The 31st session of the WIPO Standing Committee on Trademarks, Industrial designs and Geographical Indications was held in Geneva between March, 17 and 21 2014. WIPO reviewed the Draft Recommendation proposal on the protection of country names, prepared by Jamaica delegate in December 2013.
This proposal has been ongoing pending since 2009, however to date the attempts to broaden the scope of article 6ter of the Paris Convention [for the Protection of Industrial Property] have proven unsuccessful. This article outlines the prohibitions regarding the use as a trademark of State emblems, official signs and hallmarks of intergovernmental organisations. The Standing Committee has noted that “the protection that currently exists internationally for country names is inconsistent internationally. Therefore there is need for internationally consistent protection for country names.”
Trademark protection may be useful for a country in international trade and in export markets for specific goods and services. This should protect States from misleading trademarks using the name of their country.
If the country name is used as a trademark, the government will become the brand owner and will be responsible for all that it entails (acquisition, maintenance and enforcement of rights). In practice, this also means that the government must have competent lawyers to manage the brand both domestically and abroad.
The US has submitted various questions to the Committee, including with respect to States that may decline to manage their trademark. South Africa also expressed its reservations with regards to the draft recommendation.
Following the sex.com case, the Court of Appeal for the Ninth Circuit considered that the domain name was subject to property rights – the debate on the legal nature of the domain name appeared closed. Still, the Federal Court in Virginia brought its contribution.
It concerns a judicial winding-up proceedings. The Court held that the domain name is only a contractual right and as such, it does not have separate existence from the provider which renders the Internet address accessible. Consequently, according to the decision of the Federal Court of Virginia, a domain name cannot be sold by a liquidator to pay the debt of a company. The Court followed the decision rendered in various precedents. In the case of Network Solutions dated April 21, 2000, it had already been found that “a domain name is not a personal property”.
In France, the property right over a domain name in .com has been long established. A judgement of the Commercial Court of Marseille ruled that the registrant was “the proprietor of the domain names for having registered them prior to the creation of the company” from which it was claiming to cease the use of the names.
If the debate is intense in the United States, the issue seems already settled in France, which appears to be logical. Indeed, the domain name is an intangible asset in the commerce, which its holder has owned by registering it. Hence, nothing is against the application of Article 544 of the Civil Code to domain names.
Nonetheless, the status of the domain names is flickering because it is not textually defined. The judgement of the Federal Court of Virginia perfectly illustrates it. A clear definition of the nature of the domain name is necessary to bring security and stability to the registrants.
Dreyfus & associés can help you manage your domain names disputes. Please feel free to contact us for any information.
The Twitter account @JamesDean is at the heart of a legal battle which has just begun. Launched in 2009 by an anonymous fan, it gathers the biography, quotations and photos of the actor who deceased more than 60 years ago.
The licensing agency CMG Worldwide requested Twitter to take down the account in issue. To support its request, CMG argued that the account user is infringing the mark James Dean and that it violates its “right of publicity”. The licensing company obtained a categorical refusal from the social network. Indeed, Twitter considered that the simple use of a pseudonym does not constitute an infringement of trademark rights because messages sent by some 8,000 followers did not have any commercial character.
Consequently, the company GMG Worldwide went before the courts and has sued the social network for trademark infringement. The request relies on the ground that by allowing a user to infringe the mark JAMES DEAN, Twitter is itself a counterfeiter.
However, it shall be an uphill battle for CMG. The protection granted to trademarks does not extend to all use of names. Furthermore, the general conditions of use are clear. Twitter does not prevent the creation of an account under a fake name be it the name of a celebrity. The only limits to this freedom are infringement to public order and to intellectual property rights.
Six months after the release of the first gTLD and 82 Sunrise periods later, almost as many new gTLDs remain available or are expected to become available over the next few months. These include Starting Dot, the registry operator for .ARCHI, the .BIO and the .SKI.
Usage of .ARCHI will be limited to qualified architects, members of an organisation or a national association which is itself a member of the International Union of Architects (UIA), which represents approximately 1.3 million architects. Sunrise opened on 8 April 2014 and will close on 8 June 2014.
As for the .BIO gTLD, it will obviously be dedicated first and foremost to the organic farming sector. However, it could equally attract the life and natural sciences sectors and biography.
Finally, the new gTLD .SKI targets ski professionals and will be a good reference to facilitate access to resources for those who practice this sport.
We remind you that a Trademark registered in the Trademark Clearinghouse along with the corresponding SMD file is required to register a domain name during a Sunrise period.
On 13 March 2014, a new law (Nr 2014-315) came into force to strengthen the fight against counterfeiting. This law aims at providing tougher penalties for counterfeiters and clarifies certain provisions of the French Intellectual Property Code (Code de la Propriété Intellectuelle).
What are the main changes introduced by this law?
The right of information procedure has been simplified. A request for information may now be raised before any judgment on the merits for counterfeiting, including before the Judge in charge of interim proceedings (juge des référés). The list of documents and information that may be requested has been removed. Hence judges are now free to determine the scope of their investigatory measures.
When allocating damages, the court must separately take into consideration:
– “negative economic consequences (…) including profits and losses incurred”;
– “non-pecuniary loss”; and
– “profits earned by the infringer, including savings on intellectual, material and advertising investments”.
The legislation sought tougher and more accurate penalties by demanding a clear distinction between the different levels of harm. Applicants must now show the harm suffered and may no longer seek compensation without justification.
The statute of limitation to initiate counterfeiting proceedings has been extended to five years for all Intellectual Property actions. Previously, copyright infringement actions were subject to a 5 year limitation and patents and trademarks actions to a 3 year limitation. This extension ensures better protection and takes into consideration the interests of right owners.
Custom officers have been granted additional rights; they can now deal with counterfeiting of designations and geographical indications as well as goods in transit.
Infringement seizure proceedings have been harmonized for all intellectual property rights. The court may order any legally admissible investigatory measure, even without an infringement seizure. Further, a new Article (art L332-2 Intellectual Property Code (Code de la Propriété Intellectuelle, CPI)) has created an offence in case of non-compliance with the deadline to initiate proceedings after the performance of a seizure in copyright infringement.
The law adopted on 11 March 2014 awards new privileges to right owners in the fight against counterfeiting. One must now hope for a strict and efficient implementation of the new provisions of the French Intellectual Property Code (Code de la Propriété Intellectuelle).
The independent objector (IO) has known a severe setback in the conflict against the company Amazon on the delegation of the extension <.amazon>.
Having been appointed by ICANN to represent the interest of the online community as regard to the delegation of new extensions, the IO could take charge of questions concerning public interest and the community’s objections when none objected to the application.
In the present case, the IO argued for a “substantial opposition” of the Amazonian communities against the claims of the company Amazon on the delegation of <.amazon> as well as its equivalents in Japanese and Chinese characters.
The Internet giant defended itself by highlighting the lack of proof as regard to the existence of this “substantial opposition” and the damages which could be caused by the Amazonian communities in case of <.amazon> delegation. Furthermore, as outlined by the expert Lucas G. Radicati di Brozolo, the community does not seem to have suffered from the use of the domain name <amazon.com>.
If this ground is sufficient for the Expert to reject the objection then he has analysed the independence of the objector in an incidental manner in accordance with the request of Amazon.
The famous online marketplace highlighted that there is a conflict of interest arising from the close ties between the IO and the government representing the Amazonian communities (Brazil and Peru) whereas he can act only on behalf of Internet users. Thus, his objection would only aim at formalising the objection of the governments. Alain Pellet denied the charges by affirming that the link simply results from a “normal average social life”.
This vision of the “social life” won’t be shared by the expert of the ICC. Based on objective criteria, he asserts that the ties between the IO and the two major representatives of the Amazonian communities lead to justifiable doubts as to his independence. As far as the importance of ensuring neutrality, independence and impartiality of the IO’s office and of the overall process of dispute resolution for gTLDs are concerned the objection of the claimant company on the IO’s independence must be welcomed. What image will ICANN and the candidates to the contracts of delegation of new extensions will project with a non-independent Independent Objector?
This debate is not new… The issue of the independence of the IO has in vain been raised against the IO’s opposition on the delegation of <.patagonia>. The counsel of the applicant company had not only highlighted the ties of Alain Pellet with Argentina and Chilli which have constantly designated him as arbitrator in different international litigations but also with his team of counsel at the ICC. The representation of the Argentine Republic by Mr Daniel Müller in the case Certain Pulp Mills on the River Urugay in 2006-2010 or the representation of the Chilean Republic by Mr Samuel Wordsworth concerning a maritime dispute with Peru were thus exposed. Finally, the presence of Héloïse Bajer-Pellet who is presumably the daughter or daughter-in-law of the Professor Pellet in the board also gives rise to concerns regarding the notion of independence as interpreted by IO.
It is neither necessary to call down anathema on the IO nor challenge his goodwill. However, one can blame some sort of regrettable clumsiness.
There is a need to consolidate the IO’s practices in the realisation of its mission in order to reassure the applicants of new gTLDs domain names on the seriousness of delegation operations as regards to their investment of time and money.
The delegation of <.amazon> generates a lot of discussion: the Governmental Advisory Committee (GAC) has advised the Executive Committee of ICANN to withdraw this extension. This victory undoubtedly constitutes a major asset for Amazon to convince of the contrary!
On February 6th, the Court of Justice of the European Union (CJEU) ruled on the application of the Customs Regulation to seizure of counterfeiting products bought online.
To allow seizure, the Regulation requires that these goods ought to be distributed to the public and in the course of trade. In this case, a Danish court has referred a preliminary ruling to CJEU. The application of the aforementioned Regulation to products bought online by an individual was at stake. And the Danish court underlined that this scenario resembled importation for personal purposes rather than trade.
In a terse decision, the Court of Justice deliberated that “the holder of an intellectual property right over goods sold to a person residing in the territory of a Member State through an online website in a non-member country enjoys the protection afforded to that holder by that regulation at the time where goods entered the territory of that Member State”. The Court therefore considered the criteria set up by the Regulation to be redundant.
The Court further concluded that “it is not necessary […] for the goods at issue to have been subject, prior to the sale, of an offer for sale or advertising targeting consumers of that State”. In accordance with its established jurisprudence, Philips case (Case C-446/09 Philips and Nokia, December 1st, 2011), the CJEU casted aside the criteria of focalization on the activities of the website.
Overall, this ruling leads to a necessarily larger application of the Regulation, which should apply to all goods entering the European territory.
By voiding the criteria of the Customs Regulation, the Court of Justice would be ultra vires. Regarding preliminary rulings, its role is limited to the interpretation of the European legislations. However, the position of the Court is understandable since the protection granted to holders of intellectual property rights is essential. In a globalized economy, the protection of innovations by European companies must be a priority.
The .CEO gTLD has been open for registration since 28 March 2014. This is a highly sought after gTLD as it enables corporate executives to protect their identity on the Internet.
We strongly recommend registering the names of your leaders as a pre-emptive measure. Leader names are seldom registered as trademarks, meaning that UDRP and URS protection mechanisms are usually ineffective.
Our firm remains at your disposal for any further queries and to assist you in relation to pre-emptive registration.
The Trademark Clearinghouse (TMCH) is a mechanism allowing trademark owners to introduce data about their trademark in a centralised database before and during the launch of the new domain names gTLDs. As such, it notifies the trademark owners as soon as an identical domain name bearing the new gTLD is registered by a third party. Besides, it allows them to benefit from a priority right on the registration of their domain names during the Sunrise Period.
The notifications have been sent from February 3, which is the date where “.شبكة” gTLD meaning “.web” has become active. Since the launch of the new gTLD programme by ICANN, around 180 000 domain names have been registered. Nevertheless, the TMCH has sent around 17 500 notifications to the trademark owners, amounting to 10% of the registered domain names in the new gTLDs!
According to Jan Corstens, the TMCH’s project director, with numerous users “seeking to get their hands on new domain names at the earliest opportunity”, trademark owners who are not yet registered to the TMCH take a significant risk.
In the upcoming years, numerous gTLDs will come to life. “For brands and businesses to take full advantage of the array of new opportunities these launches will provide, they must take action now” added Corstens.
But the TMCH is not without flaws. Firstly, because it does not prevent third parties from registering domain names reproducing the trademarks. Secondly, because it detects solely domain names reproducing the trademark identically, without taking into account typosquatting cases.
In spite of these limitations, the Trademark Clearinghouse functions properly and reveals to be effective as shown by the 17 500 notifications sent in short notice to trademark owners.
Dreyfus law firm is a TMCH accredited agent and can help you to resolve your domain names disputes and to consolidate your presence on Internet. Feel free to contact us for any information.
It is a record year at all levels for French customs services. The figures published on March 12, 2014 by the administration are significantly increasing as compared to 2012.
Customs have seized 7.6 million counterfeiting products during the year 2013, whereas in 2012 only 4.6 million products were seized, amounting to 65% increase. The podium of the most seized counterfeiting products comprises of medicines (18%), clothes (14%) and “personal accessories” (6%). At the end of the pack, there are informatics-based products like CDs, DVD and software (1%) or computer and electronic equipment (1,3%).
The 2013 report also lists major events of the year for customs services. Hence, in May more than one million counterfeiting packets of aspirin have been seized and in December, e-customs arrested a drug seller using the deep web.
Henceforth, according to the report, France ranks second among the countries implementing protection of Intellectual Property and the country is ranked 12th in the field of logistics and customs.
The French Union of Manufacturers (UniFab) has issued a press release upon the publication of the report by the authorities. It welcomed the results of the customs and thanked the customs services for their faultless involvement in the protection of consumers. UniFab indicated that while it had publicly expressed its concern in 2011, this news restores a burst of enthusiasm in the struggle against counterfeiting.
The custom reports and UniFab finally invoke the development of traffics by Internet channels and call for consumers’ vigilance.
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Written by Dreyfus17/04/2014 
The 31st session of the WIPO Standing Committee on Trademarks, Industrial designs and Geographical Indications was held in Geneva between March, 17 and 21 2014. WIPO reviewed the Draft Recommendation proposal on the protection of country names, prepared by Jamaica delegate in December 2013.
