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Formed at the end of the 19th Century, WIPO is a specialized institution within the United Nations. Its official remit is to stimulate creativity and economic development by promoting an international system of intellectual property, notably by facilitating cooperation between member States. Its Head Office is located in Geneva, Switzerland.

The institution is founded on two historical conventions:

• The Paris Convention of March 20 1883 (industrial property)
• The Bern Convention of September 9 1886 (literary and artistic property).

In 1994 an Arbitration and Mediation Center was set up within WIPO to facilitate the extra-judicial (or alternative) resolution of litigation concerning intellectual property rights. Designated as an official ruling body by ICANN, WIPO is much in demand regarding questions of domain names.

Sources: domainesinfo.fr et wikipedia

The .ME Registry (1), operator of the .ME extension, have released five exclusive premium domain names TLDs: Around.ME, Hire.ME, Fund.ME and For.ME.

The .ME Registry offers the possibility to companies to apply for operating these domain names.

Applicants are judged on the quality of the services they provide, their references and their business plan. There is therefore a selection based on the projects and their contents.

The purpose of this initial selection is to sell these 5 domain names to companies providing goods and services of quality.

In order for this application to become effective, applications must be filed before June 15 2013.

For any further information about this application program, you may contact us and we will guide you through the procedure.

                                                                          
(1) The d.b.a of DoMEn, d.o.o was chosen by the government of Montenegro to operate in the new .ME domain name TLDs.

Mali, the Central African Republic and Nigeria are relaxing their registration requirements regarding first level extensions, designated respectively by .ML, .CF and .NG. The decision was taken during ICANN’s last meeting in Beijing in April 2013.

Previously, the registration of extensions .ML, .CF and .NG .required local presence, without which only the second level extensions .COM.ML, .COM.CF and .COM.NG were available. Today, the extensions .ML, .CF and .NG are accessible to any company, wherever its head office may be.

The Nigerian “.NG” became available on April 16 2013. There was no priority ‘Sunrise’ period for mark holders. The registration of domain names is granted on a ‘first come, first served’ basis.

For Mali and the Central African Republic, the opening date for extensions .ML and .CF was May 1st 2013. The opening of the priority Sunrise period for mark holders, without a requirement for local presence will end on May 31st 2013. This will be followed by the ‘Landrush’ period for all domain names that must be purchased from June 1St to July 14th 2013, after which there will be general availability from July 15th onwards.

The critical period for mark holders will begin on July 15 2013 since the registrar has announced that he will issue the majority of his domain names at no cost, again following the principle of ‘first come, first served’. However, the applicant will not become the owner of the domain name since the registrar reserves the right to unilaterally remove the domain name and accessibility to it by, for example, adding advertising. Obtaining a free domain name is therefore of little interest to firms.

The risks associated with these new registration conditions are very real, especially concerning fraudulent registrations and cybersquatting, as for instance:

• Domain names under the extension “.ML” can be reserved and renewed at no cost;
• No procedures to regulate conflicts such as UDRPs have yet been established.

Our advice: consider making defensive registrations in the light of each individual offer. We are here to advise you.

Founder of Dreyfus, Nathalie Dreyfus is a specialist in Intellectual Property Law as well as a French and European Trademark Attorney.

Graduate of the Centre for international Intellectual Property Studies (CEIPI), Nathalie will assist you in the field of trademarks, designs, copyright, patents, software, contracts, domain names litigation, e-commerce, unfair competition, new technologies, licenses as well as the protection, valorization and defense of your existing rights.

She is a renowned Expert consultant to the Court of Appeal of Paris, as well as to the WIPO Arbitration and Mediation Center and the National Arbitration Forum (NAF). She advises and assists in the protection and enhancement of your Intellectual Property Rights, both in the material and cyber worlds, including dispute resolution, anti-counterfeiting, transfer of technology and UDRP procedures.

She gathered around her a team of skilled, experienced and passionate experts and collaborates with specialists in the field of patents to assist you in all issues related to the protection and enhancement of your intellectual property rights.

As adjunct professor at the Robert Schuman Faculty of Strasbourg, and also the French National School for the Judiciar, Nathalie Dreyfus gives numerous lectures in France and abroad. She has published four books and is a regular contributor to the professional legal press.  She also contributes to a blog on current legal issues concerning trademarks, patents, copyright, the Internet and new technologies.

The Office for Harmonization in the Internal Market (OHIM) is the official trade marks and designs office of the European Union. The Office register the Community trade mark (CTM) and registered Community design (RCD), which are essential components of the European single market.

These registrations provide trade mark and design protection throughout the European Union, which covers 27 countries and almost 500m people.

The Office also works in close partnership with national IP offices in the EU member states, with international offices, and the European Commission on a wide range of issues affecting the owners and users of intellectual property rights.

Source : http://oami.europa.eu

The digital economy is distinct from other sectors due to its immaterial and international nature which renders ineffective classical taxation models. Currently, the Organization for Economic Cooperation and Development (OECD) grants the right to tax profits to the country in which the company has its head office rather than that in which it performs its business activities. It is therefore easy for companies to transfer their profits to tax havens where they set up their head office whilst carrying out their activities in places where they are not taxable.

A report published on 18 January 2013 [1] suggests redefining the notion of “permanent establishment” in order to facilitate the taxation of companies in the digital economy, including by countries in which the firm is not physically based. Recognizing the essential role of the exploitation of personal data in the digital economy, the report suggests introducing a tax on the collection and exploitation of this data by companies. This approach would allow firms to be taxed whether based in France or elsewhere provided that they were using the personal data of French users.

This proposition is particularly aimed at firms who undertake a regular and systematic appraisal of their users’ activities. It is justified as a reasonable contribution to be made by firms towards public expenditure based on the fact that the personal data they exploit is obtained freely thanks to public outlay which gives users access to the network.

Taxing companies in the digital market is recurring theme and various propositions such as the “Google Tax” have already been made without being implemented. Now a tax criterion is being proposed which aims to promote both a control mechanism for the exploitation of personal data and a means to safeguard innovation. This would be achieved by a new R&D tax which would favor the creation of new companies.

The idea is innovative and merits further consideration. The challenge is to find a fair tax threshold!

This tax on personal data is initially proposed at a national level, but its effectiveness also requires international consensus, and in particular the support of the members of the OECD. France was due to broach this proposition during the last G20 summit but the next steps and the reactions of the member States are still awaited.

[1] « Mission d’expertise sur la fiscalité de l’économie numérique » “Research on a tax system for the digital economy”, Pierre Collin and Nicolas Colin, Report to the French Finance Minister, the Minister for tax recovery, the Chancellor’s budget representative and the Department for small and medium-sized companies, innovation and the digital economy. P1.

http://www.redressement-productif.gouv.fr/files/rapport-fiscalite-du-numerique_2013.pdf

As you know, over 1400 new generic top-level domains (gTLDs) should become available on the Internet during the second half of the year. More than half will be open to domain name registrations.

A tool is dedicated to the protection of your rights: the Trademark Clearinghouse (TMCH). We remind you that this centralized database of registered trademarks allows you, once your trademarks are registered, to benefit from the priority registration period – the Sunrise Period – and to be notified when a third party registers a domain name identical or similar (under certain conditions) to your marks – Trademark Claims Service.

The use of the TMCH involves legal and technical careful choices, particularly:

–          Identifying trademarks to protect.

–          Determining the opportunity of benefiting from the Sunrise Period services, which involves that the trademarks proof of use (necessary condition) has to be furnished when you are interested by a specific new gTLD.

–          Determining how long the protection would be the most appropriate to your digital strategy?

–          Determining which cybersquatted versions to choose?

The Dreyfus lawfirm is a Trademark Clearinghouse official agent. To meet your expectations, we can assist you for the implementation of your trademark protection strategy in the TMCH using our method in 3 steps:

• studying the trademarks to protect;
• a direct trademarks recording service in the TMCH to benefit from the Sunrise Period and the Trademark Claims Service advantages (available at the end of April). This will allow you to take full advantage of the TMCH as from the first launch of a new gTLD, starting the second half of the year;
• our dedicated and secure tool Dreyfus IPweb® in order to manage efficiently your trademarks registered in the TMCH.

We are at your disposal for any further information.

Open since March 26, it is time to use the TMCH wisely!

On April 8th 2013, the Indian Minister for Commerce and Industry, Mr. Anand Sharma, lodged a formal request with the World Intellectual Property Organization (WIPO) General Director, for India to join the Madrid Protocol for the international registration of marks. Thus, it takes the total of member states to 90.

For India, member of the G20, the second most populous country in the world and a great emerging superpower, this accession “will provide an opportunity for Indian companies, which are increasing their global footprint, to register trademarks in member countries of the Protocol through a single application, while also allowing foreign companies a similar dispensation”.

Indian’s membership will take effect as from July 8^th 2013 and its designation by international mark will thereafter be possible. It will also be possible to designate India by a subsequent extension of an existing international mark.

In 2012 the Philippines, Colombia and New Zealand had already joined the system of the international mark, followed by Mexico whose accession took effect on February 19^th 2013.

The Madrid System, regulated by two treaties, the Madrid Arrangement (1891) and the Madrid Protocol (1989), enables the mark holders to protect their marks in several countries by making a single demand for registration at their national office (such as the INPI in France) or their regional one (such as the OHMI at Community level). Administrated by the WIPO international bureau, this system has several advantages: registration in a single language and savings both at the initial and renewal stages.

The objection procedure period closed on March 13, 2013. Beforehand, it was possible to file an objection against alleged disputed gTLD strings, based on the following grounds:

–          the Legal Rights Objection that requires to first prove the said rights in order to protect its trademark rights;

–          the String Confusion Objection, for a likelihood of confusion between the disputed gTLD string and an existing TLD or another gTLD string application;

–          the Limited Public Interest Objection against a gTLD string that “is contrary to generally accepted legal norms of morality and public order that are recognized under principles of international law”;

–          the Community objection: the community invoked by the objector must be strongly associated to the disputed gTLD string; and

–          the Independent Objector, Alain Pellet, can file an objection if no objection has been filed against a gTLD string application, on the basis of the limited public interest and the Community Interest.

After an administrative checking of each objection by the arbitration centers, the one duly filed are processed and then gradually published on their website.

We are currently in that objection publication period. Presently, all of the objections have not been released yet.

On April 12, ICANN will publish all the submitted objections. Thus, each applicant targeted by one or more objections will be formally notified by the arbitration center. Then, the applicants will have a period of 30 days from the electronic notice transmission to submit their response. The failure or delay of response will be considered as a withdrawal: the objector will succeed.

After a further period of 30 days, the arbitration center will appoint an expert who will have 45 days to resolve the dispute (except procedural issue).

Depending on the decision of the expert, the application will be withdrawn or the process will continue.

To be continued …

In a previous article² we highlighted the decision made by the Appeal Court in Paris³ in which Cobrason’s claims were upheld against Google and the ‘Solution’ company for unfair competition and misleading advertising. This stemmed from the appearance of an advertizing link directing Internet users to the latter’s website when searches using the key word “ Cobrason” were made in the context of an Adwords campaign.

This verdict did not appear to us to reflect the position of the CJUE⁴ and we questioned its wider impact. The response to this question has just been given by the Court of Cassation which, in its judgment of 29 January 2013, overturns and invalidates the aforementioned Appeal decision.

The High Court criticizes the Appeal Court for having accepted that the ‘Solution’ company had committed acts of unfair competition “without identifying elements that could lead to a risk of confusion between the Internet sites of the two companies whereas the canvassing of other client bases is legitimate if unfair methods are not proven”. The Court further criticized the judges for finding the Solution company responsible for misleading advertizing, commenting that they had determined “with improper motives to label an advertisement as false or as designed to mislead based on one or several of the element listed in article L.121-1 of the Consumer Code”.

This confirms the position adopted by the Court of Cassation in its decision of 25 September 2012 in which it indicated that once advertisements are clearly separated from normal search results and provided that they are sufficiently clear, they will naturally enable the average Internet user to realize that the products or services targeted are not being offered by the right holder. The use of a trademark or social label as a key word by a competitor in the context of a campaign by Adwords is therefore not illegal.

A few days later, the High Court of Australia⁵ also ruled that Google could not be the author of adverts displayed by its search engine since the average user understands that this advertising comes from third parties and is in no way adopted or validated by Google.

The Court of Cassation also corrected the Appeal judges on the question of Google’s liability. In effect, in its first findings, it censured the Appeal Court decision due to its lack of response to Google’s conclusions which were based on the regime of limited responsibility of hosts   according to article 6.1.2 of the LCEN. In so doing the Court of Cassation confirmed the position it had adopted in its three verdicts of 13 July 2010 in which it had found Google not responsible for acts of counterfeit based on the same article.

This decision serves as a firm reminder addressed to the Appeal judges that again outlines the necessary requirements before liability can be proven against advertisers using the Google Adwords advertizing system. Moreover, by deciding that if Google’s responsibility can be examined but may only be upheld in limited cases where the latter’s activity does not comply with the conditions necessary to benefit from the limited responsibility outlined in article 6 of the LCEN, the High Court is confirming that it’s the responsibility of advertisers that should be the primary focus.

¹ Cass. Com., 29 janvier 2013, Solution / Google, Cobrasons

² http://blog.dreyfus.fr/2011/06/systeme-publicitaire-google-adwords-la-cour-d%E2%80%99appel-de-paris1-rend-une-decision-non-conforme-a-la-jurisprudence-communautaire/

³ Paris Appeal Court 11 May 2011, Google France et Inc., Home Cine Solutions / Cobrason

⁴ CJUE, 23 March 2010 cases C-236/08, C-237/08 and C-238/08: in which the European Court indicated that in order to benefit from the regime of limited responsibility, the host’s activity must be by definition “purely technical, automatic and passive”.

⁵ High Court of Australia, 6 February 2013, Google Inc v Australian Competition and Consumer Commission [2013] HCA 1, 6 February 2013, S175/2012.