Entries categorised as Trade Marks in Cyberspace:

Five key takeaways from ICANN’s London meeting

Posted On August 11, 2014
In Domain Names, Trade Marks in Cyberspace / Comments Off

Despite what has been characterized as organized chaos on the ground during ICANN’s London meeting in late June 2014, five topics emerged for brand owners and new generic top-level domain applicants.

According to Katten’s report of the meeting, the five key topics were:

  1. Geographic Terms Trump Trademarks, According to the Argentina Proposal
  2. Conflicts Addressed Between Trademark Sunrise Protection and the Domain Name Collision Mitigation Framework
  3. The Circumvention of Rights Protection Mechanisms Has Reached a Boiling Point
  4. Improvements for a Second Application Round Are Already Under Formation and Consideration
  5. ICANN Accountability Has Taken Center Stage in the Internet Assigned Numbers Authority (IANA) Transition


Takeaways from ICANN 49 in Singapore

Posted On May 5, 2014
In Domain Names, Governance of Cyberspace, Trade Marks in Cyberspace / Comments Off

ICANN 49 addressed, among other things, the following issues:

  • the Governmental Advisory Committee (GAC) safeguard advice;
  • the Qualified Launch Program (QLP) for registry operators;
  • Specification 13 to the new gTLD Registry Agreement for dot brand registries;
  • the Internet Assigned Numbers Authority’s (IANA’s) transition away from the US National Telecommunications and Information Administration (NTIA);
  • rights protection mechanism (RPM) circumvention; and
  • intergovernmental organization (IGO) abbreviations.

For a summary of the outcomes on these issues, see Katten’s takeaways from ICANN 49.

ICANN puts off decision on .wine and .vin gTLDs (again)

Posted On April 8, 2014
In Domain Names, Trade Marks in Cyberspace / Comments Off

ICANN’s New gTLD Program Committee (NGPC) has again deferred consideration of the applications for <.wine> and <.vin>, in response to concerns raised by the Governmental Advisory Committee (GAC) and vigorous objections from the wine industry.

According to the NGPC decision, ICANN has deferred contracting for the <.wine> and <.vin> gTLDs “in order to provide additional time for the relevant impacted parties to negotiate, which they are encouraged to do”.

In addition, the NGPC recommends that the full Board of ICANN “consider the larger implications of legally complex and politically sensitive issues such as those raised by GACmembers, including whether ICANN is the proper venue in which to resolve these issues, or whether there are venues or forums better suited to address concerns such as those raised by GAC members in relation to the .WINE and .VIN applications”.

Italy implements administrative take-down of sites selling fake goods

The Italian Antitrust Authority now has the power – limited to the Italian territory – to shut down clone websites selling counterfeit or pirate goods.

IP Law Galli reports that the Antitrust Authority has used its power to shut down hundreds of clone websites in response to complaints lodged by IP rights owners.

WIPO debates whether governments can, or should, own their country names

Posted On March 21, 2014
In Trade Marks in Cyberspace / Comments Off

A proposal has been tabled at the World Intellectual Property Organization (WIPO) for a non-binding instrument on the protection of country names against misleading trademarks.

IP Watch reports that the proposal was received with interest by some member states while others, like the United States and South Africa, raised strong concerns.

US court holds no infringement to use competitor’s trademark as a Google AdWord

Posted On October 8, 2013
In Trade Marks in Cyberspace / Comments Off

A US appeals court has ruled it is not an infringement to use a competitor’s trademark to activate Google sponsored links.

In 1-800 Contacts, Inc. v. Lens.com, Inc., it was argued that the purchase of keywords matching 1-800 Contacts’ trademark caused “initial-interest confusion” in customers, resulting in their clicking on a link to Lens.com’s website when their original interest was in visiting 1-800 Contacts’ website.

The Court of Appeals for the Tenth Circuit found that, because  only 1.5% of searchers actually clicked on the sponsored link, it could not be concluded that Lens.com’s keyword activity was likely to lure consumers away from 1-800. Accordingly, there was no likelihood of confusion, and so no trademark infringement.

Display of TM on non-Canadian website may be use of TM in Canada

Posted On September 11, 2013
In Trade Marks in Cyberspace / Comments Off

A Canadian Federal Court has confirmed that use of a trademark on a non-Canadian website available in Canada and  in association with services provided in Canada constitutes use of the trademark in Canada, reports Smart & Biggar Fetherstonehaugh.

Governments disagree on GI protection at TLD level

Posted On August 2, 2013
In Domain Names, Trade Marks in Cyberspace / Comments Off

Despite strong lobbying from the US and Australian governments, the ICANN GAC has not removed its advisory ban on registration of geographical indications as top level domains, IP Watch reports.

Key topics to follow during ICANN 47

Posted On July 18, 2013
In Domain Names, Trade Marks in Cyberspace / Comments Off

See this Katten alert for a good summary of key issues for the Durban meeting of ICANN 47, including both developments in the new generic top-level domain (gTLD) program and discussions of Internet policy processes.

US advertisers adopt best practices for online infringement

Posted On July 16, 2013
In Copyright in Cyberspace, Trade Marks in Cyberspace / Comments Off

Several United States-based advertising networks have announced a set of best practices to address online infringement by reducing ad revenue to websites engaged in piracy and counterfeiting, reports IP Watch.