TUESDAY, 28 NOVEMBER 2023
Four things to know about ICANN78
ICANN held its 25th Annual General Meeting in Hamburg during October. As things settle after the meeting, there are four key points to reflect on. Nick Wood of the Cyberspace Team and Sophie Hey provide an update.
1 RDRS is coming soon
The RDRS is the system being developed by ICANN to help streamline requests for the disclosure of redacted registration (or WHOIS) data. It will be a single point through which brand owners, law enforcement and others can submit requests for data disclosure. If the registrar sponsoring the domain name is participating, then the request will be forwarded to them for consideration and action.
The RDRS will not return the actual data, nor will there be a guarantee of disclosure. Each request will be considered by the relevant registrar, who will make their own determination whether or not there is a legal basis for disclosure. If the registrar determines that there is a legal basis for disclosure, they will disclose the data directly to the requestor. Registrars are expected to update the RDRS to reflect the outcome of their decision, i.e. whether the data was disclosed in full or in part, or whether the request was refused.
If a registrar is not participating, the RDRS will reflect this. The system will enable a requestor to create a temporary request in the standard form, however, which can then be downloaded and sent direct to the registrar.
Registrars have been able to sign up to the system, to familiarise themselves, since September. As of the start of the ICANN 78 meeting, registrars representing 10% of domains under management had done so. This number is expected to increase in the coming weeks, since numerous registrars indicated that they do intend to sign-up but are working through their internal processes for handling requests before they do so.
The intent is that the RDRS will generate data on user demand over a period of up to two years. This data will then be used by the ICANN Board in its consideration of whether to approve the policy recommendations on the creation of the full System for Standardised Access/Disclosure (SSAD), with additional functionality such as accreditation of requestors, and to make this compulsory for registrars and registries. If requestors do not use the system this will fuel the narrative that the lack of demand demonstrates that there are no problems in gaining access to the non-public data on request, and thus no need for the RDRS or SSAD systems.
You can stay up to date on the RDRS Launch at this webpage https://www.icann.org/rdrs-en
2 DNS abuse contract amendments
In the gTLD space, the discussions on abuse have resulted in contract amendment negotiations with ICANN, initiated by the Registry Stakeholder Group and Registrar Stakeholder Group.
The contract amendments for registries and registrars define DNS abuse as "malware, botnets, phishing, pharming, and spam (when spam serves as a delivery mechanism for the other forms of DNS abuse listed) and will impose obligations on the contracted parties to take steps to stop or mitigate such abuses, where identified. The proposed amendments are currently out for approval votes of the registries and registrars.
Voting is open until 8 December, and the status of voting is being updated regularly by ICANN on a public webpage. The thresholds are currently indicating that the approval thresholds have been met. Once the ICANN Board has voted to approve the amendments, they will enter into force for registries and registrars 60 days after the Board vote.
The amendments, assuming they pass, are to the Registrar Accreditation Agreement and the Base Registry Agreement, meaning that they will apply to all ICANN accredited registrars, and all gTLD registries on the Base Registry Agreement.
Currently, this is all gTLDs except for .com, .net, .name, .post, .xxx and .aero. However, Verisign has already committed to adopting the language in a form reasonably appropriate for .com and .net, per their March 2020 Letter of Intent.
3 Work continues on next round of new gTLDs
The next application round of new gTLDs is more than a decade in the making. After the last application round in 2012, work began on reviewing the rules and procedures in preparation for further rounds.
This review was known as the Subsequent Procedures working group, or SubPro, and they wrapped up their policy work in 2021. ICANN’s Board formally approved proceeding with the next round earlier this year, under the new leadership of Board Chair Tripti Sinha, and Interim CEO, Sally Costerton.
In August, ICANN published its implementation plan and timeline, which revealed it is targeting April 2026 for the opening of the next application window. This timeline was affirmed by ICANN throughout ICANN 78.
During ICANN 78 there were working sessions for the Implementation Review Team (IRT) on the topics of Applicant Support Program, Registry System Testing, and Application Rounds. This work will continue into 2024.
ICANN Org also provided an update on their current thinking for string similarity guidelines in the upcoming round. These guidelines are intended to help the String Similarity Evaluation Panel in determining whether two strings are confusingly similar and thus unable to co-exist. The assessment will be one of visual similarity.
Factors that are likely to be also considered include aspects such as who is the target user for string – who should be reasonably attentive and have native familiarity with the script and language. The assessment will also need to include in any comparison the potential variant forms of a string, as provided for in the phase 1 work of the IDN EPDP.
4 Governments advise no closed generics in the next round
The Government Advisory Committee (GAC) concluded ICANN 78 by issuing Advice to the ICANN Board that “Prior to the next round of New gTLDs, to ensure that the forthcoming Applicant Guidebook clearly states that Closed Generic gTLD applications will not be considered”.
This comes on the heels of a Facilitated Dialogue between the GNSO, GAC and ALAC on a potential framework for considering closed generics in future rounds. In the absence of policy from the GNSO either allowing or disallowing closed generics, the ICANN Board is likely to adopt this Advice from the GAC.
Assuming this Advice is adopted, it will mean that applicants will not be able to apply to operate “generic” strings as a single-registrant registry. At ICANN, “generic” is considered to be a word or term that denominates or describes a general class of goods, services, groups, organizations or things, as opposed to distinguishing a specific brand of goods, services, groups, organizations or things from those of others.
Nick Wood is Executive Chairman and Sophie Hey is Policy Advisor with Com Laude in London. Nick is also a member of the MARQUES Cyberspace Team and MARQUES Council
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FRIDAY, 24 NOVEMBER 2023
EUIPO launches Mediation Centre
EUIPO opened a new Mediation Centre for IP disputes on 22 November. It will provide alternative dispute (ADR) resolution services including mediation, conciliation and expert determination for EUTM and RCD disputes.
The services are available at no cost to all parties involved in inter partes proceedings before the EUIPO at second instance (i.e. Boards of Appeal) if held online or in Alicante.
The services are also available to SMEs in first instance proceedings (oppositions, cancellations, and invalidations) for free. This service will be rolled out to all users during the next two years.
There is a €750 fee to hold meetings at the EUIPO office in Brussels.
The ADR services will be delivered by trained mediators and case managers and they will be available in various languages.
An online ADR platform enables mediators and parties to interact virtually in a secure and confidential environment.
The Mediation Centre was envisaged in the EUTM legislative reform of 2017. Its launch follows the recent IP Mediation Conference organised by the Boards of Appeal in October, in which several MARQUES representatives took part.
EUIPO Executive Director João Negrão (pictured) said in a statement: “The establishment of Mediation Centre is a major step in supporting citizens and businesses in managing their intellectual property rights effectively and helping avoid expensive, unpredictable litigation processes when disputes arise. With 42% of EU trade mark applications coming from non-EU companies, cross-border disputes have become more and more common, highlighting the need for global and cost-effective dispute resolution services.”
More information is available on the dedicated Mediation Centre page on EUIPO’s website. This includes flowcharts showing how ADR works and a list of 10 reasons to try mediation.
Photo from EUIPO news page
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TUESDAY, 21 NOVEMBER 2023
Importing wine into China: a checklist for foreign brand owners
As the world’s second largest economy, China is an attractive market to foreign wine producers. While China does produce some of its own wine, a large portion of the wines available for sale in China are imported.
In 2019 China imported 615,500 kilolitres of wine valued at USD2,442 million. Although the pandemic lockdown was not lifted in China until the end of 2022, in 2022 China imported 335,318 kilolitres of wine valued at USD1,435 million (see https://www.chyxx.com/).
As the market for imported wine in China continues to grow, it is important for wine producers to ensure that their trade mark is suitably protected in China. Simonne Moodie, Zhigang Zhu and Tingxi Huo Of the MARQUES China Team provide some insight and a useful checklist for foreign wine producers wanting to export their wines to China.
Trade mark protection in China
1. Search and registration
China is a first-to-file country, but it is preferable to only start using the mark once registration is secured, which could take as little as nine months. Prior to registration there is some protection under the Anti-Unfair Competition Law and the protection of well-known trade marks under the Trademarks Law, but the threshold for protection under these provisions is very high and protection is difficult to obtain.
Conducting a registrability search prior to filing is preferable, particularly if the intention is to use the trade mark in China before registration. This will avoid any potential infringement action and will also disclose any prior bad faith filing of the mark by an unrelated third party, which is common in China. If there is a prior registration or application in China agents or distributors may not be willing to import the wine and Chinese customs may request proof of ownership.
2. What to file
It is advisable to file the trade mark application in the form that the trade mark is used on the wine label in China. In most cases for a foreign wine brand this will be the Latin name, and it should be filed in plain block letters to cover use in different fonts and letter cases. It is also recommended to use and register the Chinese equivalent trade mark in the form of its translation or transliteration so that local consumers can recall the brand name.
According to the China National IP Administration (CNIPA) practice, wine labels are often considered overly complex or indistinctive for registration. However if the label is simple it is worth filing a trade mark application for the label in addition to the Latin name and transliteration or translation. An alternative option would be the registration of copyright in the label design under the Copyright Law, which can be granted and enforced sooner and will enjoy protection for at least 50 years.
The CNIPA follows the standard specifications outlined in the Nice Classification and is very liberal with the scope of the specification. Since there are no use requirements (except in non-use cancellation cases) it is advisable to apply for a trade mark with a wide specification covering “alcoholic beverages, except beers; wine” in class 33. This covers most of the class heading, bearing in mind that “alcoholic preparations for making beverages” is not accepted in China.
Importing your wine into China
1. Licensing and distribution
It is advisable for foreign wine producers to have a designated, trusted distributor or agent in China to import the wine, assist them with the process and on-sell to the various channels such as online shops and supermarkets.
A written licence agreement with the distributor is not compulsory for the use of a trade mark by the distributor to qualify as permitted trade mark use, but it is highly recommended. A written agreement will clarify the rights and obligations of both parties, protect the proprietor’s rights in its wine brand, control the use of the trade mark and provide for proof of the licence and distribution relationship.
In the absence of a written agreement, in the case of a registered trade mark, the Chinese authorities may order the agent or distributor to prove the licensing relationship or take punitive actions against what they see as “infringing use”.
According to Article 43.3 of the Trademark Law, a trade mark owner must record a licensing relationship with CNIPA. To record the licence you simply need to provide details of the licence arrangement and not the licence agreement itself. While there is no penalty for a delayed recordal, recording the licensees in respect of any registered trade mark with the General of Administion of Customs of China (GACC) (on the ‘whitelist’) and recording any suspected infringers (on the ‘blacklist’) should enable the legitimate products to enter or exit China smoothly, and should assist in preventing potential infringing products from entering or exiting China.
2. Import process and regulations
Foreign wine producers wanting to export their wines to China will need to register their company, register the wine label and send various documents to customs, namely the General of Administion of Customs of China (GACC).
To import wine into China, wine producers need to comply with these national regulations and must also follow the GuoBiao Standards (GB Standards). GB Standards are the China national standards, classified into Mandatory or Recommended, to ensure products are safe for use and consumption in China.
The Mandatory standards have the force of law in China. The most common GB Standards that apply to wine imported into China include the general standard for the labelling of pre-packaged alcoholic beverages, wines, fermented alcoholic beverages and their integrated alcoholic beverages, hygienic specifications of factories for wine, analytical methods of wine and fruit wine, and good manufacturing practice for wine enterprises.
In addition to these national regulations and standards there are other general laws such as Advertising Laws that regulate wine advertising and sales and Trademark Laws that control the use and registration of the trademark.
Given the number of rules and regulations that are continually updated, it is recommended that foreign wine producers work with a professional distributor and attorney in China to provide guidance through the complete wine exporting process.
By Simonne Moodie of Von Seidels Attorneys, South Africa); Zhigang Zhu of Wanhuida Intellectual Property, China; and Tingxi Huo of Chofn Intellectual Property, China. All are members of the MARQUES China Team. Photo by Alex Brown on Flickr
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FRIDAY, 17 NOVEMBER 2023
Book now for Spring Team Meeting 2024
The MARQUES Spring Team Meeting will take place on 7 and 8 March 2024 at the Hilton Hotel, Amsterdam, The Netherlands.
Registration is now open for all MARQUES Team and Council members.
The Spring Meeting includes a workshop “To use or not to use … that is the question” which will provide perspectives from the US, EU and UK on trade mark use pre-registration, at the time of registration and after registration.
The workshop will be presented by the MARQUES Education Team.
The annual Kay Uwe Jonas Memorial Talk will be given by Kate Swaine, Gowling WLG UK, who is a member of the MARQUES IP Emerging Issues Team.
During the Spring Meeting, all MARQUES Teams meet to discuss current projects and Team chairs present summaries. There is also a Leadership Meeting for Team chairs (by invitation only).
Registration for Team members is €605, which includes attendance at all events including dinner on Thursday night and lunch on Friday. Accommodation is not included. The spouse/partner rate is €120, including dinner and lunch.
Team and Council members can find out more and book their places here.
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THURSDAY, 16 NOVEMBER 2023
Non-agri GI regulation enters into force
The EU Regulation on the protection of geographical indications for craft and industrial products (also known as non-agri GIs) entered into force today, 16 November.
As previously reported on this blog, the Regulation introduces a new scheme for protection for craft and industrial products with qualities or reputation linked to the area of production
It will be possible to apply for registration of non-agri GIs from 1 December 2025. The registration process has two phases (national and EU) with the second phase administered by EUIPO. There will be no fees at the EU level.
Member states can derogate form the national procedure, in which case applications will be filed directly with EUIPO.
By December 20206 any existing national rights will cease to exist. It is expected that 300 to 800 names currently protected nationally will be notified for EU protection.
EUIPO will host an online filing and management system, register and database. Earlier this month, it also created the GI Hub, which has information on GI legislation, online tools, latest news and FAQs.
Members of the MARQUES GI Team will provide more information in an episode of the Talking MARQUES podcast, which will be available soon.
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FRIDAY, 10 NOVEMBER 2023
Sri Lanka and Madrid ratification
Sri Lanka is establishing a consolidated IP policy by improving its IP ecosystem and working on various advances in this field, Ms Tharini Salwathura reports for Class 46.
The objective is to improve the enforcement of existing IP rights and promote innovation and economic growth.
In this context, trade marks can play a pivotal role, showing that Sri Lanka is concerned to promote the trademark environment for both internal and external markets.
In particular, Sri Lanka has committed to join the Madrid Protocol, aiming to develop and enhance the profit of international business and export activities.
On 23 February 2020, the Sri Lankan government decided to accede to the Madrid Protocol, with the National Intellectual Property Office (NIPO) putting its last notes for the final ratification.
Accession to Madrid System depends on the government’s roadmap and on the gorwing needs of the market.
The government of Sri Lanka has taken several steps in recent years towards developing its IP system and policy by means of:
The overall IP ecosystem in Sri Lanka has therefore improved in recent years in developing IP rights protection.
The climate for enforcing IP rights has been prioritised by spreading IP awareness, introducing the Madrid Protocol and promoting competition between brands. The implementation of the Madrid System will further promote trade and attract investment.
Tharini Salwathura is a member of United Trademark & Patent Services, Colombo, Sri Lanka, a member of MARQUES
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THURSDAY, 9 NOVEMBER 2023
New languages for the Madrid System
MARQUES has undertaken a survey of members regarding proposals to introduce new languages such as Arabic, Chinese and Russian to the Madrid System.
The survey, which was one of the most popular surveys MARQUES has conducted, had over 300 responses from 56 countries, including Arab-speaking countries, China and Russia. It found that:
Advantages and disadvantages
We also asked respondents to list advantages and disadvantages of adding more languages. Advantages included:
However, many respondents said they did not see any advantages at all.
Disadvantages identified included:
The full results of the MARQUES survey can be seen on the website here.
MARQUES is supportive of WIPO administered systems being accessible to the broadest number of potential IP rights owners as possible, and for the systems to be as easy, streamlined and cost-effective as possible. This is important to ensure equal access to IP protection for all potential brand owners.
In MARQUES’ view, these two main points – accessibility and efficiency/cost effectiveness – need to be balanced appropriately. We may encourage more users if the system is available in their home language; however if this results in higher fees or a much slower or more error prone system, this disadvantages all users.
Our initial view of the proposal was, that despite the general favourability of MARQUES to increasing access, the implementation of new languages should be addressed in future and not now. We strongly believe that translation technology will improve over the next few years, which would reduce both the risk of error and pendency, so the project should be reviewed again in five years to examine updates in translation technology.
The topic is due to be discussed further at the next Working Group on the Legal Development of the Madrid System in Geneva during the week of 13 November. MARQUES will be represented at the meeting and will report in due course.
The survey was organised by members of the MARQUES International Trade Mark Law and Practice Team.
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