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The EU Parliament has just approved the European Patent, whose not so nice technical name is “the EU patent package”. This package is composed of three parts, the unitary patent, the language regime and the unified patent court.

The new patent will automatically be valid in all 25 EU member states taking part (Spain and Italy are currently outside the new regime, but could decide to join in at any time). The EU patent taxes will costs precisely €4,725 when the new system is up to speed, compared to the average of €36,000 needed today for the same protection. Consequently, the new regime will offer a more effective protection for a lower price.

The application will have to be filed in English, German or French before the European Patent Organisation. If filed in another language, a translation into one of these three languages will be required. The translation costs will be fully refunded for EU-based small and medium-sized companies, non-profit organizations, universities and public research organizations.

Each part of the package should come into effect on January 1^st, 2014.

On October 26, 2012, ICANN’s President, Fadi Chehadé, said that he has continued to negotiate the contracts with IBM and Deloitte, the companies responsible for the technical implementation of the Trademark Clearinghouse. Additional terms will be added to the contracts. One of them will specify that ICANN will retain “all intellectual property rights in the Trademark Clearinghouse data”.

This clause is interesting. In Europe, the producer of a database who is making a substantial investment has a sui generis right by law[1] conferring prerogative on the content of the database. Structural elements of the database are also protected by copyright.

This is not the case in the US, where the database protection is ensured by contract, even if copyright could be invoked if the database presents a creative input in its presentation or its arrangement. However, the US Courts are reluctant to apply copyright without proof of real originality.

Therefore, ICANN will protect itself against any extraction or reuse of the Trademark Clearinghouse data.

In this way, ICANN is improving the situation, as no entity will be able to acquire rights on the Trademark Clearinghouse data.

The 12th edition of the French Legal Awards took place in Paris on November 29, 2012 to reward the best lawfirms.

The Dreyfus Lawfirm has been awarded in the Intellectual Property field and obtained the Silver Trophy.

Already singled out in 2011 as a « rising specialized team », the firm is recognized once again as a leader in the Intellectual Property field.

We kindly thank our clients since without their trust this award would not have been possible.

The Thai parliament has just very recently approved its government’s proposal for accession to the Madrid System.

The Madrid System, established by the Madrid Arrangement of 1891 and the Madrid Protocol of 1989, offers a Mark holder the possibility of obtaining protection for his Mark in several countries by making a single application for registration at a national office (such as INPI in France) or a regional one (such as OHMI). This system enables a significant reduction in the costs incurred by multiple applications for national Mark registration. The Protocol also simplifies the administration of Marks by enabling a change or a renewal of registration following the same procedure.

Thailand, South Asia’s second largest economy, is thereby progressively aligning itself with international practice. The aim is to stimulate the country’s economic expansion by enhancing its attractiveness in the eyes of Mark holders.

However, for Thailand’s accession to become a reality, its Parliament would still need to make changes to existing legislation concerning Marks. These amendments, already drawn up by the Thailand’s Mark Office, should be approved within the next six months. Thailand’s accession to the Madrid System is scheduled for 2015.

1-Draw

The draw is presented by ICANN as a equitable and reliable method to determine the order priority for Application process.

ICANN divulged details about the draw. ICANN obtained a licence to hold a lottery in California.

As planned, Applicants can purchase the tickets directly or name a prox to purchase them for them. Tickets will be for sale from December 12 to the morning of December 17th at the Hilton LAX in Los Angeles.

The new gTLD draw will take place on December 17, 2012, in afternoon. It will take place at the Hilton LAX as well and will be open to the public. Applicants do not have to be personnaly present for the draw.

2 –Initial evaluation

Evaluation results to be excepted in August 2013 and Background screening results will be published at the same time as Initial Evaluation Results. First initial evaluation results will be released in priority order starting March 23, 2013.

3 –Withdraw of Application

Still regarding new gTLD’s, six Application withdrawals have been withdrawn (AND, ARE, EST, CHATR, CIALIS and KSB) ad seven additional withdrawals are in progress.

The TLD Application System (TAS) will reopen on November 26th 2012 and Applicants will have to reset their passwords.

On September 10^th, the Director General of the World Intellectual Property Organization announced the deposit by the New Zealand government of its accession to the Protocol relating to the Madrid Agreement concerning the International Registration of Marks.

The Madrid System, established by the Madrid Arrangement of 1891 and the Madrid Protocol of 1989, offers a Mark holder the possibility of obtaining protection for his Mark in several countries by making a single application for registration at a national office (such as INPI in France) or a regional one (such as OHMI). This system enables a significant reduction in the costs incurred by multiple applications for national Mark registration.

In a further development, the time limit to exercise the right to notify a refusal of protection was extended from one year to eighteen months, as is the case in the United Kingdom. However, the island of Tokelau, although an integral part of New Zealand’s territory, was not included in the agreement. Only by consultation, made compulsory by the constitutional status of the island and the commitment of the Government of New Zealand to the development of self-government for Tokelau, could such accession be agreed.

The Madrid Protocol will enter into force, with respect to New Zealand, on December 10^th, 2012. From that moment on, New Zealand will be available for an International trademark’s filling.

Nominet is the registry responsible for the <.co.uk> domains and operates also a dispute resolution service. On a general level, as the allocation of the domain names has always been offered under the “first come, first served” approach, it can raise conflicts. When someone estimates that a domain name registration has been made in violation of his rights (like a trademark), he can envisage two different paths. Either he can go to court, following the normal process of a lawsuit, or he can file a complaint with Nominet, which provides its own extrajudicial procedure for domain name disputes.

This extra-judicial dispute procedure is set out in a document called “Dispute Resolution Service Policy” (DRS). After the filling of the complaint, parties have to pass through a mediation phase, which, in some cases, ends up, on a settlement. If the mediation fails, an Expert rules on whether there has been abusive registration of the domain name.

The decision of the Expert can be appealed with Nominet, which then appoint an appeal panel of three members from a group called the “Expert Review Group”. The Experts will only state on the abusive nature of the registration as for the first hearing of the case.

Airline operator Emirates has used the Nominet process described before to challenge the registration of the domain name <emirates.co.uk> on the basis of his trademark’s right.

The first Expert decided domain name’s registration was legitimate and Complainant appealed the case directly before Nominet. The panel of Experts reversed the decision and ordered the transfer of the domain name in dispute.

An appeal was then lodge before the High Court of Appeal.

The Judge explained that the DRS policy do not authorize the addition of parallel court proceedings on the point.

Indeed, if that were to happen, then any DRS procedures that were subsequently started would be immediately suspended under paragraph 20 of the procedure[1]. Therefore, “Complainant would be deprived, for the time being, of the proceedings which the DRS held him out”.

Furthermore, the High Court’s judge added that the Nominet procedure was “much more consistent with the conclusion that the question (of abusive registration) is one for the Expert alone”. The abusive registration of a domain name can only be held before Nominet.

The claim was therefore stroked out.

The accuracy of this decision has to be noted. The High Court of Justice made a strict interpretation of the DRS policy in order to protect the Nominet dispute procedure and explained precisely how the addition of a parallel route would have threaten the extrajudicial procedure.

Therefore, there could be no re-hearing of a second degree extrajudicial decision of Nominet. Furthermore, in the light of High Court decision, we might think that there should be no re-hearing of a first degree decision too. Indeed, Judge said the question of abusive registration was for the expert alone and consequently not for a Judge, even regarding a non-appealed decision.

Furthermore, it seems that UK Judges are not bound by a Nominet decision. Indeed, the deny of a “parallel route” highlight the independence between the two procedures. Consequently, it would be illogical to bind a Judge by an Expert decision. Moreover, the possibility of a new judgement, independent from an extrajudicial decision has already been set out for the UDRP by the United States District court in May 10, 2001[2].

The independence of the two procedures keeps them safe one from another. Indeed, the Expert and the Judge do not rule the same way since the Expert could only decide on the abusive registration of the domain name. If a re-hearing of a Nominet decision had been authorized before the Judge, this later would have decided in the light of the abusive registration too. Consequently, this could have created an interference with other law like trademarks. For example, a trademark infringement is independent from any king of abusive behaviour from the infringer. Authorizing a re-hearing would have introduced a new unforeseen kind of exception.

The current French alternative procedure for domain names is called Syreli and is managed by the AFNIC. This dispute resolution system was set up following the decision of the French Supreme Court of October 6, 2010 and has been available since November 21, 2011.

The particularity concerning Syreli is that the AFNIC is also the registry for the <.fr>.

Therefore, the AFNIC can rule against the registration or the renewal of any domain name in <.fr> and is also in charge of the dispute resolution system.

That is a unique role as both a decision-maker and a judge for the AFNIC. This accumulation of advantages seems to be opposed to the right to a fair trial provided by Article 6§1 of the European Convention on Human Rights (ECHR).

The ECHR requires an “impartial tribunal” and the Court has its own tribunal definition which is very broad[1]. Consequently, there should be no reason for the Court not to qualify the AFNIC as a tribunal.

The Court divided the impartial requirement into two components, objective and subjective impartiality and in the Syreli procedure, the objective impartiality deserves some attention.

The Court defines objective impartiality as “whether the judge offered guarantees sufficient to exclude any legitimate doubt in this respect”[2].

The Syreli procedure states that the court is to be composed of three members: the CEO of the AFNIC and two named members of the AFNIC.

Therefore, there is no interdiction for AFNIC, which has already ruled on the registration or the renewal of a domain name, to take part in a dispute resolution procedure about the same domain name!

Consequently, the composition of this Court seems to infringe on the impartiality requirement of Article 6§1 of the EHCR.

Thankfully, in a convention between the French government and the AFNIC[3], the latter agreed to set up in September 2013 a new dispute resolution procedure placed under the WIPO authority.

[3] http://www.afnic.fr/medias/documents/convention-etat-afnic-fr.pdf

Two new States have just joined the Madrid Union, which increase to 87 the total number of contracting parts to the Madrid system.

The accession of Colombia to the Madrid Protocol took place on 29^th May 2012 and enters into effect on 29^th August 2012. This way, right holders will be able to protect their marks on the territory through an international mark designating Colombia. A posterior designation is also feasible, even if the international mark is anterior to the accession of Colombia. The deadline to notify a provisional protection refusal is extended to 18 months and the notification of a provisional refusal based on an objection could intervene after the expiration of the 18-month deadline.

The Philippines have filed their instrument of accession to the Protocol to WIPO on 25^th April 2013, making this effective on 25^th July 2012. Contrary to Colombia, an international trademark registered before the accession of the Philippines to the Protocol will not be subject to an extension with respect to them. This way, only the international trademarks registered after the 25^th July 2012 may designate the Philippines. Like Colombia, the deadline to notify a provisional refusal of protection is from now of 18 months.

The accession of Colombia could mark a major turning point in the History of the international trademark. Indeed, Colombia is the first country of Latin America to take part to the Madrid system. It is likely that other countries from South America follow this trend, like Mexico, whose Senate has recently adopt a law authorizing a future accession to Madrid Union. Discussions are ongoing in the Intellectual Property Office of New Zealand (IPONZ) for a possible accession.

From the creation of the Madrid Protocol in 1989, the number of contracting parts to the Madrid system is rising steadily, facilitating the international trademark protection of right holders. These recent accessions show again the interest for the Madrid system and the vitality of the international trademark.

It would be a pity not to benefit from it!

Concomitantly to the launch of the .eu on the 7^th of December 2005, license contracts blossomed here and there with non-European companies in order to register .eu domain names during the so-called “Sunrise Period”, especially between US companies and European law firms. The juridical set-up is as follows: a USA company willing to reach the European market through a .eu but which did not have any link with the European Community such as headquarters or a principal place of business, had license contracts signed with a trademark attorney located within the Community. The license enabled the trademark attorney to register a .eu domain name on his own name but on the behalf of the trademark holder which did not fulfill the requirements set-up by the article 4, §2b Regulation (EC) n°733/2002 of the European Parliament and of the Council of 22 April 2002[1]. These juridical set-ups emerged during the Sunrise period[2] before the .eu was made available for registration to the general public.

The underlying nature of these contracts appeared doubtful to a Belgian contact lenses company, which decided to raise a preliminary ruling before the CJEU. Through these schemes companies seem to circumvent the requirements laid down by the Regulation.

The Pie Optiek Case

The Belgian company Pie Optiek runs a business of contact lenses and glasses that are sold through an online service. Its core business is done through the website www.lensworld.be. The latter was willing to register a .eu domain name during the Sunrise Period, which started to run from the 7^th of December 2005 for a four months period. The said company applied for a Benelux trademark on the sign “Lensworld” before applying for the domain name lensworld.eu. EURid denied the registration of the domain name because Bureau Gevers had already registered it. With the prior registration made by Bureau Gevers the question of the essence of trademark license comes via the backdoor. Another US company, namely Walsh Optical, signed a license agreement with Bureau Gevers. As the US company did not have its headquarters in Belgium, it uses the juridical set-up described above. As a result, Bureau Gevers registered the domain name lensworld.eu before the Belgian company. The question was whether Bureau Gevers can be deemed as a “holder of prior rights” in the light of the EC regulation n°874/2004? Pie Optiek sought relief before the Belgium Courts, its claim was twofold:

– Pie Optiek wanted to obtain acknowledgement that the registration was speculative and abusive and;

– to obtain the transfer of the disputed domain name lensworld.eu.

The advocate general, Mrs Trstenjak in her conclusions released on the 3^rd of May, dwells on the necessity to have an establishment within the Community in order to qualify as a registrant for a .eu.

The preliminary ruling which was raised before the CJEU was whether the aforementioned juridical set-up can be deemed as a genuine license contract. Needless to say, the decision of the CJEU was awaited by companies who had entered into these legal arrangements. The arrangement proved to be a genuine threat to non-European companies as the CJEU followed the conclusion of the Advocate General in its decision on July 19, 2012. The CJEU insisted on the utmost importance of having a tie with the EU to qualify as a “holder of prior rights”. The artificial nature of the juridical set-up contravenes the spirit of the Regulation. To quote the CJEU:

” it would be contrary to the objectives of Regulations No 733/2002 and No 874/2004 for a holder of prior right to whom that right is available in its entirety but who does not satisfy the test of presence in the European Union to be allowed to obtain for his own benefit a .eu domain name through a person who satisfies that presence test but to whom that right is not-even partly or temporarily- available”.

This decision could have a domino effect on .eu registrations that were done through this juridical set-up. It highlights that the establishment of a company within the EU is of utmost importance in EU law.