On November 19th, the Mexican Economy Minister lodged a formal request with the Director General of the World Organization for Intellectual Property, for Mexico to join the Madrid Protocol for the international registration of marks, taking the total of member states to eighty-nine.
For Mexico, Latin America’s second-largest economy and member of the G20, this membership is a continuation of the policies initiated by its government which aim to increase its commercial agreements by the diversification of its partners.
Mexico’s membership will take effect from February 19th 2013 and the designation of Mexico by international mark will thereafter be possible.
In 2012 the Philippines, Colombia and New Zealand had already joined the system of the international mark.
The Madrid System, regulated by two treaties, the Madrid Arrangement (1891) and the Madrid Protocol (1989), enables the mark holder to protect their mark in several countries by making a single demand for registration at their national office (such as the INPI in France) or their regional one (such as the OHMI). Administrated by the international bureau of the OMPI, this system has several advantages: registration in a single language and savings both in the initial and renewal stages.
The EU Parliament has just approved the European Patent, whose not so nice technical name is “the EU patent package”. This package is composed of three parts, the unitary patent, the language regime and the unified patent court.
The new patent will automatically be valid in all 25 EU member states taking part (Spain and Italy are currently outside the new regime, but could decide to join in at any time). The EU patent taxes will costs precisely €4,725 when the new system is up to speed, compared to the average of €36,000 needed today for the same protection. Consequently, the new regime will offer a more effective protection for a lower price.
The application will have to be filed in English, German or French before the European Patent Organisation. If filed in another language, a translation into one of these three languages will be required. The translation costs will be fully refunded for EU-based small and medium-sized companies, non-profit organizations, universities and public research organizations.
Each part of the package should come into effect on January 1st, 2014.
On October 26, 2012, ICANN’s President, Fadi Chehadé, said that he has continued to negotiate the contracts with IBM and Deloitte, the companies responsible for the technical implementation of the Trademark Clearinghouse. Additional terms will be added to the contracts. One of them will specify that ICANN will retain “all intellectual property rights in the Trademark Clearinghouse data”.
This clause is interesting. In Europe, the producer of a database who is making a substantial investment has a sui generis right by law[1] conferring prerogative on the content of the database. Structural elements of the database are also protected by copyright.
This is not the case in the US, where the database protection is ensured by contract, even if copyright could be invoked if the database presents a creative input in its presentation or its arrangement. However, the US Courts are reluctant to apply copyright without proof of real originality.
Therefore, ICANN will protect itself against any extraction or reuse of the Trademark Clearinghouse data.
In this way, ICANN is improving the situation, as no entity will be able to acquire rights on the Trademark Clearinghouse data.
[1] This right is set up under the European Directive 96/9/CE of March 11, 1996 on the legal protection of databases, transposed into French law by the Law of January 1st, 1998, and integrated into the articles L341-1 to L344-4 of the French Intellectual Property Code.
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.
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Written by Nathalie Dreyfus10/01/2013 
