Issue 31
  July 2013
Contents:
 

Update on ICANN’s new gTLD programme

>  
 

HouseMARQUES interview: Till Lampel

>  
 

House of Lords passes IP Bill

>  
 

OHIM draft guidelines published

>  
 

New Boards of Appeal president

>  
 

Customs Regulation published

>  
 

Tips for Madrid users

>  
 

Cancellation due to non-use in Russia

>  
 

Upcoming MARQUES events

>  
 

MARQUES Media round-up

>  
 
Disclaimer:
The views expressed by contributors to this newsletter are their own and do not necessarily reflect the policy and/or opinions of MARQUES and/or its membership.  Information is published only as a guide and not as a comprehensive authority on any of the subjects covered.  While every effort has been made to ensure the information given is accurate and not misleading neither MARQUES nor the contributors can accept any responsibility for any loss or liability perceived to have arisen from the use or application of any such information or for errors and omissions.  Readers are strongly advised to follow up articles of interest with quoted sources and specialist advisors.
 

PO Box 10212
Leicester
LE41 9HG
United Kingdom
T: +44 116 274 7355
F: +44 116 274 7365
E: info@marques.org

Update on ICANN’s new gTLD programme

Last month, 1,800 delegates spanning the globe participated in ICANN’s 47th Meeting in Durban, South Africa. Members of the MARQUES Cyberspace Team were there and report on the latest news.


Key developments in Durban

  • The first four new gTLD contracts (IDNs for web/network, online, website, and game in Arabic, Russian and Chinese) were signed. These first new gTLDs are set to go live with Sunrise registrations by Q4 2013.
  • Registrars began signing the 2013 Registrar Accreditation Agreement.
  • The Governmental Advisory Committee (GAC) advised ICANN’s Board that in governments’ views, geographic terms – even terms not appearing on ICANN’s block list – trump global trade mark rights.

Additionally, a number of new gTLD Rights Protection Mechanisms (RPMs) updates have emerged:

Legal Rights Objections
WIPO Experts (outsourced as in the UDRP) have decided nearly one-third of the 70 LRO cases filed. While the reasons have varied, so far, all decisions have resulted in the objection being rejected. While there is no body of precedent per se, some key themes are emerging:

  • Experts are viewing trade mark rights acquired solely for new gTLDs and LROs with suspicion (.home .tunes .cam).
  • Trade marks that are also generic terms will be viewed against possible co-existence (.express .home .mls .pin .vip .limited .song).
  • Trade marks that incorporate the applied-for new gTLD and other letters/terms may mitigate against likely confusion (.limited .mail).
  • LRO Experts will consider any territorial limitations on a mark (.yellowpages .mls).
  • LRO cases are not designed to decide between bona fide third party uses in different business sectors (.rightathome).

No objector has been able to show that a new gTLD application is likely to infringe its trade mark rights. With collective costs running into the millions, the merit of ICANN’s LRO process is in doubt. This may put considerable pressure on brands to apply in the future to run their own new gTLDs.

Uniform Rapid Suspension mechanism
The URS mechanism offers brand owners a quicker and cheaper alternative to tackle cybersquatting compared to the UDRP. Filing a URS case with the National Arbitration Forum will cost you an average $375 (plus any attorney fees) and decisions are expected to come in under a month (compared with $1300+ and 2+ months for the UDRP). Unlike the UDRP’s transfer remedy, under the URS, a domain name is suspended and pointed to a blank URS page for the life of the registration (this suspension can be extended for one year, for a fee). Cases can only be filed electronically.

Trademark Clearinghouse
The Trademark Clearinghouse is advertised as a central repository for trade mark data – to be used for Sunrise registrations, Trademark Claims (a notice to you of a registration matching your mark, for the first 90 days of a particular new gTLD), and the URS – but trade mark owners have submitted a mere 7,000 marks to date.

This low number indicates that brand managers are delaying Clearinghouse costs ($150 per mark entry plus any subsequent Sunrise costs) as long as possible. To some degree it shows a continuing reluctance of brand owners to buy into the New gTLD Program; while understandable, this wave of new internet addresses cannot be simply swept under the rug.

By Brian Beckham of Valideus. Members of the MARQUES Cyberspace Team took part in the ICANN Meeting in Durban and continue to monitor gTLD developments

The HouseMARQUES interview: Till Lampel, Unfair Competition Team

Till Lampel reveals what the Unfair Competition Team has planned for Monte Carlo, and reveals his favourite Annual Conference venues.
Read More >>

House of Lords passes IP Bill

The UK Intellectual Property Bill 2013 has now passed the House of Lords in the UK and will shortly become law. The amendments to UK design legislation are the culmination of a long consultative process, in which the MARQUES Designs Team has been involved, making written submissions and attending briefings. David Stone, chair of the MARQUES Designs Team, reports.
Read More >>

OHIM draft guidelines published

OHIM has published the draft Guidelines of Work Package 1 online for consultation until 13th September.
Read More >>

New Boards of Appeal President

 

New Customs Regulation published

The Council of the European Union has appointed Théophile Margellos as President of the Boards of Appeal of OHIM.   EU Regulation 608/2013 concerning customs enforcement of intellectual property rights was published last month.
Read More >>   Read More >>

Tips for Madrid users

WIPO has published some practical tips on the Madrid System, including on the restriction on extension of old applications to new contracting states.
Read More >>

Cancellation due to non-use in Russia

As of 3rd July, non-use cancellation actions in Russia must be brought before the newly established Court on Intellectual Property Rights. In an article on the MARQUES website, Marina Grineva of the Brands and Marketing Team discusses how this change of venue may benefit parties to such disputes.
Read More >>

Upcoming MARQUES events

 

MARQUES Media round-up

Add the forthcoming MARQUES events to your diaries to make sure you don’t miss out.   Keep up to date with MARQUES news via the Class 46 blog, twitter and the LinkedIn discussion group
Read More >>   Read More >>

Unsubscribe:
You can unsubscribe from this emailing list or change the frequency and type of information you receive from MARQUES at anytime by logging into the MARQUES website and clicking on the Preferences tab in the My Profile section of the My Account page.  Alternatively you can reply to this email with the subject 'NewsChannel - Unsubscribe' to be removed from this mailing list.