Since its creation in 2004, Dreyfus & associes keep being referred in various professional guides. Once again, the office sees its practice focused on disputes and trademark online issues recognized by the professional circles. Nathalie Dreyfus, the founder of Dreyfus & associes, is notably considered as a “rising star” in the World’s Leading Trademark Professionals 2012: “she has a lot of experience and know-how, provides practical advice and delivers work very efficiently, which is exactly what we seek in our counsel.” Dreyfus & associes is proud of such recognition.
The applications for new gTLD’s are closed since the 29th of March. For those who were lured by the appeal of new extensions files must be submitted before the 12th of April. A few days before the fatidic date of the 29th of March, ICANN released that it registered 839 candidates, knowing that one candidate can apply for a bunch of extensions. The current estimations give a number ranging from 1000 to 1500 candidates for new gTLD’s.
Could the ICANN assess all the applications?
From the inception of the new gTLD’s, ICANN announced that it could not proceed to the assessment of more than 500 files at a time. In the event where the ICANN would be overcrowded with applications it has been foreseen to set up a batching system. An awaiting group will be evaluated provided the earlier group has been treated up to 80%. Strictly speaking, those who will not be in the first group will see their application postponed of one to two years. One can ask on which criterions the ranking of the group will be made?
The “digital archery” gaming
In order to prevent any favoritism, and in the extent that ICANN decided to rule out the first come first served principle, a gaming was set up in order to split up the candidates in different groups of assessment. The blueprint which has been adopted by the ICANN was unveiled at the last meeting of the institution in Costa Rica and faced harsh criticisms. ICANN launched a batching system in order to divide the applications in bunches if the applications reach the number of 500. It is rather likely that three different groups will be created. Candidates to the new gTLD’s are invited to go on a website where they will forecast the date and time at which they will apply for new gTLD’s. The second step consists in an e-mail of confirmation which will be sent to the candidate in order to confirm its expected date and time. On the due date, the candidate will go again to the aforementioned website and will submit its application at the nearer time he can. The system will issue a variance which calculates the difference between the expected time and date and the effective time and date at which the application was really submitted. As there is no such a thing as a negative variance, the fact to submit your application in advance will not grant you any bonus point, the system will consider that you apply at the time you forecast plus one second. Needless to say that, the better estimation, the better you will be ranked. Given the economic interests which underlie the fact to be assessed in the first group, companies will be gaming actively through this newly system.
This online mechanism has been coined under the expression of “digital archery”. Nonetheless, beyond the metaphor lie the disadvantages which come by the back door. Even some members of the ICANN Board did not extol the virtue of this system which is random and is not so alien to the system of “first come, first served” which was supposed to be ruled out. Strikingly, the ICANN decided to launch this system in order to avoid any liability for illegal lottery.
The underlying goal of the ICANN while launching the new gTLD’s extensions was to blow a wind of liberalization on the whole system of domain name to widen the available offer guarantying a certain geographic diversity. In order to avoid the hurdle of an overrepresentation of a geographic part of the world which will be detrimental to the spirit of the new gTLD’s system, ICANN decided to introduce in addition to the digital archery a proportional model. This pattern will ensure equity between the different countries of the world and will mirror geographic diversity in addition to the time/date variance described earlier.
Moreover, the ICANN introduce another possibility within its new system. For applicants which are not willing to benefit from an early treatment and which want to opt-out of the digital archery system they can do so on the very same online system. This opt-out possibility can be highly strategic for the applicants which want to postpone their applications if their direct competitor does not run for the new gTLD’s.
As the randomness of the system and the gaming it implies seems highly controversial, an informal commission has been set-up which compounds ICANN officials. This commission will try to cope with the loopholes of the system and will propose an alternative system to the digital archery. Auction has been proposed as a solution to solve the intricacies of the digital archery system.
On the 30th of April, ICANN will unveil the name of the candidates for new extensions. However, this date could be postponed if applications are far too important according to ICANN President and CEO (1).
Back on 1994, Dyson Ldt filed a U.K. registered design application over one of its line of vacuum cleaners. Leaning on that, the company brought an action to the British High Court of Justice (Chancery Division) claiming its registered design was infringed by Vax’s Mach Zen C-91 MZ vacuum cleaner. On the July 29, 2010, the Hon Mr. Justice Arnold dismissed the claim holding that Dyson’s DC02 model was not infringed by the Vax’s Mach Zen C-91 MZ[1].
Dyson appealed the High Court of Justice’s judgment.
Indeed, Dyson contended that their DC02 model was a major departure from previous art and consequently deserved a wide degree of protection. Nonetheless, the Court of Appeal considered that several technical reasons justified the design. Therefore, the Court concluded that the degree of design freedom was affected because each of the similarities between the two vacuums had technical significances.
Besides, it appears to the judges that the informed user looking at the two designs would notice the difference. According to previous case law[2], the informed user needs to be distinguished from the average consumer of the trademark law. Indeed, the informed user is a person who uses the product in which the design is incorporated and without being an expert, knows the various designs which exist in the sector concerned.
In this case, given this character’s relatively high degree of attention, the overall impression produced on the informed user by the registered design is “smooth, curving and elegant” whereas the overall impression produced by the other is “rugged, angular and industrial, even somewhat brutal”. In a similar way of the judgment provided by the High Court of Justice, the Court of Appeal found that the overall impressions produced on the informed user are different and consequently that the two designs were different.
Thus, Dyson design infringement claim has been dismissed by the Court of Appeal (Civil Division)[3]. The famous vacuum cleaner manufacturer should have taken more seriously the importance of the overall impression on the informed user.
[1] Dyson Ltd v. Vax Ltd [2010] EWHC 1923 (Pat) : “[94]Even on the basis that the Registered Design is entitled to a fairly broad scope of protection because of the differences between the Registered Design and the existing design corpus and because of the degree of freedom of the designer, in my judgment the overall impressions produced by the two designs are different”
[2] General Court of the European Union, Case T-153/08 Shenzhen Taiden v. Office for Harmonisation in the Internal Market [2010] ECR II-000 (paragraph [20])
It is a truism to say bluntly that Internet was a peculiar incentive to forum shopping issues. Given the international nature of the Internet, many forums may have jurisdiction over the very same dispute. However, such a view was framed and curtailed thanks to case law of Member States. In the wake of the Google AdWords saga, the opinion released by the advocate general is of high relevance. The opinion tackles a tricky question. When Private International Law issues blend with Google AdWords, the result cannot but be hazardous. Nonetheless, the advocate general rides out the intricacies of the case.
The plaintiff was an Austrian company which was the owner of the trademark WINTERSTEIGER registered both in Germany and in Austria for ski and snowboard service machines. Its main competitor, Products 4U, provided it with products for its service machines. Products 4U registered as a commercial link through Google.de the WINTERSTEIGER trademark. The commercial link was available through Google.de and was written in German. The advertisement encompasses the following terms: “ski workshop accessories”, “ski and snowboard tools,” maintenance and repair”. When Internet users click on the commercial link they were redirected towards the German Company’s website whose layout bears the title “Wintersteiger Accessories”.
The Austrian company launched a lawsuit before the Austrian Court. Notwithstanding, The Court of first instance averts that it does not have jurisdiction over the dispute on the ground that Google.de was targeting German web users only. Wintersteiger lodged an appeal and this time the Appeal Court availed itself to have jurisdiction over the matter. It is the language of the commercial link which triggers its jurisdiction as it was written in German, a language commonly spoken either in Germany and Austria. Nevertheless, the Appeal Court dismissed the case on the merits. Austrian judges contended that the commercial link does not imply that there is a commercial link between both parties. The Austrian ski and snowboard company went before the Supreme Court which decided to ask miscellaneous preliminary questions on the interpretation of the article 5(3) of the Brussels I Regulation to the European Court of Justice:
1.1 Does the Austrian Court have jurisdiction over the dispute to the extent that a trademark was registered as a commercial link through Google.de?
1.2 As the commercial link is available through Google.at, is this link sufficient enough to trigger the jurisdiction of the Austrian Court?
1.3 Is the jurisdiction of a Court triggered in the light of a combo of evidence and notably a combo of criteria which come in addition to the availability of the website on the territory of the Court?
The underpinning question was to know which Court can have jurisdiction when a tort is committed in another Member State while taking into account the sacrosanct territoriality principle which is at the cornerstone of trademark law.
The advocate general gave the following interpretation of the article 5(3) of the Brussels I Regulation:
-The Court which has jurisdiction may be those of the Member State where the trademark was registered. In this case, the WINTERSTEIGER trademark was registered in Austria since 1993 and also in Germany.
-The Court which has jurisdiction may also be the one where the necessary means were used to produce the tort to the registered trademark in another Member State. This interpretation may trigger the jurisdiction of German Courts in that case as the commercial link was registered under the umbrella of Google.de.
The European Court of Justice is on the verge to rule over the matter in the light of the advocate general’s opinion, which is consultative in nature but which is rarely disregarded. This decision is an additional case law to the pointillist Babel tower which is constituted by Google AdWords.
On the 8 of March 2011, the Max Planck Institute urged for the delineation of the concept of exploitation of a trademark in order to be qualified as being a well-known trademark. The concept of well-known trademark can have pretty narrow definition depending of the European country where you stand. The question has certain acuity as it is important to take into account the juridical environment of a case before launching a dispute in an alien juridical system. Some adjacent countries bordering the French hexagon developed a peculiar concept of the well-known trademark. It is juridical security which fuelled the creation of the principle of well-known trademark. If trademark rights do not exist ab initio but are obtained thanks to registration, in addition of the registration the well-known trademark must satisfy a myriad of criteria.
Swiss Law and law of the Liechtenstein protect heavily well-known trademarks, however there is no such thing as an article which states the criteria which must be fulfilled. The criteria are praetorian in nature. To give a glimpse of the strictness of these criteria one can tell that the trademark must have been intensively used in Switzerland thanks to an intensive commercial campaign. The plaintiff must enclosed relevant records evidencing its radiation on the said territory. Additionally, the plaintiff must prove that its trademark has a positive impact on citizens, which is highly difficult to demonstrate as one can imagine. Each and every trademark must go through crisis period, as a result it is as easy as a pie to find proofs showing the derogatory character of a trademark, it is more tricky to prove the converse.
We cannot but think at SMOBY which was not recognized as a well-known trademark under Swiss law. Notwithstanding a Swiss Court acknowledged the well-known character of the trademark VOGUE on the 31st of January 2012. As case law recognizing the well-known character of a trademark is scarce, this case law seems to be an oddity in the Swiss landscape. The Swiss Court was very prosaic in its rationale. It assessed the trademark regarding its “penetration in the collective awareness” and disregarded the number of subscribers to the magazine in Switzerland. Undoubtedly, it is superfluous to take into account the number of subscribers of a magazine in order to retain its well-known character. The luxurious market being drive by the principle “small is beautiful” the number of owners of an object does not imply that the trademark is well-known. The Swiss Court gave a telling example. As owners of cars bearing luxurious brands are scarce, it cannot be a proof of the well-known character of a trademark.
As far as extrajudicial proceedings are concerned, up to this day only four disputes have been tackled by the WIPO bearing on the “.li” extension and only eight on the “.ch” one.
Needless to say that launching an extrajudicial or judicial dispute in Switzerland or in Liechtenstein deserves an upstream research. It is sometimes better to abstain rather than spending heavy costs for a doubtful success.
The registration of trademark does not depend solely on its distinctiveness or the availability of the sign. A sign may also be refused where it is considered contrary to public policy, morality or, depending on the legal system, the public interest. The assessment of these grounds for refusal can be particularly complex where a trademark has political connotations or refers, directly or indirectly, to public figures. The “Volodya i Medvedi” case provides an interesting illustration: it shows that such an allusion is not, in itself, sufficient to justify a refusal and that the competent authority must carry out a concrete assessment of the sign, the goods and services concerned, the perception of the relevant public and the social context.
The “Volodya i Medvedi” case, a vodka trademark becomes a Russian political case
Facts
On December 18, 2009, Royalty applied to register the sign “Volodya i Medvedi” for alcoholic beverages, beer, fruit juices and sparkling water.
The expression may be translated as “Volodya and the Bears.” “Volodya” could be understood as a reference to Vladimir Putin, while “Medvedi,” derived from the Russian word for bear, could be associated with Dmitry Medvedev. The bear was also a symbol connected with the United Russia party.
At the filing date, Dmitry Medvedev was President of the Russian Federation and Vladimir Putin was Prime Minister. Rospatent therefore considered that the sign indirectly referred to the country’s two leading political figures.
On October 10, 2010, the Russian trademark office refused the application. It argued that using such a sign for beverages, particularly alcoholic beverages, could damage the image of the State and conflict with the public interest.
Royalty challenged the refusal before the Moscow Commercial Court. It submitted that “Volodya” was a common familiar form of the name Vladimir and that the expression could also refer to a fictional or folkloric story without necessarily identifying Vladimir Putin or Dmitry Medvedev.
Decision
The Moscow Commercial Court upheld Royalty’s claim and declared Rospatent’s refusal unlawful. That outcome was subsequently confirmed on appeal.
The courts found that Rospatent had failed to provide sufficient objective evidence that the mark would actually harm the public interest or the image of the State.
A sociological study submitted during the proceedings indicated that only a limited proportion of respondents both associated the sign with the relevant political figures and considered that its use for vodka could damage the State.
The court did not rule out the possibility of a political allusion. It nevertheless considered that the reference was indirect, ambiguous and insufficient, by itself, to establish a conflict with the public interest.
Following the judicial decisions, the application proceeded to registration as Russian trademark No. 461393 on May 11, 2012.
Significance
The principal significance of the case lies in the limits it places on Rospatent’s discretion. A trademark cannot be refused merely because it humorously, critically or indirectly evokes a political personality.
The trademark authority must establish that the sign, assessed as a whole and in relation to the relevant goods, genuinely conflicts with public interests, principles of humanity or morality.
The case also illustrates the evidential importance of public perception. A linguistic or symbolic connection identified by the trademark office is not sufficient where that connection is not clearly shared by the relevant public.
The ruling does not establish an unrestricted right to commercialise the name or image of a political leader. The direct reproduction of a name, portrait, pseudonym or official emblem may remain subject to separate prohibitions. It nevertheless confirms that a public-policy objection must be based on a contextual, substantiated and legally reasoned assessment.
Companies should assess politically sensitive trademarks
investigate translations, transliterations, nicknames and local double meanings;
review personality, image, privacy and publicity rights;
assess the trademark together with its packaging and intended advertising;
document the origin of the name and, where appropriate, obtain evidence of public perception.
International clearance must be conducted territory by territory. A politically suggestive sign accepted in one jurisdiction may be rejected elsewhere because public policy, morality and personality rights are interpreted through local legal and cultural standards.
How does this compare with French and EU trademark law?
European common-practice materials likewise favour a contextual assessment at the filing date, considering the sensitivity and tolerance of the relevant public. Mere bad taste is not necessarily enough. A refusal should be connected with identifiable fundamental values and supported, particularly in public-policy cases, by reliable and objective sources.
Conclusion
The “Volodya i Medvedi” case remains relevant because it illustrates the evidential limits of a trademark refusal based on an alleged political association. The registration of the trademark does not mean that any reference, even an indirect one, to political figures would necessarily be lawful. Rather, it reflects the fact that Rospatent had failed to demonstrate, in a sufficiently concrete and objective manner, that the use of the sign for the goods concerned was contrary to the public interest.
Dreyfus Law Firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.
Can freedom of expression be taken into account when examining a politically sensitive trademark?Yes. In European law in particular, freedom of expression may form part of the relevant legal context. However, it does not create an absolute right to registration and must be balanced against the rules allowing signs contrary to public policy or accepted principles of morality to be refused.
Can a political slogan be registered as a trademark?A political slogan is not, by its very nature, excluded from trademark protection. It must nevertheless satisfy the usual requirements for registration, including distinctiveness, and must not fall within an absolute ground for refusal such as public policy or morality.
Are official emblems or symbols subject to the same rules as references to political figures?No. Certain flags, coats of arms, State emblems and signs of international organisations are subject to specific rules of protection. Their reproduction in a trademark may therefore give rise to an objection independently of any broader assessment of the sign’s political or satirical nature.
Can a change in the political context after filing affect an already registered trademark?The assessment of grounds for refusal is, in principle, closely linked to the circumstances existing at the relevant filing or examination date. A subsequent change in the political context does not therefore automatically result in the loss of trademark rights. However, the manner in which the sign is actually used may raise separate legal issues.
Can a trademark office take current political events into account when assessing a sign?Yes. The interpretation of a political reference may depend on the context existing at the relevant time. Contemporary events, public perception, or the meaning acquired by certain words or symbols may therefore be taken into consideration, provided that the assessment is based on sufficiently objective evidence.
This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.
The Australian Senate gave its endorsement to the law introducing plain-packaging for cigarettes. Consequently, cigarettes packaging will no longer bears bright colors and logos. The trademark will be reproduced according to a particular typography on an olive green background, warnings pertaining to cigarettes consumptions risks will take the larger part of the packaging. Needless to say that the said law has been fiercely debated among scholars and economic actors. Plain-packaging will be introduced definitively on December 2012, but it is already at the cornerstone of several lawsuits initiated by the magna of the tobacco industry. The hatching of miscellaneous lawsuits on the Australian continent jeopardizes or at least postpones the implementation of similar laws in other countries which belong to the Commonwealth as well as the European Community.
We cannot but underline the action brought by Philip Morris against the legislation which claimed several billions of dollars of damages. Imperial Tobacco, Philip Morris and British American Tobacco portrayed said law as a plague which is highly detrimental to their businesses, that is the reason why they launch lawsuits independently in order to question the constitutionality of said law before Australian Courts. Nevertheless, Australia seems to be a guinea pig and drives the attention of other countries such as New-Zealand and Canada which embrace the will to implement a similar legislation on their territory. The latters will wait and draw conclusions on the ins and outs of the law in order to be the most efficient as possible and to implement the best legislation. Protection of IPR’s and the respect of international commercial treaties were of high importance for the drafters of the Australian law. Many European MP’s work today hands in hands with the Australian government in order to draft a directive.
Arguably, the opponents to plain-packaging said bluntly that this law is infringing international treaties ratified by Australia. Moreover, plain-packaging will lead to a skyrocketing of black market and counterfeiting which prevents the tobacco industry to spread its products. In Australia plain-packaging is introduced concomitantly with a raise of taxes on tobacco products. The Australian government dwells on the fact that plain-packaging will have a positive outcome on health and will lead to a decrease of tobacco consumption on the continent. Notwithstanding, the introduction of plain-packaging raises some intricacies as far as trademarks are concerned. Without any trademark, it will be hard to prevent the risk of confusion which was the sacrosanct principle which lies at the roots of trademark law. The essence of trademark is to avoid the risk of confusion between the products and services of different companies. Some scholars urge to reshape the juridical landscape. In addition, the concept of use of trademark faded away. Habitually, the use of a trademark is framed in a peculiar way, the use of the trademark must match with the trademark which was registered. If there is a discrepancy between the registration and the use, a lawsuit could be brought before the Courts for non-use. With plain-packaging trademarks which were registered in bright colors with logos will now be in a black typography on an olive green background. Many well-known trademarks will be at risk and the thriving of lawsuits will probably help to point out the loopholes of this legislation.
Within European Parliament, a White Book gave the incentive in order to introduce plain-packaging in Europe there is some years ago. The Australian experience is of high relevance and can inspire European legislators in order to draft a similar legislation. The health European Commissioner, John Dalli from Malta stands up for such a step to be taken in a near future. He already underlines that it will be a proposition which will be at the cornerstone of the conference which will assess the impact of the directive 2001/37/EC on tobacco products which will be held this year. The tobacco lobby already warned the European Parliament that it will not remain apathetic before such a legislation. This lobby already gathered in Brussels in order to set a common strategy against plain-packaging as this legislation will represent a heavy economical loss for those lobbies.
A Court which has jurisdiction over Intellectual Property issues will come to light in the Federation of Russia by the 1st of February 2013. The aforementioned Court’s will work according to the following blueprint:
-The first instance will tackle issues pertaining to the validity of Intellectual Property rights. The Court will have jurisdiction over the appeals of decisions issued by the Rospatent, Russian Trademarks and Patents Office. The goal of this Court is to tackle principally the patents, trademarks and designs registrations which were refused and the decisions which pronounced the nullity of trademarks and patents. In addition, the Court will be the appeal Court for the decisions of the Antitrust Federal Service for unfair competition infringements.
-There is no possibility to lodge an appeal against the decisions issued by the said Court. The decisions issued at the first instance will be implemented immediately.
The legal actions which raise the question of the validity of trademark for lack of use will be tackled by the Arbitral Court of Moscow during the transitional period. It seems that it is more telling to speak about a Court dedicated to industrial property as Copyright is not within the realm of competence of the Court. At the inception, the Court is the result of the growing awareness of the loopholes of Russian Courts and magistrates which are not specialized in IP matters. The Courts’ decisions are issued after long years of work and the Courts were completely overloaded by complaints which were highly technical. 30 magistrates will work hand in hand in order to alleviate the hurdle of the technical nature of IP issues. They will be specialized in IP and could be assisted by independent experts. Each and every case will be examined cautiously by several magistrates or a sole president.
The location of the aforementioned Court remains unknown up till now. Notwithstanding, there are some hints that the Court will be built in Skolkovo, a hectic hub near to the capital. The incentive of the creation of this Court took its place within a wider framework and evidences the strong willingness of the Russian Federation to protect adequately and efficiently IPR’s. Arguably, the Russian Federation ratified an international treaty which has for underlying goal to pave the way for uniform principles which will embody a shield protecting IPR’s in the Federation of Russia, in Belorussia and Kazakhstan. The construction of this Court is a relevant answer to the impediments which gangrene the Russian judicial system. Miscellaneous commentators were calling for an aggiornamento in order to ease the treatment of decisions as cases involving IP matters were skyrocketing dramatically.
The Russian Federation belongs to the BRIC’s countries, the aforementioned hallmark making the country an attractive market for investors. The building of this Court will help to disentangle the situation which was highly detrimental to the IPR’s owners who were not prone to defend their rights in this country. This IP Court is a relief for IPR’s owners who will bring lawsuits before it, thing which was an oddity in the past. The question remains if the Court will really be put in place. It could embody a real benefit, notwithstanding, in the light of the political turmoil which broke into the country recently, it is likely that the Court will remain an “arlésienne”. The postponement of the creation of the Court is rather plausible. Moreover, this Court is not a possible arena for tackling domain names disputes which is highly regrettable. It would have been wise to create concomitantly an extra-judicial procedure in order to solve the problem related to cybersquatting. As for the future, no one really knows what it’s really hold in store.
Astoundingly, the ICANN released the number of registrants which apply for the new gTLD’s on the 14th of February 2012. The aforementioned US organization was eager to unravel the number of registrants, this step being quite fuzzy as the organization said bluntly the 19th of January that it will keep secret the ”number of applications received”[1] until May. It seems that the institution located in California gave way and displays precociously the symbolic number of registrants which is as high as 100. If this surreptitious change sounds incongruous, it deserves attention and shows up the success of this new window of opportunity for companies. Another explanation may be that there is a discrepancy between the number of registrants and the number of applications already in process, which could explain such a turnaround. We cannot but highlight that the wishful can still file for an application until the 12th of April, and we can expect that the number will increase dramatically as this press release will pull the candidates.
A brand new feature for domain names with the extension in <.fr> is running. Allowing the registration of IDNs (Internationalized Domain Names), the AFNIC increases the number of allowed characters for the creation of domain names with the six extensions administered by said association (<.fr>, <.re>, <.tf>, <.wf>, <.pm> and <.yt>). Indeed, it will soon be able to count on 30 additional letters such as, à, á, â, ã, ä, å, æ, ç, è, é, ê, ë, ì, í, î, ï, ñ, ò, ó, ô, õ, ö, ù, ú, û, ü, ý, ÿ.
In order to overcome “cybersquatting” to which this development could give rise, the AFNIC has taken some steps. On last February 3, 2012, the AFNIC published on its website, a document which details, in addition to technical specifications, how to register IDNs (http://www.afnic.fr/medias/documents/afnic-idn-technical-specifications.pdf). The essential to retain:
– on next May 3, 2012, a period called “sunrise” will offer to domain names’ holders, the possibility of registering in priority, their equivalents with the new allowed characters.
– at the end of this first period on July 3, 2012, anyone will be able to register an IDN since it is consistent with the Charter of AFNIC. The rule “first come, first served” will prevail.
Notice to domain names’ holders who are invited to come forward within the “sunrise” period.
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Written by Nathalie Dreyfus12/04/2012 
