Trademarks

Updates

On 2 November 2018, the Delhi High Court held online marketplace Darvey.com liable for selling allegedly counterfeit Christian Louboutin products. The plaintiff claimed intellectual property rights, considering the platform used the name and image of Louboutin as meta-tags to attract traffic on their platform. Darvey.com claimed that they do not sell any product, but merely enablebooking of orders through their online platform. The ruling of the court observed that when an e-commerce platform is commissioned over unlawful acts, it is no longer a mere passive transmitter or online intermediary. In the same ruling, the court required Darveys.com to present the contact information of all sellers; request certificates from sellers that their products are not counterfeits; and to notify trademark owners before having products available on the platform. The case set a relevant precedent to make clear the extent of safe-harbour possibilities under the Information Technology Act. Since the Baazee.com case-related to the sale of obscene videos, e-commerce businesses have denied liability for products uploaded by users.  

The Council of Europe (CoE) adopted a new customs action plan 2018-2022 that should help customs authorities combat intellectual property rights (IPR) infringements. This plan should contribute to the better enforcement of IPR, especially in regard of trading with counterfeit goods, as well to strengthen co-operation between relevant authorities. In following period, the CoE should develop a road-map for the implementation of this plan and also to monitor its implementation.

After many years of negotiations about The North American Free Trade Agreement (NAFTA) between U.S., Canada and Mexico, U.S. and Mexico announced that they have reached new preliminary trade agreement. On of the most important changes in this agreement are related to IP and better enforcement of IPR, especially in piracy and counterfeiting. Among others parties have agreed to impose criminal measures against camcording in movie theaters, as well as cable and signal piracy. However we still need to wait for final text to see all definite changes.

On EU Blockathon held in Brussels that was aimed to address issues of piracy and counterfeit via blockchain based solutions, 28 companies and organization signed MOU on online advertising and intellectual property rights. This MOU is effort of EU commission in order to establish cooperation of right-holders with advertisers, advertising intermediaries and other actors in order to efficiently fight against violations of IPR. In that respect this cooperation should minimize placement of advertises in various websites and mobile apps that infringe IPR or disseminate such content/goods.

After many cases that Christian Louboutin fought over its red-soled high-heeled shoes, ECJ brought preliminary ruling on this matter in its favor. The initial case is referred by The District Court in The Hague which issued the preliminary injunction against Van Haren which was selling its own version of red-soled high-heeled shoes. The debate was around the question if the trademark that consists of a colour applied to the sole of a high-heeled shoe, consists only from a shape and as such can not have protection as a registered mark, or this is positional mark. In spite of oposite opnion of Advocate General, the court stated that this mark is not related to any specific shape of sole for high-heeled shoes since its essential element is a specific colour (red), as it was described in its previously filed trademark registrations. Hence the ECJ said that the red colour applied to the sole of a women’s high heel shoe is a positional mark.

Apple lost a lawsuit over trademark infringement against local Norwegian shop that was selling smartphone parts. Henrik Huseby, owner of small electronic repairs shops that repairs screens for iPhones has imported screens from China that had apple logo but blanked with marker. Norwegian custom authorities that sized one of these shipments notified Apple about this situation. Apple immediately sent notice and takedown letter to Henrik asking  for the goods to be destroyed and sought a settlement in order to avoid the trial. Henrik refused to act upon this letter stating that screens were refurbished originals. Apple initiated lawsuit against Henrik stating that these parts were not manufactures by it and that even if they were refurbished originals they were imported against EEA resale legislation. Henrik argued that in this case Apple want to establish its monopoly over repair its own products, where it is known that it will not sell its parts to anyone else but authorized iPhone shops. Moreover, he argued that Apple logo was not relevant for his marketing (this is why its was banked wiht marker) and that he was not representing itself as authorized Apple shop. The court ruled in favour of Henrik, dismissing Apples claims over trademarks infringement, based on location and function of Apples logo on the sized goods. Also the court considered that there were no violation of Norwegian impots law since Apple logo was not visible nor used in marketing. Apple appealed on this decision.

Knowledge and ideas are key resources in the global economy. The protection of knowledge and ideas, through IPR, has become one of the predominant issues in the Internet governance debate, and has a strong development-oriented component. Internet-related IPR include copyright, trademarks, and patents.

Trademarks are relevant to the Internet because of the registration of domain names. In the early phase of Internet development, the registration of domain names was based on a first come, first served basis. This led to cybersquatting, the practice of registering names of companies and selling them later at a higher price.

 

Mechanisms for the protection of trademarks

 

This situation compelled the business sector to place the question of the protection of trademarks at the centre of the reform of Internet governance, leading to the establishment of ICANN in 1998. In the White Paper on the creation of ICANN, the US government demanded that ICANN develop and implement a mechanism for the protection of trademarks in the field of domain names. Soon after its formation, ICANN introduced the WIPO‑developed Universal Dispute Resolution Procedure (UDRP).

The recent introduction of the new gTLDs reinvigorated the relevance of trademark for domain names, ICANN, and overall IG.

ICANN’s Trademark Clearinghouse (TMCH) authenticates information from rights holders and provides this information to registries and registrars.

The UDRP - the primary dispute resolution procedure - is stipulated in advance as a dispute resolution mechanism in all contracts involving the registration of gTLDs (e.g. .com, .edu, .org, .net), and for some ccTLDs. Its arbitration awards are applied directly through changes in the DNS without resorting to enforcement of trademark protection through national courts.

Events

Resources

Publications

Internet Governance Acronym Glossary (2015)
An Introduction to Internet Governance (2014)

Papers

Competition in the Software Industry: the Interface between Antitrust and Intellectual Property Law (1999)

Reports

2016 Special 301 Report (2016)
Report of the Director General to the WIPO Assemblies (2015)

GIP event reports

GNSO Review of all Rights Protection Mechanisms (RPMs) in All gTLDs PDP Working Group Face-to-Face Meeting (2017)
ICANN58: GNSO-GAC Facilitated Dialogue on IGO & Red Cross Protections (Session 2) (2017)

Processes

Click on the ( + ) sign to expand each day.
 

The GIP Digital Watch observatory is provided by

in partnership with

and members of the GIP Steering Committee



 

GIP Digital Watch is operated by

Scroll to Top