The Thai parliament has just very recently approved its government’s proposal for accession to the Madrid System.
The Madrid System, established by the Madrid Arrangement of 1891 and the Madrid Protocol of 1989, offers a Mark holder the possibility of obtaining protection for his Mark in several countries by making a single application for registration at a national office (such as INPI in France) or a regional one (such as OHMI). This system enables a significant reduction in the costs incurred by multiple applications for national Mark registration. The Protocol also simplifies the administration of Marks by enabling a change or a renewal of registration following the same procedure.
Thailand, South Asia’s second largest economy, is thereby progressively aligning itself with international practice. The aim is to stimulate the country’s economic expansion by enhancing its attractiveness in the eyes of Mark holders.
However, for Thailand’s accession to become a reality, its Parliament would still need to make changes to existing legislation concerning Marks. These amendments, already drawn up by the Thailand’s Mark Office, should be approved within the next six months. Thailand’s accession to the Madrid System is scheduled for 2015.
The draw is presented by ICANN as a equitable and reliable method to determine the order priority for Application process.
ICANN divulged details about the draw. ICANN obtained a licence to hold a lottery in California.
As planned, Applicants can purchase the tickets directly or name a prox to purchase them for them. Tickets will be for sale from December 12 to the morning of December 17th at the Hilton LAX in Los Angeles.
The new gTLD draw will take place on December 17, 2012, in afternoon. It will take place at the Hilton LAX as well and will be open to the public. Applicants do not have to be personnaly present for the draw.
2 –Initial evaluation
Evaluation results to be excepted in August 2013 and Background screening results will be published at the same time as Initial Evaluation Results. First initial evaluation results will be released in priority order starting March 23, 2013.
3 –Withdraw of Application
Still regarding new gTLD’s, six Application withdrawals have been withdrawn (AND, ARE, EST, CHATR, CIALIS and KSB) ad seven additional withdrawals are in progress.
The TLD Application System (TAS) will reopen on November 26th 2012 and Applicants will have to reset their passwords.
On September 10th, the Director General of the World Intellectual Property Organization announced the deposit by the New Zealand government of its accession to the Protocol relating to the Madrid Agreement concerning the International Registration of Marks.
The Madrid System, established by the Madrid Arrangement of 1891 and the Madrid Protocol of 1989, offers a Mark holder the possibility of obtaining protection for his Mark in several countries by making a single application for registration at a national office (such as INPI in France) or a regional one (such as OHMI). This system enables a significant reduction in the costs incurred by multiple applications for national Mark registration.
In a further development, the time limit to exercise the right to notify a refusal of protection was extended from one year to eighteen months, as is the case in the United Kingdom. However, the island of Tokelau, although an integral part of New Zealand’s territory, was not included in the agreement. Only by consultation, made compulsory by the constitutional status of the island and the commitment of the Government of New Zealand to the development of self-government for Tokelau, could such accession be agreed.
The Madrid Protocol will enter into force, with respect to New Zealand, on December 10th, 2012. From that moment on, New Zealand will be available for an International trademark’s filling.
Franck Muller is a Swiss watch manufacturer which slogan is “Master of Complications”. On January 14, 2011, the Bern Commercial Court denied a request of trademark infringement against Franck Muller.
At a watch show in March 2009, Franck Muller presented new models, with a “MEGA” inscription in the center of the watch. Another watch manufacturer, Omega AG, owner of the famous “OMEGA” trademark, considered that the use of a “MEGA” sign for watches was an infringement of its trademark.
In July 2009, Omega filed an action in order to prevent Franck Muller from using the sign in dispute.
According to the Swiss Trademark Act, a sign can only be eligible for registration if it has a distinctive character. It means that the sign has to be sufficiently different from signs commonly used to describe the product. For example, the word “clock” is not distinctive enough for a watch, because it describes the product. Therefore, it cannot be eligible as a trademark.
In the Omega case, the Court decided that the “MEGA” word belonged to the public domain and dismissed Omega’s action. Indeed, Judges considered that the word “MEGA”, a descriptive term from the Greek alphabet which means “super”, “top” or “big”, can only be used to describe the watch, and therefore, cannot be a valid trademark for those goods. Besides, they noticed that the word “MEGA”, in this case, was used to describe a special quality of the watches, precisely a very complex type of clockwork.
Consequently, the use of the sign “MEGA” for watches did not constitute an infringement of the OMEGA trademark.
The Court could have stopped its reasoning at this point, but Judges also examined the plaintiff arguments about the likelihood of confusion.
The likelihood of confusion is required to prove a trademark infringement. It is characterized when a relevant consuming, watch buyers in this case, is likely to be confused or mistaken about the source of the product.
To establish the likelihood of confusion, signs, but also goods or services, have to be compared. The more they are similar, the more the likelihood of confusion will be established.
In the present case, Judges considered that “OMEGA” had to be compared to “MEGA” and “FRANCK MULLER” or “MEGA” and “FRANCK MULLER GENEVA”. Indeed, “MEGA” was not the only inscription on the watch. “FRANCK MULLER” and “GENEVA” were also present. Therefore, the Court found that there was no likelihood of confusion.
In fact, the only likelihood of confusion may have been found in the “MEGA” syllable, but this word belongs to the public domain.
Another condition for the likelihood of confusion to be characterized is the similarity of goods or services aimed by the signs.
Judges decided that goods, watches for both parties, weren’t similar at all. Indeed, they explained, in support of theirs decision that the price of watches were far apart (more than 5 times of difference) from each other. They also noticed that the technology used, the distribution channels and the clientele were different to reject a likelihood of confusion.
This Swiss decision is particular hard on Omega AG. Judges have been very strict on the goods comparison. It is not established that an average consumer would make any difference between those two watches brands, even if one is much more expensive than the other!
Decision: Bern Commercial Court, January 14, 2011, Omega AG v. Franck Muller.
Nominet is the registry responsible for the <.co.uk> domains and operates also a dispute resolution service. On a general level, as the allocation of the domain names has always been offered under the “first come, first served” approach, it can raise conflicts. When someone estimates that a domain name registration has been made in violation of his rights (like a trademark), he can envisage two different paths. Either he can go to court, following the normal process of a lawsuit, or he can file a complaint with Nominet, which provides its own extrajudicial procedure for domain name disputes.
This extra-judicial dispute procedure is set out in a document called “Dispute Resolution Service Policy” (DRS). After the filling of the complaint, parties have to pass through a mediation phase, which, in some cases, ends up, on a settlement. If the mediation fails, an Expert rules on whether there has been abusive registration of the domain name.
The decision of the Expert can be appealed with Nominet, which then appoint an appeal panel of three members from a group called the “Expert Review Group”. The Experts will only state on the abusive nature of the registration as for the first hearing of the case.
Airline operator Emirates has used the Nominet process described before to challenge the registration of the domain name <emirates.co.uk> on the basis of his trademark’s right.
The first Expert decided domain name’s registration was legitimate and Complainant appealed the case directly before Nominet. The panel of Experts reversed the decision and ordered the transfer of the domain name in dispute.
An appeal was then lodge before the High Court of Appeal.
The Judge explained that the DRS policy do not authorize the addition of parallel court proceedings on the point.
Indeed, if that were to happen, then any DRS procedures that were subsequently started would be immediately suspended under paragraph 20 of the procedure[1]. Therefore, “Complainant would be deprived, for the time being, of the proceedings which the DRS held him out”.
Furthermore, the High Court’s judge added that the Nominet procedure was “much more consistent with the conclusion that the question (of abusive registration) is one for the Expert alone”. The abusive registration of a domain name can only be held before Nominet.
The claim was therefore stroked out.
The accuracy of this decision has to be noted. The High Court of Justice made a strict interpretation of the DRS policy in order to protect the Nominet dispute procedure and explained precisely how the addition of a parallel route would have threaten the extrajudicial procedure.
Therefore, there could be no re-hearing of a second degree extrajudicial decision of Nominet. Furthermore, in the light of High Court decision, we might think that there should be no re-hearing of a first degree decision too. Indeed, Judge said the question of abusive registration was for the expert alone and consequently not for a Judge, even regarding a non-appealed decision.
Furthermore, it seems that UK Judges are not bound by a Nominet decision. Indeed, the deny of a “parallel route” highlight the independence between the two procedures. Consequently, it would be illogical to bind a Judge by an Expert decision. Moreover, the possibility of a new judgement, independent from an extrajudicial decision has already been set out for the UDRP by the United States District court in May 10, 2001[2].
The independence of the two procedures keeps them safe one from another. Indeed, the Expert and the Judge do not rule the same way since the Expert could only decide on the abusive registration of the domain name. If a re-hearing of a Nominet decision had been authorized before the Judge, this later would have decided in the light of the abusive registration too. Consequently, this could have created an interference with other law like trademarks. For example, a trademark infringement is independent from any king of abusive behaviour from the infringer. Authorizing a re-hearing would have introduced a new unforeseen kind of exception.
[1] Paragraph 20 of the DRS procedure « Effect of Court Proceedings » :
a. If legal proceedings relating to a Domain Name are issued in a court of competent jurisdiction before or during the course of proceedings under the DRS and are brought to out attention, we will suspend the proceedings, pending the outcome of the legal proceedings.
[2] United States District Court, Eastern District of Virginia, Alexandra Division, May 10, 2001, Dan Parisi v. NetLearning Inc.
The resolution of domain name disputes has become a major issue with the exponential growth of the Internet. Conflicts concerning the ownership of domain names are thus becoming more and more frequent, and their settlements more and more burdensome due to the overload of courts but also due to the high costs that traditional legal procedures can generate. Faced with these challenges, extrajudicial dispute resolution mechanisms have been put in place to offer faster, less expensive and accessible solutions, in order to effectively meet the needs of the parties concerned.
Historical context of domain name dispute resolution in France
Since its introduction in 2011, the SYRELIprocedure (Dispute Resolution System) is the oldest out-of-court procedure offered by the AFNIC (French Association for Internet naming in cooperation). It allows the applicant to request from AFNIC the deletion or transmission of a domain name registered in [.fr] when it would infringe prior rights such as a trademark, a trade name, a right of personality…
This procedure is generally aimed at relatively simple and obvious disputes, where the application of Article L.45 2 of the CPCE is manifest.
The case law of the Court of Appeal of Versailles (2011)
The same year, on September 15, 2011, the Versailles Court of Appeal (RG n°2009/07860) was confronted with a case highlighting the limits of AFNIC’s liability in the management of domain names in [.fr]. The court ruled that AFNIC could not be held responsible for the publication or maintenance of a disputed domain name because it did not have an autonomous jurisdictional competence to settle intellectual property disputes. In essence, the judgment stressed that AFNIC, as a registration office, could not replace national courts to assess the existence or infringement of intellectual property rights. This decision highlighted a major issue: the lack of an impartial and independent mechanism capable of effectively resolving these disputes outside the judicial sphere.
Need for improved domain name out-of-court dispute resolution
It is this question of potential bias, inherent in decisions rendered without the intervention of completely independent third parties (AFNIC being in charge of managing domain names under .fr), which led the legislator and practitioners to foresee a more structured response in the 2013 legislative framework. The objective was to provide a balanced, fast and accessible framework for conflicts related to domain names in .fr, while respecting the rights of holders and applicants.
The integration of new legislative principles
An updated legislative framework
Although the SYRELI procedure has been in place since 2011, the legislative power has strongly reformed the framework surrounding the management of domain name disputes in France. It imposed an update of the out-of-court dispute resolution procedure, by integrating the intervention of independent third party in disputes between right holders and domain name holders.
This reform aimed to strengthen the impartiality of the alternative dispute resolution process and improve the management of cybersquatting and trademark infringement disputes It has made it possible to better regulate procedures by establishing more transparent mechanisms but also by allowing a much more in-depth legal analysis of the situation, necessary for the resolution of complex disputes.
This procedure comes in response to the promise of successive reforms around 2013 and has been introduced in 2016 in partnership with the WIPO, thus allowing an alternative to the SYRELI procedure thanks to the intervention of independent experts selected by WIPO and AFNIC to examine the requests.
These procedures apply to domain names under the extensions managed by AFNIC:
• . fr
• . re (Reunion Island)
• . yt (Mayotte)
• . tf (the Southern and Antarctic Lands)
• . wf (Wallis and Futuna)
• . pm (Saint Pierre and Miquelon)
They are available to any person who can prove an interest in bringing proceedings underArticle L.45 2 CPCE (infringement of intellectual property rights, personality rights, public order, etc.).
The main objective is to increase the decision-maker’s independence in cases that raise more complex issues or require an in-depth legal analysis, outside of AFNIC’s internal college.
AFNIC mediation: towards an amicable resolution
In parallel with the SYRELI and PARL EXPERT procedures, which although of an extrajudicial nature remain particularly formal, the settlement of disputes before AFNIC is governed by a framework close to judicial litigation. Indeed, the consent of both parties as to their presence in the proceedings is not required, the decision rendered by AFNIC is binding on the parties (subject to possible legal recourse) and the proceedings also involve procedural costs. The functioning of these mechanisms thus presents strong analogies with that of legal disputes.
It is in this context that AFNIC has introduced, since 2023, a completely free mediation procedure, based on the consent of both parties, encouraging, de facto, an amicable resolution of disputes upstream or as a complement to one of the amicable dispute settlement procedures. This mediation is distinguished by its speed, its flexibility (generally limited to a few days), its strictly confidential nature and the absence of automatic freezing of the domain name concerned.
Conclusion
The settlements of extrajudicial disputes relating to domain names in [.fr] enriched by the SYRELI and PARL EXPERT systems, constitutes today a set of efficient, fast and adapted solutions. While SYRELIremains appropriate for clear and simple disputes, PARL EXPERT offers a genuine impartial analysis by an independent expert, responding to the historical issue of neutrality highlighted by case law. Finally, the recent mediation procedure introduced by AFNIC complements these options to strengthen the use of amicable dispute resolution.
Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.
1.What is an out-of-court dispute resolution procedure?
The extrajudicial procedure allows a conflict to be resolved without going through the courts. It relies on the intervention of a neutral third party who makes a decision on the merits of the dispute, thus offering a quick and often less costly solution than traditional legal actions.
2.Are the decisions taken under these procedures binding?
The decisions taken within the framework of the SYRELI and PARL EXPERT procedures are not directly binding on the parties. They are binding on AFNIC, which must implement the decision. However, if one of the parties is not satisfied with the decision, it may apply to the competent courts to challenge the decision, in particular to request a judicial review of the merits of the dispute
3.What is the duration of an out-of-court dispute resolution procedure?
The duration of an out-of-court procedure varies depending on the complexity of the dispute. In general, procedures like SYRELI are faster (a few weeks), while complex disputes handled by PARL EXPERT may take a little longer, depending on the elements to be examined.
4.Is it possible to resort to an out-of-court procedure for a dispute concerning a domain name outside the extensions managed by AFNIC?
No, the SYRELI and PARL EXPERT procedures are only applicable to domain names registered under extensions managed by AFNIC (such as .fr, .re, .yt, etc.). For other extensions, there are similar mechanisms managed by other registry organizations.
5.Can AFNIC mediation be used after the decision by PARL EXPERT?
No, the mediation must be initiated before or in parallel with the formal procedures. Once a decision has been rendered in the context of PARL EXPERT, it is no longer possible to resort to mediation. However, the parties can still explore other amicable settlement mechanisms after the decision.
6.Do the parties need to be represented by a lawyer as part of the SYRELI or PARL EXPERT procedures?
No, representation by a lawyer is not mandatory in these proceedings. However, in complex disputes, it may be advisable to seek the assistance of a lawyer or an intellectual property expert to maximize the chances of success.
This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.
Two new States have just joined the Madrid Union, which increase to 87 the total number of contracting parts to the Madrid system.
The accession of Colombia to the Madrid Protocol took place on 29th May 2012 and enters into effect on 29th August 2012. This way, right holders will be able to protect their marks on the territory through an international mark designating Colombia. A posterior designation is also feasible, even if the international mark is anterior to the accession of Colombia. The deadline to notify a provisional protection refusal is extended to 18 months and the notification of a provisional refusal based on an objection could intervene after the expiration of the 18-month deadline.
The Philippines have filed their instrument of accession to the Protocol to WIPO on 25th April 2013, making this effective on 25th July 2012. Contrary to Colombia, an international trademark registered before the accession of the Philippines to the Protocol will not be subject to an extension with respect to them. This way, only the international trademarks registered after the 25th July 2012 may designate the Philippines. Like Colombia, the deadline to notify a provisional refusal of protection is from now of 18 months.
The accession of Colombia could mark a major turning point in the History of the international trademark. Indeed, Colombia is the first country of Latin America to take part to the Madrid system. It is likely that other countries from South America follow this trend, like Mexico, whose Senate has recently adopt a law authorizing a future accession to Madrid Union. Discussions are ongoing in the Intellectual Property Office of New Zealand (IPONZ) for a possible accession.
From the creation of the Madrid Protocol in 1989, the number of contracting parts to the Madrid system is rising steadily, facilitating the international trademark protection of right holders. These recent accessions show again the interest for the Madrid system and the vitality of the international trademark.
Concomitantly to the launch of the .eu on the 7th of December 2005, license contracts blossomed here and there with non-European companies in order to register .eu domain names during the so-called “Sunrise Period”, especially between US companies and European law firms. The juridical set-up is as follows: a USA company willing to reach the European market through a .eu but which did not have any link with the European Community such as headquarters or a principal place of business, had license contracts signed with a trademark attorney located within the Community. The license enabled the trademark attorney to register a .eu domain name on his own name but on the behalf of the trademark holder which did not fulfill the requirements set-up by the article 4, §2b Regulation (EC) n°733/2002 of the European Parliament and of the Council of 22 April 2002[1]. These juridical set-ups emerged during the Sunrise period[2] before the .eu was made available for registration to the general public.
The underlying nature of these contracts appeared doubtful to a Belgian contact lenses company, which decided to raise a preliminary ruling before the CJEU. Through these schemes companies seem to circumvent the requirements laid down by the Regulation.
The Pie Optiek Case
The Belgian company Pie Optiek runs a business of contact lenses and glasses that are sold through an online service. Its core business is done through the website www.lensworld.be. The latter was willing to register a .eu domain name during the Sunrise Period, which started to run from the 7th of December 2005 for a four months period. The said company applied for a Benelux trademark on the sign “Lensworld” before applying for the domain name lensworld.eu. EURid denied the registration of the domain name because Bureau Gevers had already registered it. With the prior registration made by Bureau Gevers the question of the essence of trademark license comes via the backdoor. Another US company, namely Walsh Optical, signed a license agreement with Bureau Gevers. As the US company did not have its headquarters in Belgium, it uses the juridical set-up described above. As a result, Bureau Gevers registered the domain name lensworld.eu before the Belgian company. The question was whether Bureau Gevers can be deemed as a “holder of prior rights” in the light of the EC regulation n°874/2004? Pie Optiek sought relief before the Belgium Courts, its claim was twofold:
– Pie Optiek wanted to obtain acknowledgement that the registration was speculative and abusive and;
– to obtain the transfer of the disputed domain name lensworld.eu.
The advocate general, Mrs Trstenjak in her conclusions released on the 3rd of May, dwells on the necessity to have an establishment within the Community in order to qualify as a registrant for a .eu.
The preliminary ruling which was raised before the CJEU was whether the aforementioned juridical set-up can be deemed as a genuine license contract. Needless to say, the decision of the CJEU was awaited by companies who had entered into these legal arrangements. The arrangement proved to be a genuine threat to non-European companies as the CJEU followed the conclusion of the Advocate General in its decision on July 19, 2012. The CJEU insisted on the utmost importance of having a tie with the EU to qualify as a “holder of prior rights”. The artificial nature of the juridical set-up contravenes the spirit of the Regulation. To quote the CJEU:
” it would be contrary to the objectives of Regulations No 733/2002 and No 874/2004 for a holder of prior right to whom that right is available in its entirety but who does not satisfy the test of presence in the European Union to be allowed to obtain for his own benefit a .eu domain name through a person who satisfies that presence test but to whom that right is not-even partly or temporarily- available”.
This decision could have a domino effect on .eu registrations that were done through this juridical set-up. It highlights that the establishment of a company within the EU is of utmost importance in EU law.
Some figures on the .eu:
-Germany is by far the country which was the most lured by the .eu with 1119210 registrations (figures on the 17th of July 2012, source: www.eurid.eu);
-The last quarterly report of the EURid for Q1 2012 highlighted that the .eu witnessed a growth of 6,1% compared with Q1 2011;
-In term of registrations it is Lithuania, Austria and Slovakia which lead the way.
For a few years until now, the registration of china’s .cn top level domain (TLD) has been accessible with limited access to foreign individuals and companies. The aim was to fight cybersquatting.
However, the Chinese government has decided to reopen .cn registrations to foreign companies and individuals. The China Internet Network Information Centre (CNNIC) has set requirements which came into effect on Monday, September 3, 2012 that foreign companies and individuals have to follow in order to register .cn domain names.
Foreign companies are now able to register .cn domain names in their own name as long as they respect the requirements issued by CNNIC. Registrants have to provide a copy of their business license and the contact ID of the person responsible in the company. A signed letter of Commitment is no longer required.
When it comes to individuals, there is one simple condition: providing a copy of an official document containing the name such as a passport, ID card.
It seems that fighting cybersquatting is not the primary goal of the Chinese authorities anymore !
We can expect an increase of cybersquatting in the .cn
Within the new gTLDs framework, Icann had set a 60 days period for public comments on issued applications, that is to say until August 12. Facing the large number of applications (1927), the numerous comments already issued (more than 5000) and the insisting request for an extension of the public comments period, Icann announced a 45 days extension (that is to say, until September 26, 2012).
Public comments are of high importance insofar as they are then forwarded to the evaluation panels to review and consider as part of application’s evaluation. Comments can be done regarding one of the following criteria:
– String Confusion Objection
– Legal Rights Objection
– Limited Public Interest Objection (morality or public order)
– Community Objection
These comments will not be considered as formal objections and will not by themselves block an application from being evaluated.
Public comments: a dual interest
If the first effect of a public comment is to make publicly known the opinion of a company or of an organization concerning specific applications, and thus to attempt to influence the evaluation panel decision, there is a second effect that appears through the Independent Objector.
The latter, appointed by Icann, is responsible for filing – at his sole discretion – formal objections to applications that would undermine public order or community interests. His role is on the other side limited to the applications that have been the subject of a public comment.
With more than 1900 applications for TLDs covering many fields, the Internet business and SEO ranking of companies will be impacted in the coming years.
Posting a public comment before September 26 is thus the best option in order to make known one’s objection to certain applications.
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Written by Nathalie Dreyfus29/11/2012 
