Dreyfus

Of the 1930 applications announced by ICANN in June 2012, approximately 500 are due to reach the delegation phase which equates to integration in home territories. This estimation is an indication of the number of safeguards established by ICANN to filter applications.

In addition to ICANN’s examination structure and the objection procedures, candidates also have to face the scrutiny of the GAC1, the organization defending government interests at ICANN. By November 20 2012, 56 governments had issued 242 early warnings against 218 candidates, targeting amongst others the .sucks, .wtf and .vin. These warnings did not necessarily sound the death knell for the applicants targeted: candidates had the possibility of following advice from the GAC in order to modify their application.

Besides, more formal recommendations have also been made by the GAC – GAC Advices – concerning problematic extensions. This is particularly the case where an extension broaches a sensitive area or contravenes existing legislation.

The full list of GAC Advices was communicated on 11 April last year. Targeting over 500 applications, several categories of recommendations can be highlighted:

• First of all, the GAC expressed formal opposition to the extensions .africa and .gcc (Gulf Cooperation Council)

• Without reaching consensus, certain members of the GAC considered that extensions featuring religious terms (.halal, .islam) are targeting a sensitive issue.

• For a series of extensions, the GAC recommends additional examination criteria before the application process may continue. Amongst others this would include the .date, .vin, .persiangulf or .thai.

• ICANN had not considered that the question of singular/plural could cause confusion. The GAC recommends that ICANN change its stance on this point: such co-existence could lead to a risk of confusion amongst consumers. Such cases should be referred to the contention sets for a ruling to be made.

• According to the GAC, three areas require particular attention: extensions classed as sensitive, consumer protection and regulated sectors. In this way certain families of extensions are under scrutiny, such as: intellectual property (.video, .app, .online, .zip, .movie, .radio), company identifiers (.corp, .inc., .sarl, .limited) or child protection (.kinder, .kids, .toys, .school, .games). To proceed, security measures must be imposed, in particular: the operator of the extension must include in the registration contract a clause confirming that the user will abide by the laws pertaining to the collection of personal data, consumer protection or financial information.

• For certain categories, the GAC goes even further and requires the inclusion of other additional measures. This particularly applies to family extensions involving gambling (.bet, .casino, .poker), the environment (.eco, .organic, .earth) or health (.fitness, .doctor, .medical, .dental) for which the operator of such extensions will have to check official documents such as licenses or authorizations verifying that the operator has legitimate access to such extensions. Post agreement checks should even be made periodically to guarantee maximum security for Internet users.

• Finally, the GAC shared its view on extensions whose registration will be limited or closed. For these groups of extensions, it seemed desirable to filter access to them, provided that the administration of the extension by the operator is carried out in an open and fair manner.

On the other hand, generic extensions (.theatre, .salon, .game, .baby, .beauty, .blog) closed to the general public must be administrated, according to the GAC, in the public interest.

On April 18 last year, ICANN gave formal notification to candidates concerned by a recommendation in the publication of the aforementioned GAC Advices. They then had 21 days in which to present their response to the American authority. In parallel to this, an invitation for public comments was opened by ICANN (from April 23 to May 14 2013). ICANN will take into account both candidates’ replies and public comments in its handling of the GAC Advices, without, however, being bound by their views.

Of the 500 extensions that should be integrated into home territories from this summer, over half (approximately 300) should be .marks with a closed and protected registration, the remainder being generic terms. A new landscape of domain names is looming on the horizon.

To be continued…

Opposition systems offer third parties the opportunity to oppose the registration of a trademark within a certain period of time provided by the applicable law.

An opposition must allege at least one of the grounds for opposition – either absolute or relative – among those that are recognized under the applicable law.  Opposition procedures are closely related to the registration procedure.  They may be part of the initial registration procedure (pre-registration opposition) or directly follow the completion of the registration process (post-registration opposition).

Source: WIPO

The Appellation of Origin is the term used to describe products which are produced, processed and prepared in a given geographical area with recognized expertise.

The Controlled Appellation of Origin (AOC) is a French term and describes products for which all steps of the production process are carried out in accordance with recognized expertise in a specific geographical area that gives the product its essential characteristics.

The Protected Appellation of Origin (AOP) is the European equivalent of AOC and protects product names throughout the European Union.

Source : alimentation.gouv.fr, Commission européenne

Arbitration is an Alternative Dispute Resolution process. It is the procedure by which parties in litigation decide by mutual agreement to submit their disputes (present or future) to one or more impartial and independent experts chosen for their qualifications and expertise in their sector.

The parties are bound by the decision made by the arbitrator or arbitration body.

ICANN has just revealed that the first new gTLD might be opened for registration in the very near future.

Registered to the root of the Internet as soon as the beginning of this summer, new gTLDs implementation should be followed by a Sunrise notice period from August 29th to September 27th this year, for trademarks owners.

ICANN created the Trademark Clearing House (TMCH) so as to allow owners to exercise a better control over the registration of domain names incorporating trademarks. Indeed, once trademarks are registered in the TMCH database, owners benefit from the priority registration period – the Sunrise Period – and are notified when a third party registers identical or similar domain names.

As from now, Dreyfus, TMCH accredited agent, advices owners to register their trademarks in the TMCH Database so as to benefit from this great advantage before the Landrush and the General Availability periods.

Dear Sirs,

As befits this digital era, I am pleased to announce the launch of Dreyfus new website.

More intuitive, the site offers you a detailed presentation of our services, our collaborators and our partners, providing a better understanding of our expertise to the various facets of Intellectual Property: Trademarks, Designs & Models, Patents, Domain Names, New gTLDs, Google Adwords and Social Networks, whilst also presenting a range of flexible, rapid and responsive tools.

Designed in a streamlined and accessible style, our new website is a showcase for the quality of the work we produce on a daily basis: cutting-edge, efficient services that specifically target the challenges faced by your company within a realistic price structure!

Our professionalism and pursuit of excellence have been recompensed by industry awards and we are regularly appraised as being one of the leading firms in Intellectual Property for the quality of our services.

As a further innovation, our internet site now provides direct access to the Dreyfus IPWeb® platform which aims to consolidate and summarize all the information that we make available to our clients. This applies both to the management and follow-up of our existing contracts as well as to our on-going administration.

Please, do not hesitate to send us your observations, suggestions or feedback: Dreyfus is always ready to listen to fresh ideas.

Best regards,

Nathalie Dreyfus.

On May 30th and 31st France’s Midi-Pyrenees region organized a colloquium with the provocative title: “Intellectual Property for small to medium-sized firms in an international context: Jungle Book or Treasure Island?”

A key player in intellectual property and new technologies, Dreyfus was invited to contribute on Friday 31st May in order to share its extensive knowledge and expertise in these domains.

Nathalie Dreyfus, the firm’s director, gave her presentation at a round-table gathering concerning the most recent challenges at the heart of business development. From identity theft to the development of strategies for trademark protection on Internet, especially in relation to new generic extensions, she enumerated the risks to which companies are exposed every day in a context of international crisis. She also gave advice on how to maximize their presence both on Internet and on the social networks.

Dreyfus also led a workshop that gave participants the opportunity to discuss more general topics such as the presence and protection of trademarks on social networks and search engines, as well as exploring current issues concerning domain names.

Do not hesitate to visit the Midi-Pyrenees Innovation website to review the full program of the colloquium at the following address:

http://www.mp-i.fr/2013/04/la-propriete-intellectuelle-pour-les-pme-dans-un-contexte-international-livre-de-la-jungle-ou-ile-au-tresor/

Formed at the end of the 19th Century, WIPO is a specialized institution within the United Nations. Its official remit is to stimulate creativity and economic development by promoting an international system of intellectual property, notably by facilitating cooperation between member States. Its Head Office is located in Geneva, Switzerland.

The institution is founded on two historical conventions:

• The Paris Convention of March 20 1883 (industrial property)
• The Bern Convention of September 9 1886 (literary and artistic property).

In 1994 an Arbitration and Mediation Center was set up within WIPO to facilitate the extra-judicial (or alternative) resolution of litigation concerning intellectual property rights. Designated as an official ruling body by ICANN, WIPO is much in demand regarding questions of domain names.

Sources: domainesinfo.fr et wikipedia