After leading a study concerning the likelihood and impact of collisions between applied-for new gTLD strings and non-delegated TLDs, ICANN suggests to the community mitigation measures in order to avoid collisions.
Those problems may occur when local top-level domains in private namespace reach the public DNS while they already exist or when certificate authorities issue X.509 certificates for domain names that are not resolvable in the public DNS.
The study emphasises three categories of strings by the potential risk of name space collision: low risk, uncalculated risk and high risk. For each one of them, the program offers a determined and made to measure management process.
In this way,
for low risk gTLD strings, the study proposes proceeding with contracting and delegation of these strings but recommending additional mitigation measures without impacting their timeline for delegation,
for uncalculated risk gTLD strings, the delivery date should be extended by 3 to 6 months, and
for high risk strings which are .home and .corp, the process will be delayed until those strings goes to low risk category.
The new gTLD string delegation process is long and delicate. At this stage, all these steps are proposals only and opened to the Internet community’s comments.
The report published by European Commission for the year 2012 presents statistical information on the number of detentions and other customs actions over the past year(1).
The number of individual articles detained are down over 65%. Indeed 114,772,812 articles have been detained in 2001 to 39,917,445 in 2012. However, regarding instances of imports, the results have remained quite stable (91,245 detentions in 2011 to 90,473 in 2012).
This shift is due to the availability of goods online which infringe intellectual property rights. The goods arrive to Europe generally through post and couriers.
The articles come for the most part from China for CD, DVD and tobacco, Marocco for foodstuffs and Bulgaria for packaging materials.
In 90% of the cases, detained goods were destroyed either after the owner of the goods and the right holder agreed on destruction or after the right holder initiated a court action. The report says also that 8% of detentions have been released because the right owner didn’t react to a notification or because the goods were genuine.
It is important to set up a customs surveillance and seizures. Our law firm can advice and assist you to set up a monitoring of your company trademark at customs level in France, as well as in the European Union.
Dreyfus has been nominated “Boutique IP Law Firm of the Year” (1) in “Acquisition International” magazine’s “Legal Awards 2013”.
Nathalie Dreyfus explains in an interview that the firm’s expertise in the protection and enforcement of trademarks on the internet has played a key role in this recognition.
Since 10 years, Dreyfus routinely handles litigations and has acquired the necessary experience to anticipate the outcomes of disputes.
Dreyfus also points out that there are some trends in the field of intellectual property. Examples would include not only the opportunity to file – and protect – an international trademark in many countries in one shot, but also “the interdependence between intellectual property and the digital economy” with the launch of new gTLDs which will accelerate the need “to adjust the legal strategies of companies relating to the presence of their trademarks on the internet.”
Dreyfus has also been described as “excellent” in the rankings of the best IP law firms of “Décideurs” magazine (2). We find out what serves to distinguish the firm from the rest: a stronger “relationship between the protection of intellectual property and new technologies, especially concerning domain names” and its active involvement “with arbitration centers and with ICANN in particular.”
In a recent decision (1), the Trademark Trial and Appeal Board (TTAB) sustained an opposition requesting the rejection of the trademark EPI-KEY based on a likelihood of confusion with the trademark EPIPEN.
The TTAB is a body within the United States Patent and Trademark Office (USPTO) responsible for hearing and deciding certain kinds of cases involving trademarks. More specifically, the Trademark Trial and Appeal Board decides adversary proceedings involving notably oppositions to the registration of trademarks and petitions to cancel trademark registrations.
The main point to emphasize in this decision is the rejection of the applicant’s argument that any risk of confusion can be avoided by the need that the medicines be prescribed by a doctor.
Both marks were used for medical treatment of allergies with epinephrine. The Board found plausible that the patient requests the wrong device to his doctor thinking it was the other one. Patients and even physicians can also have the mistaken belief that both medicines are manufactured by the same company.
So, even if the products are prescribed by professional intermediaries there may still be a risk of confusion between two marks.
(1) Mylan, Inc. v. Beaufort County Allergy, opposition No. 91195868 (USPTO TTAB June 19, 2013)
AFNIC, the French domain name registry, will accept soon domain names with one and two characters, following its German and English counterpart’s footsteps. The idea was refused for a long time because of possible confusions with country extensions published by the International Organization for Standardization (ISO). However, there are few reasons to stop such registrations.
We can find indeed some restrictions leading to confusions, such as existing extensions in the AFNIC registry (<fr.fr>) and country or second level extensions (<uk.fr>, <co.fr>). Nevertheless, there isn’t any problem registering domain names like <a.fr> or <2ü.fr>.
Moreover, short domain names are popular. They are in limited number and easy to remember. Hence, their acquisition is not easy and the competition is tough.
Contrary to the German registry which offered in 2009 a procedure to best and quicker bidders, the English system processed by stages, a fairer method.
AFNIC plans to offer a procedure available by the majority of internet users and may propose different ways of release, such as « first come, first served » or an auction system.
Customs officers play an important role in identifying, at border-crossings, goods suspected of counterfeiting trademarks, models or patents.
What means do Customs officers have at their disposal to prove that articles are counterfeit?
Two types of seizures are permissible by law, one being preventative, the other prohibitive.
As a preventative measure, Customs authorities protect firms that have filed an interception request. This allows Customs officers to hold any suspicious goods for a period of ten days, limited to three days in the case of perishable goods.
As a prohibitive measure, Customs authorities implement a process of seizure where counterfeit is proven and thereby ensure the immediate withdrawal of counterfeit goods from sales channels, whilst at the same time taking the offenders to court.
PREVENTION: Customs retention
Intellectual property rights holders must file an interception request in order to activate a Customs watch which keeps them informed about the importation into France of allegedly counterfeit products.
When?
The request is made by simply providing the certificate of registration for a trademark, model or patent delivered by the National Institute for Intellectual Property (INPI) or other registration office. This measure is preventative and can be done before any cases of counterfeit are confirmed.
How?
The request form asks for certain information that ensures that Customs controls are effective:
The intellectual property title deed
Whom to contact (technical and administrative staff)
A technical description of the genuine goods, production lines and transport itineraries
A description of the illegal copy if the counterfeit goods are already in circulation
Duration?
The interception request is valid for one year from the date the dossier is approved by the administration. The cover can be renewed by written request. All information provided is confidential and may not be disclosed by Customs!
The advantages of the Customs retention process:
The information gathered enables Customs checks to be better targeted and therefore more effective.
The interception request is a prerequisite before any suspicious goods can be held for 10 days.
This procedure is carried out in close collaboration with rights holders
In order to file an interception request, the rights holder (or their representative) must comply with the following two conditions:
The holder must provide a very detailed description of the goods in order to help Customs officers spot possible counterfeit items.
This must be accompanied by relevant proof confirming that the request comes from appropriate rights holder.
In order to facilitate Customs checks and make them more effective, specific Customs training may be necessary. The rights holder has the possibility of training Customs officers in order to help authenticate goods examined by interception request.
PROHIBITION: Customs seizure
The intellectual property rights holder or their exclusive licensee must make a formal request to the president of the ‘Tribunal de Grande Instance’ (TGI or High Court) since seizure of counterfeit items comes under their jurisdiction. This seizure can be real or descriptive. In order to validate the seizure, the applicant must assign either as a civil entity before the TGI or directly before the Criminal Court within 15 days.
Civil responsibility
The lawsuit for counterfeit brought before the competent TGI authorities follows the rules laid down by common law and the case is to be heard within 3 years of the date of infringement. The case is usually brought by the rights holder, but their exclusive licensee can act in place of the holder if the latter, having been invited to proceed, declines to do so, unless the licensing agreement specifies otherwise.
When filing a lawsuit for counterfeit, the IP rights holder must prove that the act or acts of counterfeiting have occurred in accordance with the general principle of article 9 of the Civil Code according to which “it is the responsibility of each party to prove, in accordance with Law, the necessary facts in support of their claim.” Counterfeiting may be proven by all lawful means, but infringement seizure is the method most frequently used by rights holders.
In its final decision, the Court can ban the production of all counterfeit items, order the confiscation of goods bearing the counterfeit brand and award damages to the trademark holder in order to compensate all losses due to counterfeit.
Penal responsibility
This type of case is to be filed under the same conditions as with a civil case, in other words either by the trademark holder, or by his exclusive licensee. The public lawsuit is to be filed either by The Crown or by the victim via a civil case. Since counterfeiting is a crime, the case is to be heard within 3 years. This offence is punishable by four years imprisonment and a fine of 400,000€ (if the offence is carried out by organized crime the sentence can be extended to five years imprisonment and a 500,000€ fine). Judges have the right to pass additional sentences at their discretion: they can publish both the verdict and the sentence, as well as confiscating items and objects used to commit the crime.
Customs interceptions at French borders provide IP title holders with effective protection of their rights. Community Law established by two regulations(1) also ensures that Customs checks regarding IP rights are very effective.
On June 11 2013 the European Parliament adopted new regulations relating to Customs operations in order to ensure a greater respect for IP rights. This will be applicable from January 1st 2014 onwards and will replace European Community regulation 1383/2003 by introducing certain improvements:
The simplified procedure will lead to the destruction of counterfeit goods, without a Court Order, providing that the rights holder gives their agreement as must the importer.
Those who are surprised to receive small quantities (under 2 kilos) of counterfeit goods in the post, will have 10 days in which to consent to their destruction without having to pay for their storage or removal.
The list of protected IP rights has been extended to provide even greater protection (protection of commercial names, topographies of semi-conductors…).
The existing process for the rapid destruction of counterfeit goods is now compulsory in all member States.
Exercising the right to be heard has been harmonized concerning those for whom the seizure may be detrimental.
We cooperate regularly with Customs authorities in the fight against counterfeit and piracy in every area of intellectual property. We are available to advise you on the best strategy to adopt in order to establish an effective Customs watch.
(1)Regulation no 1383/2003 of July 27 2003, supplemented by regulation no 1891/2004 of October 21 2004
The Trademark Claims Service is a service offered by the Trademark Clearinghouse (TMCH). During the first 90 days of the general opening, alerts are sent to applicants wanting to register a name identical to the trademark registered with the TMCH including to the holders of the said trademark if the name could be registered.
The novelty lies in the service of sending notifications for post-registration to trademark holders, which will be expanded indefinitely whereas the pre-registration alerts directed to the applicant will only be active during the initial 90 day period.
This expansion of the service is an advantage for trademark holders as they will remain informed of the registration of names and may act accordingly even after the initial 90 day period. However the pre-registration alerts will be stopped, but this situation may be amended if the registrars are willing to cooperate in this matter.
This service is of particular interest to the extent that it enables monitoring – albeit limited- of trademarks registered with the TMCH. It is therefore perfectly suited to the defense of secondary trademarks which are not subject to extensive monitoring.
On 6 November 2013, The Paris International Chamber of Commerce published an important decision in the development process of new strings: the designated experts rejected the Limited Public Interest objection filed by the Independent Objector against the application made by the Afilias ltd Company for the delegation of the string .HEALTH (for more details on this decision go to: http://newgtlds.icann.org/sites/default/files/drsp/15nov13/determination-1-1-868-3442-en.pdf).
This decision sets a precedent: it is the first decision to be made following a Limited Public Interest objection.
As a reminder, 4 types of objections were available to oppose an application for one of the new strings: the String Confusion Objections, Legal Rights Objections, Community Objections and finally the Limited Public Interest Objection (http://newgtlds.icann.org/en/program-status/odr).
Limited Public Interest objections can only be filed by the Independent Objector when he considers that the tld was “in breach of morality and public order as defined in the general principles of international law” (Applicant’s Guide, art 3.5.3). This clause covers unjustified violent actions, racism, child pornography and anything that would be contrary to the principles of international law in accordance with international conventions (specified in the Applicant’s Guide, 11 in total, from the Universal Declaration of Human Rights to the Convention on the Rights of the Child).
The Independent Objector has the task of defending the interests of Internet users and must be represented in the International Chamber of Commerce in Paris (CCIP). Nominated by ICANN in May 2012, the Independent Objector is currently Professor Alain Pellet (official website http://www.independent-objector-newgtlds.org).
Accordingly, the Independent Objector, considering that the granting of .HEALTH to the Afilias ltd Company would be against the interests of Internet users, filed an objection against their application. For the Independent Objector, the term “health” does not designate something anodyne but rather “a crucial, existential need for every human being” recognized as a fundamental right in several International Conventions such as the Universal Declaration of Human Rights in 1948.
Based on this observation, the Independent Objector stated that the way that Afilias ltd intended to use the word “health” would not respect the fundamental right of access to healthcare, would not ensure the promotion of this right in the public interest and would be used in the same way as the other strings for which the Afilias ltd Company had applied, such as “.wine” or “.casino”. Moreover, he stated that several NGOs as well as the French and Malian governments had expressed their concern as to the reliability and loyalty of the .HEALTH string in the event of it being granted to a private Company.
In its defense, Afilias ltd pointed out that the tld .HEALTH could in no way be considered to be “in breach of morality and public order as defined in the general principles of international law” and that an evaluation of this nature concerning the potential future use of the string, and not the string itself, went beyond the mandate of the Objector.
In addition, Afilias ltd highlighted the different rights protection mechanisms that it has voluntarily set up, in particular a hotline for non-conformity breaches of <.HEALTH> and specific communication channels with national authorities and international organizations in order to ensure that .HEALTH functions in accordance with current legislation.
The CCIP experts rejected this interpretation by Afilias ltd. They confirmed that it was not possible to evaluate the compatibility of a string with public order and morality without taking into account the context of the application, including the probable effects on Internet users once the string was functioning. They also recognized that the .HEALTH string would operate in a sensitive domain in which the risks of negligence or abuse, as with fraud, are particularly high. All sides agree on this point, considering that the word « health », linked to the health sector, inspires a high degree of consumer confidence by persuading them that information available under a certain domain name has been scientifically proved.
Nevertheless, the experts do not share the suspicions of the Independent Objector concerning the management of the .HEALTH tld by a private Company. The experts stated that without proof to the contrary, they could not support the assertion made by the Objector that a private Company cannot, in a serious and responsible way, manage this string. Furthermore, the experts reminded the Objector that even if several NGOs and two countries (France and Mali) support this view, the World Health Organization, holding a unique position in the context of public health at international level, has implicitly rejected this position.
Based on these factors, the CCIP experts rejected the objection.
The importance of this decision is not limited to its novelty: it provides vital keys to the evaluation of Limited Public Interest objections. Accordingly, it is now recognized that Limited Public Interest objections will not only be assessed on how they are formulated but also on their potential use.
On November 28, 2013, the Court of First Instance of Paris has declared null and void the trademark Vente-privée.com on the ground that it was a common noun.
L’Express interviewed Nathalie who commented on the decision.
More information on the subject here (French article): link
The program continues and after the launch of 7 new gTLDs this week, Donuts Inc announced 7 new strings for December, 10. As a reminder, the different phases of the program are as follows:
Sunrises :
– Sunrise from 26 November 2013 to 24 January 2014 : the new gTLDs offered are .BIKE, .CLOTHING, .GURU, .HOLDINGS, .PLUMBING, .SINGLES and .VENTURES;
– Sunrise from 3 December 2013 to 31 January 2014 : the new gTLDs available are: .CAMERA, .EQUIPMENT, .ESTATE, .GALLERY, .GRAPHICS, .LIGHTING and .PHOTOGRAPHY;
– Sunrise from 10 December 2013 to 7 February 2014: the 7 new gTLDs will be .CONTRACTORS, .CONSTRUCTION, .DIRECTORY, .KITCHEN, .LAND, .TODAY and .TECHNOLOGY.
To participate in the Sunrise phase, it is mandatory to have a registered trademark in the Trademark Clearinghouse (TMCH) and corresponding SMD files.
Donuts will accept registrations of domain names blocked by ICANN due to domain name collisions. These domain names will only be activated and used once the technical tests are finalised by ICANN.
Please find the complete list of the second-level domains blocked by ICANN on the following link:
http://newgtlds.icann.org/en/announcements-and-media/announcement-2-17nov13-en
Early Access Program :
During one week after each Sunrise, new gTLDs will be available on a “First-Come, First-Served” basis. The application fee for this period will be declining as per weekdays. Some of the Premium names cannot be registered.
General Availability :
As from the 5th, 12th or 19th February 2014 (depending on the starting date of the Sunrise), names will be available to everyone on a “First-Come, First-Served” basis.
New gTLDs: . みんな, the first and only Japanese new gTLD
Google schedules to launch shortly a Sunrise for its first new gTLD, the Japanese IDN みんな(mee-nuh) which means “everybody”.
New gTLDs: Uniregistry will launch .SEXY and .TATOO gTLDs
Uniregistry, which applied for the gTLDs .GUITARS, .CHRISTMAS and .BLACKFRIDAY, will soon announce a first Sunrise of 60 days for its .SEXY and .TATOO gTLDs.
The registry will propose a mechanism for the protection of rights by blocking TMCH registered trademark.
New gTLDs: imminent launch of .MENU
ARI registry will intend to launch its new gTLD .MENU very soon.
The targets of this new gTLD are restaurants, chefs and every person interested in cookery. As the term “menu” is used in 33 different languages, the gTLD .MENU will gather a large online community throughout the world.
New gTLDs and TMCH : the Trademark Claims Service is updated
The trademark Clearing house is to give an indefinite extension of part of the Trademark Claims Service.
The post-registration alerts to trademark holders will be extended indefinitely whereas the pre-registration warning for the registrant will be sent during the original 90-days period.
Possible registration of .UK for summer 2014
Nominet will soon accept .UK registrations provided that these domain names do not already exist under .CO.UK and .ORG.UK gTLDs.
.CO.UK and .ORG.UK customers will have 5 years to decide whether they want to register their existing domain names in .UK or to keep only the .UK address. In the case where a person holds a .CO.UK and another one an .ORG.UK, the UK name will be offered in priority to the .CO.UK owner.
.DE registry adds a domain name restoration service
Since December 3, 2013, DENIC introduced its domain name restoration service, the RGP or Redemption Grace Period, which will allow domain name owners to recover their expired domain for up to 30 days after its expiry.
This service is available for all second-level domain names in case of their accidental deletion. If no redemption is requested during these 30 days, the domain name will be again available for registration.
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Written by Dreyfus16/01/2014 
After leading a study concerning the likelihood and impact of collisions between applied-for new gTLD strings and non-delegated TLDs, ICANN suggests to the community mitigation measures in order to avoid collisions.
