Trademarks

Updates

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 position mark. 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 position 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.

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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

Actors

(WIPO)

WIPO has developed, together with the

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WIPO has developed, together with the Internet Corporation for Assigned Names and Numbers, the Uniform Domain Name Dispute Resolution Policy (UDRP). Under this policy, WIPO’s Arbitration and Mediation Centre provides dispute resolution services for second level domain name registrations under generic top-level domains (gTLDs). The Centre also administers disputes under a specific policies adopted by some gTLD registries (e.g. .aero, .asia, .travel). In addition, the Centre offers domain name dispute resolution services for over 70 country code top-level domains (ccTLDs). WIPO has developed a ccTLD Program, with the aim to provide advice to many ccTLD registries on the establishment of dispute resolution procedures.

(INTA)

INTA promotes trademarks with the aim of protecting consumers and promoting fair global commerce.

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INTA promotes trademarks with the aim of protecting consumers and promoting fair global commerce. The organisation carries out policy advocacy through amicus briefs and model laws and guidelines. It has carried out research on different issues such as the EU trademark system and country guides, and also publishes the trademark reporter, a journal on trademark law. INTA actively engages with ICANN, and has been carrying out an impact study on the costs of new gTLDs.

(ICANN)

ICANN is responsible for coordinating the evolution and operation of the Domain Name System.

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ICANN is responsible for coordinating the evolution and operation of the Domain Name System. The organisation coordinates the allocation and assignment of names in the root zone of the DNS, and the development and implementation of policies concerning the registration of second-level domain names in generic top-level domains (gTLDs). It also facilitates the coordination and evolution of the DNS root name server system. When it comes to gTLDs, ICANN concludes agreements with registry operators (for the administration of each gTLD), and accredits registrars. In the case of country code top-level domains (ccTLDs), ICANN only goes as far as (re)delegating them on the basis of some high-level guidelines.

(GAC)

The protection of intellectual property rights is one of the many policy areas the GAC has been focusing on.

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The protection of intellectual property rights is one of the many policy areas the GAC has been focusing on. In its role as a consultative body to the ICANN Board, the committee has issued advice tackling the protection of trademarks, especially in the context of the New gTLD Program. In the GAC’s view, the introduction of new gTLDs should take into account third party rights, including trademarks, while registries should put in place policies for limiting the need for defensive registrations by trademark holders, and for minimising cybersquatting. Moreover, domain name registration policies should include prohibitions against trademark infringements.

(WTO)

The WTO’s involvement in e-commerce-related issues started in 1998, when the Ministerial Conference adopted th

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The WTO’s involvement in e-commerce-related issues started in 1998, when the Ministerial Conference adopted the Declaration on Global Electronic Commerce, which called for the development of a work programme on e-commerce. The programme, also adopted in 1998, provides a definition for e-commerce and sets out responsibilities for WTO bodies in e-commerce-related areas. Other e-commerce-related initiatives undertaken by the WTO include: a moratorium rendering electronic transmissions free of custom duties among WTO member states; a dispute resolution mechanism which addresses, among others, cases involving electronic transactions; and the annual WTO Public Forum. There are ongoing discussions among WTO member states as to whether the organisation should play an increasing role in e‑commerce.

(GCIG)

As part of its research on Internet-related dimensions of public policy, the Commission also looks at issues c

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As part of its research on Internet-related dimensions of public policy, the Commission also looks at issues concerning the protection of intellectual property rights, including trademarks, in the online space. In 2016, for example, it published a paper on the implications of new generic top-level domains (gTLDs) for trademarks and freedom of expression. A 2016 paper on Internet intermediaries as platforms for expression and innovation discussed, among others, the liability of Internet intermediaries for trademark infringement by their users. Both issues have also been addressed in a paper on Governance of international trade and the Internet: Existing and evolving regulatory systems.

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

Session reports

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