Trademarks

Updates

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.

A group of NGOs sent the letter to EU Trade Commissioner  were they opposed the proposal to create a list of countries that do not adequately protect EU IP (“Counterfeiting and Piracy Watch-List"). In support of their allegations they raised the concern that this kind of list would have chilling effect on the developing countries and would be against WTO rules about IP. Specifically they state that the 1994 TRIPS agreement contains some flexibility for developing nations in order to can act in the public interest, such as the ability to issue compulsory licences to make available needed medicines that are under patent and unaffordable. They think that this list would be against such flexibility standard that should allow these countries to protect public health and to promote access to medicines.

In light on announced changes of WHOIS search system as a result of complance with with GDPR, many domain register are having concerns about this issue. CoCCA is one of the first domain registry systems that presented the forthcoming changes. CoCCA announced that from May 15 it will not be possible to see the name, email, phone and physical address of the registrant  in Whois records. This will only be applicable if the registrant is an EU resident or uses an EU-based registrar or reseller (except for registrants who wants their info to be public). Trademark owners that want to access same data in order to protect their legitimate interests, will be able to get historical abstracts online, but prior to paying fee and provided they sign an attestation. These new changes that will affect domain names registers  and system of public search of domain names, raised a huge cerns among trademark community since it will be harder to enforce brand owners’ rights online and especially to fight against domain names registered and used in bad faith.

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

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