Protection of trade marks in the Democratic Republic of Timor-Leste, also known as East Timor

Written by Dreyfus05/05/2011

Located about 350 miles north of Australia, Timor is an island in the Indonesian Archipelago. This island is divided up into two territories: West Timor, which belongs to Indonesia, and East Timor.

Colonized by Portugal up until 1975, East Timor was subsequently occupied by Indonesia. The Democratic Republic of Timor-Leste became an independent state on 20 May 2002.

At present, this country has yet to adopt any trade mark legislation. However, whilst waiting for such legislation to be put in place, the East Timor authorities accept “provisional” filings in the form of cautionary notices, which are enforceable against third parties.

Furthermore, once a legislative framework has been put in place, it will be possible to convert these “provisional” filings into trade marks. These trade marks will in principle be protected with effect as from the initial date of the provisional filing. At present, multi-class filings are accepted. Brand owners are therefore well-advised to consider protecting their trade marks in this territory.

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Microsoft brings its advertising sales agency policy in line with Google’s

Written by Dreyfus03/03/2011

As the advertising sales agency of Bing and Yahoo!Search, the two most used search engines after Google, Microsoft Advertising announced the liberalization of its keyword registration policy. Starting March 3, 2011, registering trademarks as keywords is now possible within the framework of advertisement campaigns displayed on the Bing and Yahoo!Search search engines.

Bringing its trademark protection policy in line with Google’s, Microsoft will only act upon receiving a trademark owner’s complaint and after having conducted an inquiry on the litigious ad. In the presence of a litigious ad, Microsoft suggests that trademark owners first contact the advertiser and specifies that the following ads will be authorized:

– Use of the trademark by resellers of authentic goods or services,

– Information websites on the trademark (for example for product reviews),

– Generic terms,

– Comparative advertising by independent operators (for example price comparison websites)

This policy applies starting March 3, 2011 in the United States and Canada only.

Specific conditions, which are more or less protective of trademark rights apply in France, the United Kingdom and Singapore.

This general trend thus places new responsibilities on trademark owners. Indeed, the new policies impose the introduction of monitoring tools on all search engines while taking into account the principles of geolocation of ad campaigns. A trademark defense strategy should also be put in place on search engines, while taking into account case law developments within the ECJ and national courts on the subject.

Trademark rights protection discussions slip through the ICANN/GAC 2011 Brussels conference and into the March 17 San Francisco GAC consultation

Written by Dreyfus03/03/2011

The Brussels ICANN Board and Government Advisory Committee (GAC) meeting, scheduled to be an unprecedented consultation on trademark protection and new gTLDs, did not have the success hoped for.

Firstly, not only was the Board unable to make its way to preliminary responses for all of the twelve categories of items listed in the GAC’s scorecard distilling the key elements of consensus advice regarding the introduction of new gTLDs (see previous article on the Cartagena conference for a list of these categories of items), but according to the Board, its response to the first four issues should not be assumed to be its final positions.

Secondly, after a brief and unsuccessful discussion on trademark owner rights protections, the entire subject was simply taken off the table; indeed, it was decided that the GAC and the Board would hold conference calls over the rest of the week and dig back into the subject at the Board’s GAC consultation scheduled for March 17 in San Francisco.

The Board did, however, reveal some of the proposed changes it will make with respect to right protections, based on the GAC’s recommendations.

As to the Trademark Clearinghouse, the Board accepted to change the requirement that trademarks be substantially reviewed to gain automatic entry to the Clearinghouse; all registrations will be included with the additional requirement that the mark holder be able to show use. As to the GAC’s wish to keep the Clearinghouse open after the launch, the Board was not keen on the idea but expressed its intention to explore mechanisms for continued notice service.

Concerning the Uniform Rapid Suspension (URS) procedure, the Board stated that efforts were under way to increase the speed of the process and that such efforts would be dependent on the scheduled conference calls and accepted to reduce the word limit for filings (from 5,000 word free text and unlimited attachments to 500 word free text and attachments limited to copies of the offending website). It also accepted that successful complainants have the option of taking ownership of the domain rather than having the domain name released back into the market. The Board however refused to introduce, at this stage, a loser-pays process, but agreed to provide for careful monitoring.

Finally, as to the Post-delegation dispute mechanism, through which trademark owners can proceed against registry operators acting in bad faith, with the intent to profit from the systematic registration of infringing domain names, the Board resisted to the GAC’s recommendation that a lower standard of proof be applied (from “clear and convincing evidence” to “preponderance of evidence”). It also disagreed with the suggestion that should a registry be found to encourage cybersquatting, transfer of all the domain names in question should be part of the remedies sought.

Further developments in March 2011; however, the gTLD application launch date seems further delayed. To be continued …

The Trophées du Droit

Written by Dreyfus04/02/2011

The Trophées du Droit* rewarded Dreyfus & associés for its dynanism, its performance and its growth as a 2011 rising specialized team.

*A key event of the French legal world, the Trophées du Droit aims at paying tribute to the most outstanding legal specialists (http://www.tropheesdudroit.fr/).

The ICANN Colombia Conference

Written by Dreyfus14/12/2010

Friday December 10, 2010 marked the end of ICANN’s most recent five-day conference in Cartagena, where the Internet regulatory body devised plans to let groups apply for and manage new Internet domain extensions called generic Top Level Domains (gTLDs), thereby allowing for the creation of any TLD with up to 64 characters, including regional suffixes, generic words and brand names. The creation of these new gTLDs will enable large brand owners with sufficient funds to become TLD registries.

According to ICANN’s Adopted Board Resolution of December 10, 2010, public comments following the publication of the fifth Draft Applicant Guidebook (DAG) identified four “overarching issues” to be addressed as a threshold for moving forward with the introduction of new gTLDs: trademark protection, mitigating malicious conduct, root zone scaling and economic analysis. As noted by ICANN, these four issues have been addressed during the Cartagena Board meeting. However, since the public comment period closed on December 10, the last day of the conference, comments will have to be digested within the next month. As ICANN Board chairman Peter Dengate Thrush puts it with respect to IP protection mechanisms, “we don’t think [we need] to start another campaign like the IRT[1] and try to develop another set of mechanisms. However, in relation to the mechanisms we have got the door still open”[2] (emphasis made by the author).

However, since more time is needed to work through some remaining issues such as certain aspects of geographic gTLDs and other gTLDs that raise morality and public order issues, ICANN decided to postpone the new gTLD process. Meanwhile, the Governmental Advisory Committee (GAC), composed of representatives from more than 100 governments worldwide, accepted the ICANN Board’s invitation to meet intersessionally in February 2011, before the March 13-18 San Francisco ICANN meeting, in the interest of resolving the outstanding issues with the new gTLD process. Indeed, the GAC remains very concerned that many of the original public policy issues raised remain unresolved in the latest version of the DAG[3]. It notably noted the absence of a detailed explanation and rationale for the decisions taken to date on the new gTLD program, exemplified by the recent Board decision on vertical integration.

In light of the February meeting, the GAC intends to provide the Board with a list of the issues which it feels are still outstanding and require additional discussion; these include:

– The objection procedures including the requirements for governments to pay fees;

– Procedures for review of sensitive things;

– Root Zone Scaling;

– Market and Economic Impacts;

– Registry – Registrar Separation;

– Protection of Rights Owners and consumer protection issues;

– Post-delegation disputes with governments;

– Use and protection of geographical names;

– Legal recourse for applicants;

– Providing opportunities for all stakeholders including those from developing countries;

– Law enforcement due diligence recommendations to amend the Registrar Accreditation Agreement; and

– The need for an early warning to applicants whether a proposed string would be considered controversial or to raise sensitivities (including geographical names).

In light of such a lengthy and diverse list, we can note that despite what some might think after reading ICANN’s Adopted Board Resolutions, the “overarching” gTLD issues are not closed; they have only been “addressed”, as expressed in the Resolutions. The terminology used was clearly carefully chosen.

This newly scheduled February consultation will further delay the rollout of gTLDs, initially planned for early 2011. Therefore, to the question “will there finally be new gTLD approval in San Francisco?” Peter Dengate Thrush can only answer “We hope that we can work through remaining issues. There is always an incentive on people on whom this might be costly, or enjoy the privilege of incumbency – change always hurt someone. The sort of analogy we use is if you were to now ask the telcos should we introduce the internet, what would they say?” [4]

Further developments in February 2011; however, the May 30, 2011 application launch date announced by ICANN in October already seems to be compromised. To be continued …

[1] Implementation Recommendation Team (IRT): special task force broadly reflecting diverse IP interests and geography given the mandate to address what it considers to be the most pressing and key issues for trademark owners in relation to the launch of new gTLDs.

[2] Full interview : Peter Dengate Thrush, Managing Intellectual Property, December 13, 2010.

[3] GAC Communiqué – Cartagena, December 9, 2010.

[4] Full interview : Peter Dengate Thrush, Managing Intellectual Property, December 13, 2010.

Google AdWords – Evolution of the trademark protection policy in the countries of the European Union and EFTA as from September 14, 2010

Written by Dreyfus23/09/2010

Google has decided to change its AdWords policy in the countries of the European Union and EFTA so that it is close to the one already in place in most other countries. This change took place as from September 14, 2010.

This decision is in line with the Google decision of the Court of Justice of the European Union ( hereafter “CJEU”) dated March 23, 2010, Louis Vuitton vs Google, in which it was held that ” [a]n Internetreferencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of advertisements on the basis of that keyword” is not liable of trademark infringement.

This change of policy is not without consequences for trademark holders.

GOOGLE ADWORDS: ADVERTISING AT THE CLOSEST OF INTERNET USERS!

The Google AdWords program allows to display contextual and targeted advertisements corresponding to the Internetusers’ interest.

The program is based on two principles: keywords and geolocation, which, when combined, allow a fine selection of the public targeted by the ad.

Various types of AdWords

There are three options for targeting keywords that determine how Google search triggers the ads:

•   The broad match that allows an ad to appear in the context of searches on
similar expressions and relevant variations. For example, the purchase of the keyword “Television” will trigger the display of an ad if a user does a search on “Samsung TV”;
•   The exact expression that allows the ad to appear in the context of a search corresponding to the exact expression even if it is associated with other terms. For example, buying the keyword “Samsung Television” will trigger the display of an ad if the user does a search on the phrase “flat screen Samsung television”;
•   The exact keyword that allows the ad to show up in the context of a search corresponding only to the exact expression.

The best known and most widely used (probably because it is the default choice) is the broad match. The broad match allows the display of an ad when the user enters one of the terms of the keyword, even when inverted or interspersed with other words.
The ads will show up for all requests regardless of the order in which the key words are entered by the Internet user, even if the request contains other terms.

Today, an ad may be displayed with:

•   the plural or singular forms of the keyword;
•   the synonyms of the keyword,
•   other “relevant alternatives” to the keyword.

Geolocation

The advertising campaigns using Google AdWords take two kinds of geolocation into account:

• The countries targeted by the campaign (at the discretion of the advertiser);
• The countries where the ads are viewed (the physical location of the user,
materialized by the IP address of his computer). It should be noted that this factor is paramount since a Google request on the same term does provide different results depending on the viewing area. For example, a French Internet user making a search on Google Germany (google.de) will not obtain the same results as a German Internet user making the exact same search. Indeed, the geolocation system determines where the Internet user is localized. For example, a search for a restaurant could provide a list of restaurants located at the corner of the street!

The triggering of ads is finally linked to the policy of trademark protection put in place by Google in the concerned countries.

THE EVOLUTION OF THE TRADEMARK PROTECTION POLICY

So far, in the countries of the European Union and in the EFTA countries, except the United Kingdom and Ireland, when a trademark owner sent a complaint to Google, citing unauthorized use of its trademarks in a keyword or in the text of an ad, Google could at its discretion take the decision to disable the keyword and / or withdraw the infringing ad. In prevention, Google could also blacklist trademarks on request of right holders so as to prevent their use in the AdWords system.

What are the consequences for trademark holders as from September 14, 2010?

•   Someone who advertises on Google in Europe may select brands
as keywords to trigger ads. Advertisers have been allowed by Google to use third-party trademarks as keywords in the United States and Canada since 2004, in the UK and Ireland since 2008 and in many other countries since May 2009.
•   Google will no longer blacklists keywords in prevention.
•   The trademarks that had been blacklisted as a preventive measure will be removed from Google’s list and will again be available for registration as keywords.
•   The advertisings based on the principle of broad match (which allows an ad to appear in the context of searches on similar expressions and relevant variations) will be displayed after searches on competing brands.
•   Google will only remove the text ads that may mislead Internet users on the origin of products and services presented in the ads:
– on request of a right holder and after an investigation from Google confirming the infringement;
– on request of a judicial decision.

Furthermore, so as to limit the risk of conflict, the advertisers are simply invited to fulfil a list of “negative keywords”, corresponding to protected trademarks. In case said keywords are used, the ads will not appear. The responsibility is then transferred to the advertiser.

RECENT CASE LAW

The responsibility of advertisers has been reminded and specified in the decision of the CJEU of July 8, 2010, Portakabin vs Primakabin, notably in case of a used goods reseller.

The advertiser can be punished only if the ad creates a likelihood of confusion related to the origin indicator function of the concerned mark. [The owner of a trademark has the right to prohibit someone to advertise with a keyword identical to its mark only if the ad generates confusion: “where that advertising does not enable average Internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or from an undertaking economically linked to it or, on the contrary, originate from a third party”.]

CJUE also specifies that ” a trade mark proprietor is not entitled to prohibit an advertiser from advertising – on the basis of a sign identical with, or similar to, that trade mark, which that advertiser chose as a keyword for an Internet referencing service without the consent of that proprietor – the resale of goods manufactured and placed on the market in the European Economic Area by that proprietor or with his consent, unless there is a legitimate reason, within the meaning of Article 7(2), which justifies him opposing that advertising, such as use of that sign which gives the impression that the reseller and the trade mark proprietor are economically linked or use which is seriously detrimental to the reputation of the mark ” The use of a trademark as a keyword by a reseller can therefore be prohibited only if the use of keyword gives the impression that the reseller and the trademark holder are economically tied or if such use is seriously detrimental to the reputation of the trademark.

These elements will be appreciated at the discretion of the various national courts.

In France, the French Supreme Court in the France vs. Gifam decision dated July 13, 2010 has confirmed the case law of the CJEU including the fact that by offering advertisers the use of third parties trademarks as keywords, Google has not committed any counterfeiting act.

The Court of Appeals also confirmed in the Multipass / Smart & Co decision dated 19 May 2010 that the advertiser makes a mistake when failing to register the protected trademarks as “negative terms” whereas it had been aware of the situation for several months. However, this case concerned a dispute about the broad match and took place in a highly competitive context. The decision should therefore be regarded as being closely related to the facts at issue.

WHAT STRATEGY TO ADOPT?

Taking into account the recent developments in case law and the new policy to protect trademarks implemented by Google, right holders must exercise greater vigilance regarding the use of their trademarks as keywords to identify potential abusive behaviour and take appropriate provisions against advertisers.

Monitoring the use of trademarks as keywords

With the end of the blacklisting of trademarks in the AdWords program, trademark holders have to put in place a specific trademark watch to detect the use made of their marks as keywords by third parties, including their competitors. One major difficulty of this watch is the principle of geolocation advertising, which requires a local presence in each country of interest and an analysis of the detected ads whatever the language of the ad.

Since late June 2010, our law firm has offered a watching system suited to the geolocation principle. Don’t hesitate to contact us.

Striped toothpaste trademark registration upheld

Written by Dreyfus05/08/2010

The Canadian Federal Court rejected Proctor & Gamble’s (P&G) opposition to Colgate-Palmolive Canada’s (Colgate) trademark registration of a striped toothpaste design.

The design at issue was the coloured stripes of the toothpaste itself, not the packaging, consisting of a green stripe on top, a white stripe in the middle, and a blue stripe on the bottom.

All of P&G’s grounds for opposition were rejected by the Trademark Opposition Board. On appeal, the Federal Court upheld the Board’s finding that the grounds were raised improperly under the Trade-marks Act.

The grounds for opposition in which P&G alleged that the toothpaste design was not a trade-mark at all included:

1. The design was purely for ornamental purposes.

2. Because Colgate held patents that dealt with how to maintain chemical equilibrium in a toothpaste container and to keep the striped appearance when the toothpaste was dispensed, the design was unregistrable for being primarily functional in nature.

3. The design was not visible to consumers at the time the toothpaste was transferred because it was enclosed in packaging. Therefore, the design could not be “used” as defined in the Trade-marks Act.

4. The design lacked distinctiveness because it used the three most common colours in the toothpaste industry.

However, the Court found, respectively, that:

1. P&G had not satisfied its evidential burden because it offered no expert testimony to rebut Colgate’s affidavit, which stated that the toothpaste striping served no purpose and was chosen arbitrarily.

2. patents, manufacturing process, flavours and colouring agents did not necessarily demonstrate a primary function of the striped toothpaste, and there was no evidence that the stripes in Colgate’s toothpaste performed a function.

3. based on Colgate’s evidence of several ways in which toothpaste can be sold that allows the purchaser to see the toothpaste in the tube, it is not impossible to “use” the design in accordance with the Trade-marks Act.

4. there was no evidence of another party using the same stripe design for toothpaste. Therefore, there was no evidence that the stripe design could not distinguish Colgate’s toothpaste.

Second Life: the blurred line between intellectual property and virtual property

Written by Dreyfus22/07/2010

Second Life is a website in which Internet users pay, with real money, to meet virtual people, do virtual activities, and buy virtual property. Tens of millions of dollars have been spent on the website, demonstrating the possibility of making money from online communities.

Some of the website’s users have brought a class action suit against Second Life, claiming that they were misled about their ownership of virtual property. The plaintiffs’ Second Life accounts were terminated, depriving them of access to their virtual property. They are also claiming that their virtual property was devalued because Second Life now allows anyone to create land on the site.

Second Life asserts that users own the copyright of the content they create on the site and that they own virtual property.

However, when a user becomes an “owner” of virtual property by buying it from the site or another user, it seems they are paying for a license. This may or may not incorporate an intellectual property license. For example, the design may not be sufficiently original in order for it to be copyrighted.

Another situation is that users may be paying for something that has nothing to do with a copyright, e.g. buying a house next to a virtual celebrity’s house, which might cost more than an identical house in another location. The user is not buying something that is protected by copyright.

If Second Life terminates an account, they are not taking the user’s copyright in the content he created. They simply stop using a license the user has granted.

The court now must decide whether Second Life has been misleading users into thinking they are buying intellectual property protected by a copyright.

Can an employer fire or not hire based on social media comments?

Written by Dreyfus15/07/2010

Can employers fire or not hire someone based on comments posted on Facebook, Twitter or other online social networks? There is no simple answer.

The issue could wind up in court, resulting in lengthy and expensive legal proceedings, and damage to both parties’ reputations.

Conducting Internet searches on current or prospective employees can give rise to claims of discrimination and harassment, and that the employer’s decision was based on unlawful criteria.

Even if the company can articulate legitimate reasons for its decision, there is always a chance that the jury will believe that the results of the Internet search were the employer’s true motivation.

For example, a North Carolina school district was sued after it terminated one of its employees, the latter claiming his position as a “role model” in “the school community” was damaged. The district countered that the “damage” was caused by the plaintiff’s MySpace page, where he revealed himself as a follower of the Wiccan religion and his wife as a bisexual.

Other cases have been brought based on gender, racial, and religious discrimination.

These cases make it clear that employer review of employee social media comments can open the door to litigation. Even meritless arguments must be investigated, which takes significant time and expense. Employers may be better off if they avoid employee social media pages.

Dreyfus