5) ordered Vetrotech to pay 100,000€ in damages and interest to Inverter and partially nullified the minutes taken during the seizure.
Before the High Court, Vetrotech argued that indeed the bailiff had exceeded his mandate, but that was insufficient to be classed as an abuse for which their company could be found liable. The Chamber rejected this argument. According to the Court, the very existence of the fault is applicable to Vetrotech since this company had “inappropriately obtained information on the manufacturing procedures of a direct competitor via questions asked by the bailiff.”
The Court underlined in its ruling that infringement seizure is simply an evidentiary measure and the rights of alleged counterfeiters must be respected to the same extent as the rights of the alleged victims of counterfeit. The petitioner cannot take advantage of the seizure in order to inappropriately obtain information about its competitors. Infringement seizure cannot be a means of obtaining access to the premises of its competitors with the aim of discovering their secrets. In order to avoid the proliferation of such operations, their validity is strictly monitored by the Tribunals.
Our practical advice: since a bailiff’s procedural error can be imputed to the petitioner of infringement seizure, collaboration with qualified bailiffs is essential. All due care must be taken.
(1) Cass.civ, May 30 1927
(2) Article 332-1 and following of the ICC
(3) Law no2007-1544 of October 29 2007, known as anti-counterfeit law
(4) Cour de cassation February 12 2013 Vetrotech Saint-Gobain International AG v. ISG Interver Special Glass
On June 10 2013, the Council of State nullified the former judicial structure for domain names in .fr.
Four documents foundational to the policy of French domain name attribution have been annulled: legislation for alternative procedure in litigation resolution, known as “PREDEC” ruling; naming regulations for .fr from 2009-2011, as well as both the 2009 Order and Convention designating the Registration Office for .fr.
This important decision follows one made by the Constitutional Council (1) repealing article L45 of the Code of electronic posts and communications, judged to be in breach of Constitution. The aforementioned article has no longer been in force since July 1st 2011, but since the European Commission had never been notified, the Council of State decided to nullify.
The current judicial framework is not affected by this decision, but the AFNIC (2) “is soon to examine the medium-term consequences” and “intends to continue on a daily basis to fulfill its mandate at the service of French internet users, title holders and registration offices for .fr, in accordance with its mission and, henceforward, the demands of ongoing service to the public.”
The AFNIC, which is the register for domain names in .fr (France), .re (the Reunion Islands), .yt (Mayotte), .wf (Wallis and Futuna), .tf (Southern and Antarctic territories), and .pm (Saint-Pierre et Miquelon) is currently subject to a new domain name charter which took effect on March 15 2013.
(1) http://www.conseil-constitutionnel.fr/conseil-constitutionnel/francais/les-decisions/acces-par-date/decisions-depuis-1959/2010/2010-45-qpc/decision-n-2010-45-qpc-du-06-octobre-2010.49663.html
(2) French Association for cooperation with Internet domain names
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Our office will broach the following subject: “Domain name jurisprudence news: focus on new gTLDs disputes”.
