Log in

CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

Want to receive Class 46 by email?
Click here subscribe for free.

Who we all are...
Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Markku Tuominen
Niamh Hall
Nikos Prentoulis
Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
THURSDAY, 11 JULY 2024
Six turbulent months for brand owners using ICANN’s RDRS

It is just over six months since ICANN launched its Registration Data Request System (RDRS). Patrick Hauss of the MARQUES Cyberspace Team examines the impact of the RDRS on brand owners when it comes to them gaining WHOIS data of third-party domain registrations infringing their trade mark rights.

When ICANN announced the launch of RDRS in November 2023, brand owners were hoping to see the light at the end of the GDPR tunnel. It promised:

  • A new centralized tool for those seeking legitimate access to WHOIS data, allowing requestors to benefit from a one-stop shop;
  • An easy way to connect requestors with the relevant ICANN-accredited registrars;
  • The possibility to flag urgent requests that need to be prioritized by registrars; and
  • A feature allowing brand owners to submit important information such as court decisions and any other documentation required for the registrar’s review.

With an easier process, a single form for all registrars, an inbuilt administration tool and most importantly standardisation, RDRS was designed to be a response to the barriers experienced by professionals who need to access domain data to take action against trade mark infringement.

Turbulence

Unfortunately, these promises have not been realised, and brand owners have experienced much turbulence on RDRS’s maiden flight.

First, RDRS is a proof of concept for ICANN, open for two years and designed to collect as much data as possible from both brand owners and registrars in order to design the future Standardized System for Access and Disclosure (SSAD).

Uptake has been slow. Some pressure is still being put on brand owners to use RDRS as much as possible, but the system has proven to be inefficient. Similarly, registrars were encouraged to participate during ICANN 79, as current take-up is still low.

Those who have used RDRS have identified early limitations to the system, including:

  • It only works for gTLDs, and with growing threats on ccTLDs, centralisation and standardisation are not possible.
  • RDRS is a case management tool. Many people were hoping to get live access to WHOIS data once the registrar accepted the request. However communication between requestor and registrar is conducted outside of the tool, and it doesn’t support any messaging or ticketing features.
  • Domains registered using proxy services are out of scope.
  • Participation is optional and registrars are simply invited to participate. Currently only 91registrars have joined RDRS (as of June 2024). It is still possible to make requests to registrars not participating in RDRS, but they must be performed via email or phone, for example… and outside RDRS of course.

Not the tool we were hoping for

In May 2024, ICANN announced changes to how the metrics are reported and improved functionality for both requestors and registrars.

The last RDRS Usage Metrics report published in June 2024 showed a growing number of requestors (4,496 since launch) and requests (1,371 since launch), as well as a growing interest from IP holders.

Despite this, the number of approved requests is still low – 250 since launch; just 5.5% of the total requests.

Six months after its launch, RDRS is not the tool that IP rights holders, cybersecurity investigators or consumer protection organisations were hoping for, and it looks like proposed improvements are designed more towards increasing the number of registrars onboarding rather than looking at the reasons why brand owners are not getting their requests approved.

Patrick Hauss is Head of Corporate Development and Strategic Alliances EMEA at CSC Digital Brand Services and a member of the MARQUES Cyberspace Team

Posted by: Blog Administrator @ 15.11
Tags: ICANN, RDRS, WHOIS,
Sharing on Social Media? Use the link below...
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA5283
Reader Comments: 0
Post a Comment


WEDNESDAY, 10 JULY 2024
Talking MARQUES on the EUIPO Observatory

The latest episode of the Talking MARQUES podcast focuses on the work of the European Observatory on infringements of Intellectual Property Rights.

The podcast features Alexandra Poch, Deputy Director of the Observatory, as well as Sonia Santos and Maria Cecilia Romoleroux, who are both members of the MARQUES Anti-Counterfeiting and Parallel Trade Team and have been closely involved in the work of the Observatory.

In the podcast, Alexandra describes the role of the Observatory and its current priorities and challenges. She also talks about how the Observatory interacts with stakeholders including brand owners to address enforcement issues.

Maria Cecilia and Sonia discuss the role that IP practitioners and particularly associations such as MARQUES can play in the work of the Observatory including setting priorities and developing research.

The podcast is recommended for anyone who is involved in IP enforcement, awareness raising and policy development.

Thanks to MARQUES External Relations Officer Alessandra Romeo and the team at the Observatory for their help in putting together this episode of the podcast.

You can find this and all previous episodes of Talking MARQUES on the MARQUES website here and on Spotify.

Posted by: Blog Administrator @ 16.14
Tags: EUIPO, Observaotry, Alexandra Poch,
Sharing on Social Media? Use the link below...
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA5282
Reader Comments: 0
Post a Comment


THURSDAY, 4 JULY 2024
EUIPO internal reorganisation announced

EUIPO has implemented a reorganisation centred on four clusters (business, outreach, compliance and corporate services) with effect from 1 July 2024.

A new Executive Advisory Committee has been formed and comprises he Executive Director, the Deputy Executive Directors, the President of the Boards of Appeal, the Head of Cabinet, the Directors, the Chief Economist, the Head of Services of the Internal Audit Unit and the Communication and Media Relations Service.

The Office has also created an EUIPO AI Governance and an AI coordinator to explore the potential implementations of AI.

“The EUIPO reaffirms its dedication to becoming an ever more modern and innovative IP office, enhancing excellence, and ensuring that it is well prepared for the challenges ahead,” said the Executive Director of the Office, João Negrão. “We intend to better serve IP users and the broader European IP ecosystem by delivering high-value IP services to citizens and businesses.”

An announcement about the restructuring on EUIPO’s website is here and the organisation chart is here.

Posted by: Blog Administrator @ 08.12
Tags: EUIPO, reorganisation,
Sharing on Social Media? Use the link below...
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA5281
Reader Comments: 0
Post a Comment


TUESDAY, 25 JUNE 2024
WIPO Treaty important for Indigenous Peoples and local communities

It has been exactly one month since IP History was made. Early in the morning of 24 May 2024, and after 25 years of discussion, the 193 member states of WIPO adopted a Treaty that would require patent applicants to disclose the country of origin or source of genetic resources and/or the Indigenous Peoples or local communities involved in providing traditional knowledge associated with an invention. Marion Heathcote, Chair of the MARQUES IP Emerging Issues Team, examines its significance.

The culmination of an intense two-week Diplomatic Conference, the negotiated Treaty on Intellectual Property Genetic Resources and Associated Traditional Knowledge (GRATK/DC/7 Prov) is significant for the rareness of a multilateral agreement, the collective acknowledgement of the importance of retaining biodiversity integrity and that it recognises the existence of genetic resources and traditional knowledge as being associated with Indigenous Peoples and local communities within the construct of the IP protection system.

Important stepping stone

Heralded as ‘historic’ and labelled ‘landmark’, this Treaty does not present an ultimate solution, but is an important stepping stone on the path to more fully recognising the existence of Indigenous Cultural and Intellectual Property (ICIP) and the rights of Indigenous Peoples and local communities in it.

While previous international instruments, most notably the Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization to the Convention on Biological Diversity, have recognised the need for permissions from their holders to ‘use’ genetic resources and traditional knowledge, the lack of any uniform disclosure requirements within the patent system has meant that while genetic resources themselves cannot be patented the information/knowledge derived from such ‘use’ can form the basis for the patentable subject matter of others.

Given that much information/knowledge on ‘use’ by its very nature is passed on in non-written form, the options for challenge have been limited. Seen as a collective response to curbing ‘bio piracy’ and improving transparency within the patent system, the Treaty is directed at a uniform patent disclosure requirement as well as the creation of information systems around genetic resources and traditional knowledge.

Treaty provisions

Under the Treaty, patent applicants will be required to provide the country of origin or, if not known, the source of any genetic resources upon which the claimed invention is based.

Where an invention is based on traditional knowledge associated with genetic resources, the patent applicant will be required to disclose the Indigenous peoples or local community, as applicable, who provided the traditional knowledge associated with genetic resources or, if not known, the source of the traditional knowledge associated with genetic resources. The applicant provides this information by way of a declaration based on their best knowledge.

The consequences of non-disclosure anticipated by the Treaty are limited and do not extend to patent invalidation nor inability to enforce. Remedial measures for failure to disclose are otherwise at the discretion of the contracting countries although it is anticipated there will be legal and administrative sanctions.

There is no requirement on the applicant to validate information sources. Failure to disclose can be rectified although there is no retroactivity: the disclosure requirement will not apply to patent applications filed before the Treaty enters into force.

Information systems

In an effort to facilitate patent examination and ensure patents are not granted erroneously for inventions that are not novel or inventive, the Treaty allows for the establishment of ‘information systems’ in consultation with Indigenous Peoples, local communities and other stakeholders.

Superficially logical and notwithstanding referencing ‘appropriate safeguards’, the practical implementation and potentially unprecedented access to traditional knowledge and indigenous cultural IP, some of which is secret and sacred, that such a system could enable means that this as an ideal will require much more consideration and will be influenced by the previous experiences of Indigenous Peoples and local communities.

The creation of any ‘information system’ also needs to be considered in the context of Article 31.1 of the UN Declaration on the Rights of Indigenous Peoples (UNDRIP) which gives indigenous peoples ‘the right to maintain, control, protect and develop their intellectual property over such cultural heritage , traditional knowledge and traditional cultural expressions’.

Role of Indigenous Peoples and local communities

That the Treaty anticipates Indigenous Peoples and local communities will have a role within its implementation and ongoing operation is of itself significant. Article 31.2 of the UNDRIP does require that the effective measures of States to protect and recognise the exercise of indigenous IP be done in conjunction with indigenous peoples.

In this regard it is important to recall that, while an Indigenous Caucus has been present throughout the years of deliberations and at the diplomatic conference, the Treaty negotiations were conducted among the WIPO Member states who within their own corps may have included Indigenous Peoples and representatives of local communities.

All representations by members of the WIPO Indigenous Caucus to the conversation were as an NGO (supported by the WIPO Voluntary Fund) and not with independent capacity.

It is anticipated that member states will utilise the opportunities afforded by this Treaty to increase Indigenous Peoples’ engagement where not already begun. For some countries already on the journey and/or who have already enhanced national disclosure requirements, the new Treaty may not lead to major changes.

The noteworthiness of the Treaty is in that it represents a collective move towards the recognition within the traditional IP systems of ICIP and that adaptations to accommodate might be possible. As WIPO Director General Daren Tang observed: “Through this, we are showing that the IP system can continue to incentivize innovation while evolving in a more inclusive way, responding to the needs of all countries and their communities.”

Whether this ultimately is appropriate or possible requires engagement with Indigenous Peoples and local communities as the ultimate custodians of that property. The Treaty provides a significant discussion step.

Next steps

The Treaty will enter into force three months after 15 WIPO member states have deposited their instruments of ratification or accession. The contracting parties also need to commit to a review of the Treaty four years after it enters into force.

In the meantime, WIPO has already diarised that the IGC will meet again on 29 November 2024 to take stock of the progress made on Genetic Resources and Traditional Knowledge associated with Genetic Resources and to discuss any issues arising from the Diplomatic Conference.

Negotiations will continue shortly thereafter (2 to 6 December 2024) on Traditional Knowledge and/or Traditional Cultural Expressions with a focus on addressing unresolved and cross-cutting issues and considering options for further draft legal instruments.

Marion Heathcote is a partner of Davies Collison Cave in Australia and Chair of the MARQUES IP Emerging Issues Team

Photo: Emmanuel Berrod/WIPO

Posted by: Blog Administrator @ 10.10
Tags: WIPO, traditional knowledge, Indigenous Peoples,
Sharing on Social Media? Use the link below...
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA5280
Reader Comments: 0
Post a Comment


FRIDAY, 21 JUNE 2024
Update from Russia Task Force: Decree 430 of 20 May 2024

On 20 May, Russia President Vladimir Putin issued Decree No 430 “On the temporary procedure for acquiring exclusive rights of certain IP holders and fulfilling monetary obligations to certain foreign creditors and entities controlled by them”.

Decree 430 is available on the Russian government’s website here. The following analysis is based on a machine translation.

The Decree supplements previously announced measures by establishing a temporary procedure concerning the acquisition of IP rights by Russian entities from rights holders in “unfriendly” jurisdictions.

It essentially imposes government control over any new contracts to acquire overseas IP rights by Russian entities as well as for payments under existing agreements.

“Unfriendly” states are any states that “commit unfriendly actions” against Russia. In practice, this includes all countries that have sanctions in place.

Rights holders are defined as people in unfriendly states “who have transferred or are obliged to transfer their exclusive rights to the results of intellectual activity or to means of individualisation to acquirers under agreements providing for the alienation of such rights”.

The decree provides that all payments must be transferred to special types of bank account (known as type O accounts). These accounts require government approval for withdrawals.

The decree does not apply to transactions “involving the acquisition of exclusive rights to works of science, literature and art, to the results of performing activities (performance), to phonograms, to messages from broadcasting or cable broadcasting organizations” or to transactions under R15 million (€165,000; $175,000).

The decree complements Decree 322 of 27 May 2022 on royalty payments due to rights holders in unfriendly nations.

The MARQUES Russia Task Force continues to monitor IP developments arising from the Russia-Ukraine conflict and will provide further updates where relevant. If you have any questions, please contact the Chair of the Task Force Tobias Cohen Jehoram.

Posted by: Blog Administrator @ 08.07
Tags: Russia, Decree 430, Putin,
Sharing on Social Media? Use the link below...
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA5279
Reader Comments: 0
Post a Comment


WEDNESDAY, 19 JUNE 2024
Find out more about the MARQUES Annual Conference

The latest episode of the Talking MARQUES podcast covers the 2024 MARQUES Annual Conference, which takes place in Stockholm from 24 to 27 September 2024.

In the podcast, Jesse Hofhuis (AC&R, The Netherlands), Leo Longauer (LVMH, France) and Sara Soderling (AWA Sweden AB, Sweden) discuss the programme, social activities and networking opportunities.

They also provide some insights into what registrants can expect from the host city Stockholm, how to get around and the sights to see.

You can listen to the podcast on the MARQUES website or on Spotify.

The theme of this year’s Annual Conference is “The many traits of the trade mark expert” and it will feature three days of panel sessions, workshops and excursions.

As of today, 576 people from 61 countries have already registered.

The Early Bird booking period closes next Friday 28 June – in just nine days –  so if you have not already booked now is a good time to do so.

Full details including registration options and prices are on the MARQUES website here.

Last year’s Annual Conference was sold out so don’t miss out on your chance to be in Stockholm!

Posted by: Blog Administrator @ 11.26
Tags: Annual Conference, Stockholm, Talking MARQUES,
Sharing on Social Media? Use the link below...
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA5278
Reader Comments: 0
Post a Comment


TUESDAY, 11 JUNE 2024
Changes to EUIPO website

EUIPO has updated its website with several new features.

These include more compact homepage, new and improved information architecture, and enhanced performance, which all aim to improve the user experience and accessibility.

Access to the most used content and applications is now available directly from the homepage. The search process has also been streamlined.

Content is available in the five EUIPO languages based on human translation and in the 18 other official EU languages using on-demand machine translation.

EUIPO says it will also roll out a new User Area in the next few weeks.

It adds that the updates to the current version of the website, which was launched in 2023, are in response to user feedback.

Read more on the EUIPO website here.

Posted by: Blog Administrator @ 14.15
Tags: EUIPO, website, User Area,
Sharing on Social Media? Use the link below...
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA5277
Reader Comments: 0
Post a Comment


MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


The Class 46 Archive






 

 

 

 

 

 


CONTACT

info@marques.org
+44 (0)116 2747355
POST ADDRESS

9 Cartwright Court, Cartwright Way
Bardon, Leicestershire
LE67 1UE

EMAIL

Ingrid de Groot
Internal Relations Officer
ingrid.de.groot@marques.org
Alessandra Romeo
External Relations Officer
aromeo@marques.org
James Nurton
Newsletter Editor
editor@marques.org
Robert Harrison
Webmaster
robertharrison@marques.org
BLOGS

Signup for our blogs.
Headlines delivered to your inbox