Dreyfus

Arbitrary, flawed, unfair, are just some of the buzzwords that popped up during the launch of the batching system for new gTLD’s. The uncertainty as to the batch or bundle in which one candidate can finds himself is high and is causing deep concern. Last Friday, (ndlr: the 8^th of June) and more amazingly before the reveal day, the ICANN decided to launch its batching system. As we already underlined in a recent article [1] this system was deemed to be fair and to represent geographical aspirations. A genuine bubble grew up within the juridical community which expressed strong grievances against this system. Some authors casted doubts on the efficiency and the relevance of such a system. Some people even pointed out that the system is technically flawed and would represent the second glitch of the ICANN after the so-called glitch of the TAS system.

• Why is this system only a second best?

In fact, before engaging in a mouse-clicking frenzy, one has to bear in mind that queuing for such a system is like queuing for a lottery. This system is an oddity in the landscape of the new gTLD’s. As far as the geographical injection is concerned, it is deplorable, it is more or less like affirmative action: one can say that an affirmative action in favor of one individual is still a negative action taken at the expense of someone else. The scheme is simple, you must foresee a certain time and date in the future, then linger wherever you want and come back on the foreseen date and time, keeping your mouse ready to shoot at the target. The nearer you shoot, the closer the date of your assessment by the ICANN will be. Being in the first batch is of utmost importance as you will have a higher chance of boosting the launch of your gTLD’s and of being within the “happy few” candidates to run the gTLD’s at the beginning of 2013, if timescales remained unchanged. Companies like pool.com urge candidates to use their premium services. The latter proposed to help candidates to reach the target of being in the expected batch. Needless to say that such companies are not philanthropic by nature and are driven by economic ambitions. The emergence of such companies is highly regrettable for applicants. Finally, if several applications relate to the very same extension, they will be reallocated to the first batch in which the gTLD’s occurs. In this case, it is fate which leads the way!

• Is there any plan B?

Before the batching system, dubbed the digital archery, was introduced, grievances reached the ICANN with alternative proposals which were not chosen by the Californian institution. The proposal to assess all the applications at the same time came under consideration. The reality is that the ICANN introduced the batching system in order to alleviate the problem of treatment of the number of applications. That can sound a little bit harsh, but no third way seems foreseeable today as the system is already up and running.

Gambling can become an addiction which is hard to overcome, but in the case of the batching system, the addiction seems easy to push away. As soon as the system comes to an end, the candidates will feel such a relief that the ICANN will be under to pressure to set up another mechanism for the next round of gTLD’s, if there is any!

The WIPO just released [1] a list of about one hundred experts who will fulfill the task to be experts for Legal Rights Objection. LRO is enshrined within the Trademark Rights Protection Phase for new gTLD’s for seven months as from the “reveal day” (namely the 13^th of June 2012). The WIPO is the exclusive provider of the LRO. LRO derives its strength from ICANN Applicant Guidebook. Once the applicant applies for new gTLD’s, he is bound to stick to the rules set up by the ICANN. LRO is a way for trademark owners to file a complaint against a new gTLD’s application which appears to constitute in particular an infringement to its trademark. The out of court nature of this procedure is a sharp characteristic that the LRO share with the other formal opposition mechanisms put into place and which start as from the reveal day. This comprehensive mechanism can be used by two entities namely trademark owners and Intergovernmental Organizations (IGO’s). If a trademark, an acronym or an IGO’s right is infringed, LRO is the objection option which is the most suitable. In terms of timing, LRO will be used before ICANN’s approval of new gTLD’s.

The fees of such an opposition are quite innovative. In order to file an opposition against one gTLD’s the tax will be of 10 000 $ excluding attorney fees. The difference with a UDRP proceedings lies in the fact that the successful party obtain the refund of 8000 $, 2000$ remaining for the Center.

We welcome the announcement of Nathalie Dreyfus as an Expert for the LRO and hope that the mechanism set up by the ICANN under the WIPO umbrella will be as protective as possible of trademarks rights. Given the background of the WIPO as an unbiased and skilled institution, we cannot but hope that LRO will be a frank success.

In the whole context of the gTLD’s conundrum, one of the commitments of the ICANN was to set up relevant mechanisms to protect trademark owners from infringements and cybersquatters. That is why the Trademark Clearinghouse which is supposed to be a worldwide trademark database was created. TMCH is supposed to be a tool for the Sunrise period. Lately, the ICANN released that it picked out Deloitte and IBM as service providers for the Trademark Clearinghouse. One tricky question remained unanswered which revolves around the price of the service offered by the TMCH. The ICANN announced[1] that the cost to beneficiate from the safe haven of the TMCH is of less than 150$. Our observations are as follows:

-This price, which seems low at first sight, is to be reconsidered for owners of huge trademark portfolios. Actually, trademark owners must pay 150$ for each trademark they want to integrate in the TMCH. There is no denying that the process can become costly and heavy for trademark owners. It is of utmost importance for a company to make an audit of the trademarks portfolio in order to assess the trademarks which are worth to declare.

-The mechanism of the TMCH has many loopholes. Among them the most salient being the fact that it only detects domain name registrations matching identically with the trademark which was declared before it. Given the sneakiness of cybersquatters who are prone today to register typosquats and trademarks plus generic or geographic names, many domain names will slip through the net without any pain;

-Even if a trademark owner receives a notification pointing out that its trademark was registered as a domain name, there is no mechanism to prevent cybersquatters or third parties to register it.

The Dreyfus lawfirm can advice you at any time on the best strategy to adopt pertaining to the declaration of trademark before the TMCH.

ICANN just announced that the Big Reveal date for the new gTLD program is June 13th.

Indeed, after a six weeks delay due to the data system bug on April 12, the unveiling of all 2,000+ applications is going to accompanied by a press conference and panel discussion in London.

That date also corresponds to the beginning of comments and formal objection period to the applications, ending August 12.

Even if children could not resist to the cute little monster called Lady Goo Goo with her pink stroller and silk diapers, Lady Gaga did not speak out for this eccentric cartoon character.

The disenchanted love story between the two ladies is born from the release of “The Moshi Dance” song by Moshi Monters, an online game and children’s social networking site operated by the company Mind Candy Ltd. The disputed lullaby is sung by a baby cartoon character wearing big sunglasses and blond hair styled in a reminiscent way of the famous pop star Lady Gaga. Among the other characters promoted by Mind Candy, Lady Goo Goo’s was the most popular. The huge success encountered by the pop song after being posted on YouTube, led the company to contemplate the sell of this one on iTunes.

This intent was overtly too much for Ate My Heart Inc, the corporate entity controlled by Lady Gaga, which filed an interim injunction application in the UK to prevent Lady Goo Goo from singing the disputed modern nursery rhythm. To make the cartoon baby stop dancing, the claimant grounded its request on its two LADY GAGA trademark registrations for, among other things, “sound and video recording” in class 9, “Entertainment and education services” in class 41 and “Streaming of audio and video material on the internet” in class 38. Thus, there was, on claimant’s opinion, a risk of confusion between the Lady Gaga trademarks and the Lady Goo Goo sign (See Article 5(1)(b) of the Trade Marks Directive (2008/95 EC)[1]).

Applying the average user test, the England High Court of Justice held that the relevant consumers likely to encounter the disputed song were 6-12 years old and found that such a young audience might believe that Lady Gaga and Lady Goo Goo were linked. Even if a proportion of the public was able to distinguish the pop star from the cartoon character, the judge still considered that there were possibilities that those consumers thought Lady Gaga and Lady Goo Goo to be connected. Notably because: ““Goo Goo” and “Ga Ga” are both noises made by babies, Lady Gaga has developed her reputation in the music field, Lady Gaga uses the term “Little Monsters” to refer to her fans on Twitter and finally, the defendants have themselves tagged their YouTube song so that it would appear as a result when the word “Gaga” and “Monsters” were used together as search terms (See paragraph 55-58 of judgment[2]).

The Court also found that the use of Lady Goo Goo traded on the reputation of the celebrity as the LADY GAGA trademark enjoys a “huge reputation”. In addition, the judge, considering the approach in Interflora Inc v Marks & Spencer Plc [2009] EWHC 1095 (Ch), 2009 E.T.M.R. 54, held that the use of Lady Goo Goo in the music field and the way this animated cartoon baby imitates Lady Gaga could not only give rise to a link with the famous singer but also impact on the reputation, lead to the dilution or a risk of tarnishment of the LADY GAGA trademark.

Consequently, the High Court of Justice granting the claimant’s application for an interim injunction decided to prevent Mind Candy from promoting the Moshi Dance on YouTube and iTunes.

It is worth knowing that the defendants use to operate in the Moshi Monters game, other characters based on current celebrities among which Broccoli Spears, the Goo Fighters, 49 percent and Hairosmith. Instead of looking for an artist career on its own in the lucrative music market, it seems that Lady Goo Goo should have stay with them in the game!

A new article modifying the Public Health Code and impacting the Design Law has recently been introduced[1].

It allows an Intellectual Property Right offense as it leads to the substitutability of generic medicines under the European Guideline[2] with regards to their aspect and substitutability link with the original medicine.

The French Intellectual Property Right Code already contains a provision for trademarks allowing for substitutability between original and generic medicines. But this substitutability takes place only after the legal period of protection of the original product has expired.

The medicine’s external aspect (shape of tablet or capsule; color; texture) likely to be protected by Design Law, is from now on framed by this provision.

Patients will have now an offer that recalls the organoleptics characters of the original medicine with the generic medicine’s price.

The scope of the article is limited to original oral medicines with a recognizable and identifiable external aspect. These medicines are likely to cause confusion in taking medication and so to jeopardize the patient safety. Indeed, patients often identify their medication by their external aspect.

It refers as well to generics medicines with regard to their substitutability link under the article L. 5125-23 of Public Health Code.

This new provision facilitates the commercial distribution of generics medicines to the extend that strong differences in aspect are likely to get patient confused which is an impediment to the development of generics medicines despite the substitutability principle.

However, this new article is an exception to the Design Law. Registered Design confers on its owner the exclusive right to use it and to prevent any third party from using it without consent.

This provision jeopardizes the Design Law granted for original medicines to the benefit of generics.

But why is this article introduced into the Public Health Code only and not into the Intellectual Property Right Code as well, since it significantly modifies the Intellectual Property Right in general and Design Right in particular?

Even if this new provision meets a need in terms of public health it contravenes the European Guidelines about Design Law which allows for no exception.

[1] The Law N° 2011-2012, of December 29,  2011 on improvement of medicines and health product’s safety has introduced a new article L. 5121-10-3 in Public Health Code stipulating that : « the owner of an Intellectual Property
Right  which protects the external aspect and the texture of the original pharmaceutical’s oral forms under article L. 5121-1 cannot prohibit pharmaceutical’s oral forms of a generic product likely to be substitutes for the original form pursuant to l’article L. 5125-23 from having identical or similar aspects and textures ».

[2] A generic medicine is, under European Guideline D2004/27/EC, article 10: “a medicinal product which has the same qualitative and quantitative composition in active substances and the same pharmaceutical form
as the reference medicinal product, and whose bioequivalence with the reference medicinal product has been demonstrated by appropriate bioavailability studies”.

France and Canada do not share a common process to register a trademark. Indeed, there are 3 different grounds that allow application for a trademark registration in Canada. Thus, the preparation and filing of a trademark in Canada are specific because it must be based on either use in Canada, or proposed use in Canada or solely on use and registration of the trademark in another country. Each of those grounds has a particular meaning. Applying for a trademark registration based on use in Canada means that the trademark has already been used in Canada, whereas basing an application on proposed use in Canada means that the applicant intends to use the trademark in Canada. Finally, the last ground implies that the applicant owns a registration and uses the trademark in another country. Those requirements impact the Canadian application process. The five most important stages are highlighted below.

The Canadian Trade-marks Act notably provides that: “a trade-mark is registrable if it is not confusing with a registered trade-mark”[1]. Thus, it is highly recommended to conduct a search in the Canadian Trademarks database to avoid any conflict with another previous trademark registration.

As soon as from filing, the applicant has to provide a list of the goods and services in association with which the trademark is intended to be used or has been used in Canada. In addition, if the application is based on “use”, the applicant has to provide the date of first use for each of the designated goods and services.

It is relevant to point out that not only the use by the applicant but also by a licensee is taken into consideration. Applicant must also note that use on goods doesn’t have the exact same meaning of use with services. Whereas the use on goods means that “the trademark must be associated with the goods at the time of sale, for example marked on the goods, packaging, labels, visible to the purchaser”; use with services means that “the trademark must be displayed in the performance of the services, or in advertising services and that the applicant is ready to perform the services, if requested”.

Then, the examination allows a trademark examiner to review the application and if needed, notify objections. Doing so, he determines if the trademark can be or not approved for advertisement in the Canadian Trademark Journal.

Those first steps are decisive. The applicant can amend his trademark application until its advertisement. Once this latter has been advertised in the Trademark Journal, opponents can object to the registration for two months from the date of the publication. To successfully prevent the registration of the trademark, a formal opposition can notably be grounded on the difference between the date of first use provided by the applicant and the actual first use.

If the application has not been opposed or if an opposition has been defeated, the Canadian Office issues a notice of allowance.

Finally, after the payment of the registration fee, the trademark will move from the “pending” status to the “registered” status. Plus, the trademark application for a proposed use in Canada will be completed by submitting a declaration of use.

A trouble-free trademark application can last around 15 to 18 months.

Last 25^th of January, the European Commission released that it will overhaul the former directive from 1995 on personal data (Directive 95/46/CE). In its press release, the concept of “right to be forgotten” popped-up naturally. Today, the protection of personal data is protected by the article 8 of the Charter of Fundamental rights[1].

A recent ruling issued by the Court of First Instance of Paris on the 15^th of February[2] offers the opportunity to grasp the ins and outs of the concept of “right to be forgotten” within the digital arena. In this particular case, a legal secretary who has formerly a pornographic career, wished to withdraw the remnants of her past and asked for the cut of the URL links of pornographic videos available on the Internet where she made some appearance. The young lady run afoul of videos producers and filmmakers which remained apathetic. The Court acknowledged that the association of a family name with pornographic videos was detrimental to her private life. She obtained the cancellation of the litigious URL by Google.

This case law is echoing a former case law[3] where a professor made her voice heard in order to obtain the withdrawal of links redirecting towards pornographic websites. Given the new career she embraced the videos were harmful to her private life. Notwithstanding one has to put this case law into perspective. When such lawsuits are brought before the Courts, the Internet link come back to the stage and their ranking is likely to come back by the back door. The side effect of these lawsuits is to put it in a nutshell, that the decisions will be public and that instead of burying their past these victims are fueling the fire.

There is no denying that the multiplication tenfold of social networks and of cloud-computing widens the possibility of infringements. It is thus highly difficult to erase his or her digital print. These devices are gateways towards personal data infringements. Ineluctably, victims have to face juridical as well as technical hurdles. The decision to launch a lawsuit in order to protect his or her personal data is time-consuming. It will be tricky to find the person who actually infringed the rights. Needless to say that the actions which are brought up pertaining to the protection of personal data are scarce.

Nonetheless, it is of utmost importance to shelter oneself against the boomerang effect. The term of boomerang effect was coined by sociologists to characterize the situation where an individual can be harmful for himself while publishing personal date online. In posting contents online, internet users can derive some benefits in terms of reputation at the first place but later on, the displaying of such content can cause prejudice to the one who posted it. In order to frame the negative consequences of an information haemorrhage it is advisable to forecast ex ante regulation methods in order to suppress litigious content afterwards.

Since its creation in 2004, Dreyfus & associes keep being referred in various professional guides. Once again, the office sees its practice focused on disputes and trademark online issues recognized by the professional circles. Nathalie Dreyfus, the founder of Dreyfus & associes, is notably considered as a “rising star” in the World’s Leading Trademark Professionals 2012: “she has a lot of experience and know-how, provides practical advice and delivers work very efficiently, which is exactly what we seek in our counsel.” Dreyfus & associes is proud of such recognition.

The applications for new gTLD’s are closed since the 29^th of March. For those who were lured by the appeal of new extensions files must be submitted before the 12^th of April. A few days before the fatidic date of the 29^th of March, ICANN released that it registered 839 candidates, knowing that one candidate can apply for a bunch of extensions. The current estimations give a number ranging from 1000 to 1500 candidates for new gTLD’s.

Could the ICANN assess all the applications?

From the inception of the new gTLD’s, ICANN announced that it could not proceed to the assessment of more than 500 files at a time. In the event where the ICANN would be overcrowded with applications it has been foreseen to set up a batching system. An awaiting group will be evaluated provided the earlier group has been treated up to 80%. Strictly speaking, those who will not be in the first group will see their application postponed of one to two years. One can ask on which criterions the ranking of the group will be made?

The “digital archery” gaming

In order to prevent any favoritism, and in the extent that ICANN decided to rule out the first come first served principle, a gaming was set up in order to split up the candidates in different groups of assessment. The blueprint which has been adopted by the ICANN was unveiled at the last meeting of the institution in Costa Rica and faced harsh criticisms. ICANN launched a batching system in order to divide the applications in bunches if the applications reach the number of 500. It is rather likely that three different groups will be created. Candidates to the new gTLD’s are invited to go on a website where they will forecast the date and time at which they will apply for new gTLD’s. The second step consists in an e-mail of confirmation which will be sent to the candidate in order to confirm its expected date and time. On the due date, the candidate will go again to the aforementioned website and will submit its application at the nearer time he can. The system will issue a variance which calculates the difference between the expected time and date and the effective time and date at which the application was really submitted. As there is no such a thing as a negative variance, the fact to submit your application in advance will not grant you any bonus point, the system will consider that you apply at the time you forecast plus one second. Needless to say that, the better estimation, the better you will be ranked. Given the economic interests which underlie the fact to be assessed in the first group, companies will be gaming actively through this newly system.

This online mechanism has been coined under the expression of “digital archery”. Nonetheless, beyond the metaphor lie the disadvantages which come by the back door. Even some members of the ICANN Board did not extol the virtue of this system which is random and is not so alien to the system of “first come, first served” which was supposed to be ruled out. Strikingly, the ICANN decided to launch this system in order to avoid any liability for illegal lottery.

The underlying goal of the ICANN while launching the new gTLD’s extensions was to blow a wind of liberalization on the whole system of domain name to widen the available offer guarantying a certain geographic diversity. In order to avoid the hurdle of an overrepresentation of a geographic part of the world which will be detrimental to the spirit of the new gTLD’s system, ICANN decided to introduce in addition to the digital archery a proportional model. This pattern will ensure equity between the different countries of the world and will mirror geographic diversity in addition to the time/date variance described earlier.

Moreover, the ICANN introduce another possibility within its new system. For applicants which are not willing to benefit from an early treatment and which want to opt-out of the digital archery system they can do so on the very same online system. This opt-out possibility can be highly strategic for the applicants which want to postpone their applications if their direct competitor does not run for the new gTLD’s.

As the randomness of the system and the gaming it implies seems highly controversial, an informal commission has been set-up which compounds ICANN officials. This commission will try to cope with the loopholes of the system and will propose an alternative system to the digital archery. Auction has been proposed as a solution to solve the intricacies of the digital archery system.

On the 30^th of April, ICANN will unveil the name of the candidates for new extensions. However, this date could be postponed if applications are far too important according to ICANN President and CEO (1).