As of May 24, 2021, the Madrid Systemwill officially welcome its 108th member: the Islamic Republic of Pakistan.
On February 24, 2021, Pakistan deposited its instrument of accession to the Madrid System with the Director General of the World Intellectual Property Office (WIPO). The arrival of this new member brings the number of countries covered by the Madrid System to 124, and highlights the importance of this international system for the filing and registration of Trademarks.
The Madrid System provides a practical and cost-effective solution for the registration and management of trademarks worldwide. More than 1.5 million international trademarks have been registered since its creation in 1891. While the system has been in place for more than 125 years, three quarters of its member countries have joined it in the last three decades. After the recent accessions of Canada, Samoa, Thailand, and the Sultanate of Brunei, it is now up to Pakistan to join the protocol.
Pakistan’s adhesion to the Madrid Protocol enables the harmonization of Pakistani trademark law at the international level. With the filing of a single international Trademark application, Pakistani applicants now have the possibility to apply for protection in 124 countries. Likewise, Pakistan can be designated by applications from any state party to the Madrid system and international Trademark owners can easily extend their protection in the Pakistani market.
The international trademark system is a major asset for the registration of your trademarks abroad at a lower cost.
Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Please feel free to contact us.
Consumers are now demanding more privacy and security in t he processing of their personal data.
What are the challenges for the data controller?
There are several challenges for the data controll
er – i.e. the legal or natural person who determines the purposes and means of a processing operation – to overcome at different scales:
– information management: reducing the data collected by establishing a precise commercial context, and reducing the risks by taking care of the contracts;
– communication with suppliers: being able to find solutions and evaluate each other;
– monitoring of data processing: setting up mechanisms for reporting data breaches or threats concerning suppliers (for example, if Easyjet has had a data breach, the data controller, operating in the same business sector as the airline, if notified, can redirect its decisions.
What are the risk management methods?
A more effective risk management includes precise identification of suppliers, prior audits when integrating new suppliers, automation of evaluation and control processes, and risk prevention to protect data.
What about cookies?
They are used to collect data. Their presence is materialized by the banners you find on websites that ask for your consent to collect certain data.
In summary, there are 3 types of cookies:
– cookies strictly necessary for the operation of the site;
– cookies intended to improve the performance and functionality of the site;
– advertising cookies (which will soon disappear, Firefox has already put an end to them, and Google has announced that Chrome will no longer use them in 2021).
How do I collect online consent?
Remember that in France, consent must be free, specific, informed and unambiguous (GDPR).
Nevertheless, in order to collect consent, the user must understand what he is consenting to. He must receive clear information (purpose and duration of the use of cookies, list of third parties with whom the information is shared etc…) and the data controller must be particularly attentive to the layout of his banner.
What should be the role of the DPO (Data Protection Officer) in a modern company?
If the company promotes ethics, innovation, data, then the DPO has a key role: they shed light on data collection, and bring their vision on risks from an individual’s point of view.
In the past, their role was purely administrative, but today it is different, the DPO accompanies the company on a permanent basis, but they cannot guarantee compliance on their own: they have to expand a web within the organization (with the digital or marketing departments in particular) in order to promote the essential principles.
What changes are taking place within companies, in terms of GDPR awareness?
When GDPR came into force, programs were launc
hed to raise awareness of it, , and it was necessary to mobilize the entities and ensure they had good skills (setting up e-learning internally, for example).
Despite the existing similarities in legislation, what differences persist and what are the challenges that companies have to face in this respect?
There are technical differences (in terms of data retention time, each country has its obligations) and very important cultural differences, the way in which people in different countries deal with these subjects depends on their history. Consequently, it is difficult to find “golden rules” (= harmonized rules).
How can organizations benefit from their compliance efforts?
One way to recognize that companies have done their job properly is through certifications, such as HDS certification.
On April 23rd 2019, the Russian Supreme Court adopted Resolution No. 10/2019, which clarified the provisions of Part 4 of the Russian Civil Code relating to intellectual property rights, and therefore to domain names, which are the subject of this article.
Among the clarifications provided, the Russian Supreme Court decided in particular that the commercial courts had jurisdiction to rule on disputes relating to distinctive signs (with the exception of appellations of origin, however), whether the party concerned is an individual person, a private entrepreneur or a company. Previously, the commercial courts and the general courts had jurisdiction based on the identity of the holders of intellectual property rights.
Furthermore, it is increasingly difficult to obtain information on the identity of Russian domain name registrants.
Indeed, although it is possible to make a request to registrars to disclose the identity of domain name registrants, obtaining this information has become increasingly complicated without legal action since many registrars refuse to disclose this information by taking refuge behind applicable legislation or requesting additional documents.
Resolution No. 10/2019 specifies that this information may be obtained through a court by filing a request for disclosure of personal data in legal proceedings. However, this is complicated when the identity of the domain name registrants is unknown. One solution would be to take legal action against registrars and then file a request for disclosure of personal data. It would be then possible to substitute the defendant.
In addition, with regard to infringement of a trademark by registration and use of a domain name, the Russian Supreme Court ruled that trademark infringement is characterized by the use of a domain name for goods and services similar to those designated by the trademark in question, and in some cases still, by registering the domain name only. Consideration should be given to the purpose behind registering the domain name to judge whether there is trademark infringement.
Finally, the Russian Supreme Court provides various additional clarifications. For example, a monetary claim may be filed against the current user of a domain name. In addition, it is possible to request provisional measures in respect of domain names. Finally, in cases concerning domain names, evidence consisting of printed screenshots of websites clearly showing i) the address of the websites in question, ii) the time at which the screenshots were taken and iii) whether they have been verified by the parties to the proceedings is admissible.
These clarifications are welcome. We will keep you informed of any further developments in this regard. Dreyfus is a specialist in domain name protection and defense strategy and can find solutions adapted to your needs. Do not hesitate to contact us.
The WHOIS protocol now appears to be outdated due to the evolution of technical requirements in the digital era. Indeed, this tool, provided by registrars, is inter alia not capable of working with either encoding or with non-latin characters. Consequently, since 2015, ICANN in collaboration with the Internet Engineering Task Force (IEFT) has been working on the replacement of WHOIS through the RDAP (Registration Data Access Protocol), in compliance with the Temporary Specifications and the GDPR.
Like WHOIS, the RDAP provides registration data, although its implementation is different since it allows standardization, security data access and enquire response formats. As a result, it will be possible to search all the registration data available from various registrars, unlike WHOIS that is limited to the database being searched. It also takes into account the internationalisation of domain names.
The possibility of granting different accesses to the registration data is being considered. For instance, access for anonymous users could be limited whereas authenticated users could have full access to all data.
While some elements still have to be worked out, registrars are required to implement the RDAP service prior to August 26, 2019.
Cyber-attacks are on the rise, and they are becoming more sophisticated. Our current business model is globally interconnected; commercial transactions and even social life transcend national borders. Consequently, our vulnerability to cyber-attacks has been increased, however, the competences of the cyber security and police authorities, as well as political responses, are predominantly national.
This situation has made European authorities aware of the need to deal with these threats in an effective and coordinated way, relying their actions on policies dealing specifically with cybersecurity within the European Union. By means, the aim is thus to improve cooperation, exchange of information and coordination between the Member States and the institutions, bodies, offices and agencies of the Union.
The European Commission, as part of the Digital Single Market Strategy, has approved Regulation No. (EU) 2019/881, on ENISA (the European Union Agency for Cybersecurity) and on certification of information and communications technology cybersecurity, which came into force on June 27, 2019.
This new regulation has two main objectives. On the one hand, to give ENISA (the European Agency for Cybersecurity, now named the European Union Agency for Cybersecurity) a greater role in the field of cybersecurity, establishing a series of objectives and tasks. On the other hand, the creation of a common certification framework at European level, with the aim of guaranteeing an adequate level of cybersecurity of ICT products, services and processes in the EU, avoiding the fragmentation of the internal market.
Concerning the first objective, the first substantive point of the Regulation is to give more powers to the European Union Agency for Cybersecurity (ENISA). It will now have a permanent mandate facilitating the exercise of the new functions assumed, one of which is to increase cooperation on cybersecurity within the Union, for example in cases of large-scale cyberattacks or cross-border crises. This strengthening is also reflected in the economic resources for ENISA, increasing from 11 to 23 million euros over a period of five years.
It is noteworthy that European regulation focuses on users by addressing concepts such as users’ awareness, and the application of good practices online. Both public bodies and private stakeholders will receive recommendations on safe configurations and maintenance of their devices, and the availability and duration of updates, as well as the perceived risks.
With regard to the second objective, the regulation creates a framework for European Cybersecurity Certificates for products, processes and services that will be valid throughout the EU. It is the first EU legislation on the internal market to take up the challenge of enhancing the security of connected products, Internet of Things devices and critical infrastructure through such certificates.
The creation of the cybersecurity certification framework incorporates security features in the early stages of their technical design and development (security by design). It also enables their users to ascertain the level of security assurance, and ensures that these security features are independently verified.
As to the second objective of the regulation, the certification framework will provide EU-wide certification schemes as a comprehensive set of rules, technical requirements, standards and procedures. This will be based on agreement at EU level for the evaluation of the security properties of a specific ICT-based product or service, for instance, smart cards. This will certify that ICT products and services which have been certified in accordance with such a scheme comply with specified requirements. In particular, each European scheme should specify: a) the categories of products and services covered, b) the cybersecurity requirements, for example by reference to standards or technical specifications, c) the type of evaluation such as self-assessment or third party evaluation, and d) the intended level of assurance for instance, basic, substantial and/or high.
ENISA’s mandate is immediate from the entry into force of the Regulation, whereas the cybersecurity certification framework will have to be developed. In this respect, the Commission’s agenda has already included the submission of proposals to ENISA for the preparation of certification projects, as well as the creation of expert groups on cybersecurity.
Finally, this European regulation not only seeks to increase users’ confidence in the use of connected devices, but also to strengthen the European cybersecurity industry and the European Single Market, positioning it as a global benchmark, in line with other markets such as the United States or China.
With significant expertise in protecting innovative products and designs, and in defending intellectual property rights on the Internet, Dreyfus is well positioned to assist you in enhancing your assets on the web.
In this respect, a great deal has been written by the Directive 2019/790 (EU), adopted on 26 March 2019 by the European Parliament. Among its 30 articles, we count in particular the establishment of a related right for press publishers (Article 15) and an obligation for platforms to control hosted content (Article 17). These provisions have been fiercely debated, and have led to multiple lobbying campaigns by authors and performers, newspaper publishers, and web giants (Google, Facebook and YouTube). In the present article, we will examine the changes made by the Directive.
New exceptions to copyright
There are currently many exceptions to copyright. In that respect, the Directive introduces three new exceptions to author rights and related rights in the digital environment. These exceptions and limitations are:
– Text and data mining for the purpose of scientific research when carried out by research organisations and cultural heritage institutions. However, rightholders are allowed to put in place technical measures aimed at ensuring the security and integrity of the networks and databases where their works are hosted. They may also expressly reserve their rights “in an appropriate manner”, for instance by machine-readable means, such as a digital watermark (Articles 3 and 4);
– The use of works in digital learning activitiesincluding distance learning. States may, however, provide a fair compensation for rightholders (Article 5);
– The copying by cultural institutions, for conservation purposes, of works which are part of their permanent collections (Article 6).
Under both French law and the Directive, these exceptions must be strictly interpreted and require that the work has been lawfullypublished.. All the conditions required by law must be met in order to benefit from these exceptions without having to obtain the author’s prior consent..
Furthermore, these new dispositions do not modify existing limitations and exceptions, such as parody or short quotation, which areretained (Article 17 (7) of the Directive). However, Member States will now have to specify that reproductions of visual works of art in the public domain cannot be protected by copyright unless the reproduction itself is original enough to be protected (Article 14). In France, this clarification is a mere application of copyright: a work in the public domain is no longer protected by author rights. Consequently, it can be freely reproduced without authorization. By contrast, if the production is original, it becomes a work on its own right and, as such, can be protected.
Licenses: out-of-commerce works, audiovisual video-on-demand works and collective management
The article 8 of the Directive authorizes collective management organisations to conclude non-exclusive licenses for non-commercial purposes with cultural heritage institutions for exploiting (reproducing, distributing, etc.) out-of-commerce work which are in their permanent collections.
According to Article 8 (5) of the Directive, a work is out-of-commerce: “(…) when it can be presumed in good faith that the whole work or other subject matter is not available to the public through customary channels of commerce, after a reasonable effort has been made to determine whether it is available to the public.”
Such licenses do not require prior mandate from the rightholder, but the collective management organization must be sufficiently representative of rightholders. The owner may, however, exclude at any time his works from this licensing mechanism, whether this exclusion is general or specific. In addition, the moral right to authorship of the work must be respected by indicating the author’s name, “unless this turns out to be impossible” (Article 8(2)).
Therefore, there is a switch from a prior authorization regime to an implied consent regime, and this will require greater vigilance on the part of authors and rightholders.
Article 12 of the Directive provides that States may authorize collective management organizations to extend collective licenses to rightholders who have not authorized the organization to represent them.
Here again, the organization must be sufficiently representative of rightholders, and they in turn may exclude their works at any time from this licensing mechanism.
Furthermore, article 13 of the Directive provides for a negotiation mechanism in which “an impartial body or of mediators” will be in charge, in order to assist in the conclusion of licensing agreements “making available audiovisual works on video-on-demand services”.
The related right of press publishers
Article 15 of the Directive creates a related right for newspaper publishers established in a Member State. They can now be remunerated for use of their content by information service providers, in particular news aggregators. This right is subject to strict conditions of application and does not apply to :
– Private and non-commercial uses;
– Hyperlinks;
– Use of isolated words or very short extracts of a press publication;
– Works published for the first time before the Directive’s entry into force.
Moreover, this right is onlygranted for two years from January 1st of the year following the date on which that press publication is published.
This related right is a right of its own, and thus publishers no longer have to demonstrate they indeed own the economic rights transferred to them by the author of the work.
Part of the remuneration paid by service providers to newspaper publishers must be paid to the authors. However, the Directive does not specify how this payment must be carried out. In addition, authors can exploit their works independently of press publication.
Online content-sharing service are fully responsible (Article 17)
liable if they “promptly” remove the content at stake.
Platforms will now be liable if they communicate to the public without authorization works protected by copyright. However, they will be exemptfrom liability if they have:
– “Made best efforts to obtain an authorization” from rightholders;
– “Made best efforts” to ensure the unavailability of the work and
– Acted “expeditiously” to disable access to the work or remove it from their websites after receiving a « sufficiently substantiated notice” of the rightholders.
Compliance with these requirements will be examined with regard to the type, audience, and size of the service, as well as the type of works downloaded. Article 17 (8) specifies that platforms are not subject to any general monitoring obligation, but its paragraph 4 (b) requires that they provide their “best efforts”, “in accordance with high industry standards of professional diligence”, to ensure the unavailability of protected works, which seems to be a sneaky way to require automatic content filtering.
Platforms that have been in service for less than three years, and which have an annual turnover of less than €10 million, will benefit from a less restrictive liability regime, as they will only have to make their best efforts to obtain an authorization and will have to act promptly upon receipt of a “sufficiently substantiated notice” from a right holder.
Furthermore, all platforms will be required to put in place an “effective and expeditious complaint and redress mechanism” so that users can challenge blocking or removal of a work posted online. States must also provide for alternative dispute resolution procedures.
Finally, it should be noted that authors and performers will now have to be remunerated in an “appropriate and proportionate” manner (Article 18). They must receive, at least once a year, information on the exploitation of their works (transparency obligation provided for in article 19). Contracts which are already concluded should be adapted to provide for an “additional, appropriate and fair remuneration” (article 20). Article 22 of the Directive also gives authors a right to revoke a license or a transfer of rights. These measures already exist in French law, but the Directive will harmonize European law.
On 20 June 2011 at the Singapore conference, Icann’s Board of Directors voted at a large majority in favour of the launch of the new gTLDs. After heated exchanges between government representatives the day before, and in spite of persistent disagreements, the Board decided to move forward and approve the current Applicant Guidebook. The Board nevertheless indicated that modifications would be made in the forthcoming weeks and months.
The principal stumbling blocks related to the protection of trade marks during the Sunrise periods and to concerns raised by the competition authorities in the EU and the US in relation to the separation of the duties of the Registry (organisation in charge of the management of the extensions) and of the Registrar (company in charge of selling the domain names). The measures contested are the following:
– Obligation to provide proof for marks to be protected during the Sunrise periods (TLD launch period) and under the Uniform Rapid Suspension System (the URS), an expedited procedure for resolving disputes in clear-cut cases of cyber-squatting. It should be noted that all registered trade marks may be recorded in the Trademark Clearinghouse, without it being necessary to provide proof of use;
– End of vertical integation (separation of registry and registrar functions), whereby one company will be able to propose both services under certain conditions.
New gTLDs: the dates to be retained
12 January 2012: launch of the application submission period
12 April 2012: end of the application submission period
End of April 2012: publication of applications
November 2012: publication of the first results of the initial evaluations
What strategies should brand owners adopt?
The programme is now launched and it is necessary for trade mark owners to take a position quickly on the possibility of applying for an extension such as .brand or .company.
Indeed, the application submission period commences in less than 7 months and will only last 3 months.
The decision making processes and work involved in preparing the applications will necessarily take time. It is therefore advisable for brand owners to start examining the opportunity of applying for such an extension straightaway.
What about the future?
Icann has specified that the next cycle of applications will only be launched once the majority of applications from the first cycle have been processed and the stability of the DNS has been verified to ensure that it is not compromised by the new extensions granted. Depending on the number of applications submitted during the first cycle (expected to total between several hundreds to several thousands), it is probable that the next cycle will not be launched for several years.
On 31 March 2011, Icann and ICM Registry entered into a registry agreement in relation to the top level domain (TLD) .xxx, putting an end to a saga which has lasted several years. Initially accepted by Icann in 2004, at the same time as a number of other TLDs, Icann went back on its position further to pressure by the US government and rejected the application made by ICM Registry. After several years of negotiations and against the opinion of a number of countries, Icann finally accepted the creation of a domain for the adult entertainment industry.
What are the applicable rules? What public is the .xxx TLD intended for?
The .xxx TLD falls within the category of sponsored TLDs (sTLD), i.e. domain names intended for a specific community. The novelty of sTLDs is that the relevant registries verifies that prospective registrants belong to the given community. Such sTLDs also include .aero, .asia, .cat, .coop, .edu, .gov, .int, .jobs, .mil, .mobi, .museum, .tel, .travel.
As the sTLD .xxx is contested for moral reasons, a new form of organisation has been put in place to manage this TLD. ICM Registry has been designated as registry operator and its role is to ensure the proper technical management of the extension. Furthermore, the International Foundation for Online Responsibility (IFFOR), a non-profit making organisation, has been appointed with a specific mandate of ensuring, in particular, that the rules on the organisation of the Registry are complied with, including the registration rules. IFFOR is financed directly by a tax on registrations and renewals of.xxx domain names.
The rules governing the registration of .xxx TLDs are set out in the registry agreement entered into with Icann. These rules specify that the registration of domain names in a .xxx TLD is limited to members of the sponsored community, i.e. individuals or entities which provide online sexually orientated adult entertainment, their representatives, and providers of goods or services to entities or individuals in this industry. The definition of adult entertainment is rather vague, but the range of individuals and entities entitled to register a name as a .xxx TLD will be relatively broad. It should however be noted that individuals or companies not operating in, or related to, this sector of activity will not be authorised to register names as .xxx TLDs.
These rules can only be amended by renegotiating the Registry Agreement with Icann.
What are the rules for the registration of a .xxx extension?
The rules for the registration and use of .xxx domain names are subject to a strict framework. They include the following requirements:
– verification that the prospective registrant is eligible to register a. xxx domain name;
– the identity of all prospective registrants must be authenticated;
– all registrants must label their sites using an IFFOR approved label; and
– all registrants must consent to the monitoring of their sites.
The registrants of .xxx domains must undertake:
– not to publish any child pornography;
– not to infringe third party rights (including trade marks or first names and last names);
– not to engage in any malicious conduct; and
– to comply with IFFOR’s Best Practices Guidelines.
Although anonymous registrations will be authorised, this can only be done by pre-approved proxy service providers and once the identity of the registrant has been verified. If the whois data is incorrect this can lead to the cancellation of the domain name. In case of repeated violaions, the registrant can be disqualified from maintaining existing or registering future .xxx domain names.
Details on the sunrise period
The launch of the.xxx domain name will commence by a double sunrise period of 30 days. This sunrise period is intended to allow members of the adult entertainment industry, which have already registered domain names in other extensions (for example, .com, or .net) to secure their domain names in the .xxx TLD (sunrise A) and to allow intellectual property right owners which do not consider themselves to be part of the pornographic community to block the registration of their earlier rights as .xxx domain names (sunrise B). Registration will then be made available to other members of the adult entertainment industry.
Sunrise period A will allow domain name holders in the adult entertainment industry to register their domain names as .xxx TLDs. In case of dispute between several registrants for an identical name, the allocation of the name will be made on the basis of a closed auction between the registrants.
Sunrise period B is intended to allow right holders to declare their trade marks in order to block the registration of such trade marks as .xxx domain names. If a prospective registrant tries to register a domain name reproducing a trade mark recorded with ICM Registry, both the registrant and the right holder will receive a notification. The right holder will then been provided with the opportunity to file so-called STOP proceedings (Start Up Trademark Opposition Proceeding) before ICM Registry, allowing it to notify the registrant of its rights. The registrant will nevertheless be able to continue the registration procedure and will be allocated the domain name if it satisfies the conditions for the registration of a .xxx domain name.
These defensive registrations will be available to trade mark holders. In support of such applications, it will be necessary to provide copies of the registration certificates for the trade marks. ICM Registry may also request other documents as decided on a case by case basis upon examination of the applications.
Even prior to the sunrise period, trade mark owners, which are not members of the adult entertainment industry can already start preparing for the introduction of the .xxx extension by pre-blocking their trade marks with ICM Registry.
Such pre-blocking consists of submitting a term corresponding to a trade mark, a first name or surname or a domain name registered in another extension to ICM Registry to request the “pre-ordering” of this term. This pre-order can be made directly by the right holder or by its representative.
The blocking of domain names further to such “pre-orders” is not automatic. ICM Registry has a full discretion to accept or refuse such pre-orders. No fees are payable for pre-reservations.
If the pre-order is accepted by ICM Registry, this does not mean that the term has been blocked. However, if the pre-order is accepted, the right holder will receive prior notice from ICM Registry of all official deadlines and of the availability of the trade mark requested, in other words if other pre-orders for the registration of the trade mark in question as a .xxx extension have been received. The notification issued by the Registry should also include further information on the supporting documents to provided in order to secure the blocking of the trade mark during the sunrise B period.
What rules have been put into place for dispute resolution?
Three dispute resolution procedures have been put into place:
– the UDRP procedure will apply to active registrations made by right holders in the adult entertainment industry;
– a specific procedure, the CEDRP, will apply to blocking registration (which are by their very nature not used) for right holders which are not members of the adult entertainment industry. The implementing rules for this procedure have not yet been determined; and
– an expedited cancellation procedure (48 hours) for domain names which are obvious examples of cybersquatting (for example, registration of well-known trade marks as domain a domain name where it is quite clear that the registrant was not acting in good faith).
What policy should right holders adopt?
Extensive communication campaigns have been launched by several registrars aimed at inciting trade mark holders to register their rights during the sunrise B period. However, these campaigns which appear to verge on domain slamming should be taken with precaution and it is necessary for right holders to be aware of the limits of the measures made available to them in view of the forthcoming launch of the .xxx domain name:
– blocking registrations are not yet available, and only pre-reservations are currently possible;
– the registration of a trade mark will not enable the holder to block a disputed domain name, but will trigger a procedure pursuant to which the registrant is notified of this trade mark; and
– right holders in the adult entertainment industry will have priority over other right holders.
In these conditions, it is advisable for right holders to conduct a benefit-cost analysis of applying for a blocking registration during this sunrise B period. Indeed, this option would appear to be comparable to an improved watch services for trade marks among .xxx domain names. In this respect, the means of defence remain similar to those applicable to other extensions.
We would be delighted to assist you in putting in place a strategy for protecting your trade marks in anticipation of the launch of the .xxx extension. The watch services proposed by our firm will be extended to .xxx TLDs.
As from 01 July 2011, it will be possible for trade mark owners to file oppositions in Italy. Such oppositions will be available against Italian trade mark applications filed as of 01 May 2011 and International Registrations designating Italy, published in the WIPO Gazette as of July 2011. Oppositions will be filed with and handled by the Italian Patent and Trade Mark Office (the UIBM).
Such opposition proceedings can only be brought by certain earlier right holders, including owners of earlier registered or filed trade marks having effect in Italy, which are:
– either identical to the trade mark application opposed and designate identical goods and services; or
– identical or similar to the trade mark application opposed and designate identical or similar goods and services provided that there is a likelihood of confusion on the part of the public.
The opposition must be filed within a period of 3 months as from the publication of the trade mark application. Once the opposition is held to be admissible, there is a two-month cooling off period, intended to allow parties to find an amicable settlement. This cooling off period can be extended at the request of both parties up to a year.
If the parties fail to come to an amicable solution, the adversarial stage commences and the parties are given the opportunity to exchange their arguments. The applicant is given the opportunity to ask the opposing party to provide proof of use, if its earlier trade mark has been registered for more than five years on the date of publication of the trade mark application.
The UIBM must hand down a decision within a period of 24 months as from the filing of the opposition, either rejecting the opposition or accepting it in part or in full. It will be possible to appeal the UIBM’s decision within a period of 60 days.
The winning party may be awarded costs in accordance with a fixed schedule.
The introduction of opposition proceedings in Italy allows trade mark owners to deal with infringing trade mark applications on a cost efficient and relatively quick basis.
Trade mark owners are therefore well advised to put into place watch services in Italy so as to be able to react and if necessary file an opposition within the opposition deadline.
Slamming is the coined expression for the deceptive practices used by certain unscrupulous individuals and entities to persuade businesses and in particular trade mark owners to purchase unsolicited services. This practice is not new and is particular common in the fields of telecommunications and IP.
In relation to trade marks, slamming often takes the form of a false request for payment of fees sent to registered trade mark owners. Such invoices are set out on what looks to be the headed note of an existing IP office, using logos and names which are confusingly similar. Another common practice is for the scammer to warn a trade mark owner that a one of its “clients” has just instructed it to file a similar or identical trade mark in their jurisdiction, with the aim of persuading the owner to file, often unnecessarily, their trade mark in this country.
A new scam has recently been identified in China. Chinese trade mark agents have been sending emails or faxes to trade mark owners warning them of the recent filing of an identical trade mark by a third party. They claim that it is possible to file a “prior” trade mark application in order to preempt this third party application.
Such a procedure does not, of course, exist in Chinese law and the only options available to the trade mark owner are to file an opposition within the three months following the publication of the application or to bring cancellation action upon registration of the mark.
If you receive such an invoice or warning, you should deal with it with utmost caution and we invite you to contact us.
A non-exhaustive list of unofficial requests of payment of fees which have been brought to the attention of WIPO is available at the following address: http://www.wipo.int/pct/en/warning/pct_warning.htm
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As of May 24, 2021, the Madrid System will officially welcome its 108th member: the Islamic Republic of Pakistan.
On April 23rd 2019, the 
The WHOIS protocol now appears to be outdated due to the evolution of technical requirements in the digital era. Indeed, this tool, provided by registrars, is inter alia not capable of working with either encoding or with non-latin characters. Consequently, since 2015, ICANN in collaboration with the Internet Engineering Task Force (IEFT) has been working on the replacement of WHOIS through the RDAP (Registration Data Access Protocol), in compliance with the Temporary Specifications and the GDPR.
Cyber-attacks are on the rise, and they are becoming more sophisticated. Our current business model is globally interconnected; commercial transactions and even social life transcend national borders. Consequently, our vulnerability to cyber-attacks has been increased, however, the competences of the cyber security and police authorities, as well as political responses, are predominantly national.
Protecting authors’ rights is a necessity in the digital age, as information flows more and more easily. That is why