Nathalie Dreyfus has been admitted as panelist and arbitrator in the CIRA Panel

Nathalie Dreyfus has been admitted as panelist and arbitrator in the CIRA Panel (Canadian Internet Registration Authority).

The CIRA Panel is a new Alternative Dispute Resolution Centre which belongs to the British Columbia International Commercial Arbitration Centre (BCICAC).

The main aim of CIRA is to settle disputes concerning domain names through a quick and relatively low cost mechanism, led by out-of-court arbitrators who meet certain requirements according to CIRA’s Canadian Presence.   

The process is initiated by a complaint received in the CIRA Complaint Center which locks the disputed domain. A copy of the complaint is redirected to the Registrant who has twenty days to deliver a response. If so, a Panel of experts is appointed, whereas if there is no response the complainant may elect a single panelist. In both cases, a decision is given within twenty one days.

This decision is directly implemented by the CIRA.Since BCICAC was founded more than hundred cases have been solved by this institution.

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Do not hesitate to contact us.

Spain: Proof of use of the trademark, a new mean of defense in opposition proceedings

On April 30, Spain finalized the reform of its trademark law, started in late 2018. From that date, the Royal Decree 306/2019 of 26 April 2019 amending the Regulations under Spanish Trademark Act 17/2001 entered into force.

The possibility to request proof of use in defense in opposition proceedings is one of the main innovations introduced into Spanish law by the 2018 reform. The European Union already provides for such a means of defense in article 47 of the European Union Trademark Regulation (EUTR). Thus, this reform of Spanish law is part of the welcome European harmonization.

 

The Royal Decree 306/2019, under discussion, establishes how this new defense will be implemented.

 

Thus, from now on, proof of use may be required for all opposition proceedings filed since May 1, 2019.

This mean of defense can be invoked against Spanish trademarks and trade names and against international trademarks designating Spain. However, not all prior right can be contested. To be challenged, the prior trademark or trade name must have been registered for at least five years. The holder of such prior rights will then have the burden of proof of the actual exploitation of the rights claimed.

 

If the evidence provided is insufficient, then the opposition request will be rejected. The relevant prior right or the existence of a likelihood of confusion will not be taken into consideration for the resolution of the dispute.

 

In this respect, the documents provided as evidence must refer to the goods and/or services for which the prior right is registered. If the opposition is based on part of the goods and/or services, then the right holder must provide the proof of a genuine use only for those goods and/or services. The supporting evidences must establish the real and serious exploitation of the prior right. This exploitation is established when products and/or services are offered for sale and put into the market.

 

The documents communicated must indicate the place, date, extent and nature of the sign’s use. For example, that may be catalogues, brochures, invoices, labels, advertisements, etc. Items provided by third parties constitute concrete and independent evidence. As such, their probative value is higher than the value given by the prior trademark owner’s evidence.

The possibility of requiring a proof of use as a mean of defense in opposition proceedings is a valuable asset to defeat such action. Therefore, before starting any opposition proceedings, a trademark owner should be in a position to provide proof of use.

 

The Royal Decree has set out the conditions to be met. It remains to be seen how much room for maneuver will be permitted for the Spanish Trademark Office to assess the validity of the evidence provided.

 

Dreyfus assists its clients worldwide in their trademarks’ protection and defense strategies. Do not hesitate to contact us for an audit of your trademarks portfolios in Spain!

China : The retroactive effects of the new amendment governing the alternative resolution procedure regarding <.cn>.

In our previous publication, we announced that the China Dispute Resolution Policy (CNDPR) extended the time limit within which to admit complaints about domain names.

Following the information provided by the CNNIC, we now know that the change to the new limitation period has retroactive effect.

 

The new amendment will apply to domain names that have been registered before its implementation, on 18th of June 2019. Hence, all the domain names registered before and after this date will benefit from this new 3 year time-bar, instead of the previously set term of 2 years.

Thus, complainants considering actions against domain names in the <.cn> space will have a greater time limit, given by the retroactive effects.

However, this new amendment shall not apply to disputes that have already been submitted. Only the upcoming complaints about <.cn> domain names will benefit from this new term.

To sum up, this retroactive effect applies to domain names registered before and after the implementation of the amendment. Only the submitted disputes, currently in progress, will still be governed by the previous Dispute Resolution Policy.