Objection And Dispute Resolution For ICANN’s New GTLDs Registrations

Perry4Law and Perry4Law’s Techno Legal Base (PTLB) have been sharing their views about the proposed new GTLDs by ICANN. Some of our views pertain to legal rights objections under ICANN's new GTLD program,  legal rights objection assistance for new GTLDs by Perry4Law,  trademark and brand protection under new GTLDs registration by ICANN, is your brand and trademark violated by new GTLDs, etc.  

It has been now notified by ICANN that the objection period has been extended to 13 March 2013. Once the objection filing period closes, all objections received will move through a dispute resolution process which will take approximately five months to resolve in most circumstances.

If you need professional legal services for making or defending various objections and disputes under the new GTLDs process, you may contact us if you deem it appropriate.

This dispute resolution mechanism has been incorporated into the new GTLDs process to safeguard the interests of brand, trademark and other rights holders. Any objection by a right holder would be analysed by a pre defined and qualified panel of experts in the relevant subject area. Further, even dispute resolution service providers have also been notified by ICANN and all disputes would be referred to these providers alone.

Objection can be filed in the categories of String Confusion, Legal Rights Objections, Limited Public Interest and Community. If you want to file a formal objection to a new GTLD application, you must contact the appropriate dispute resolution service provider and file your objection electronically. The language to be used is English. If your objection falls in different categories, you have to file each objection separately and pay the accompanying filing fees for each.

While filing such objection(s), you must add your name and contact information as the objector along with a statement as to why you believe you meet the standing requirements. Further, a description of the basis for your objection must be given that must include a statement giving the grounds on which you are objecting and a detailed explanation of the validity of your objection and why it should be upheld. Do not forget to add copied of relevant documents that support your objection. Objections are limited to 5000 words or 20 pages, which ever is less.

You may also be on the receiving end. You may have to defend the objections raised by others against your new GTLDs applications. Within thirty days of the closing of the objections filing window, ICANN will post a Dispute Announcement and notify the providers to begin the objection proceedings. If you are an applicant and have received notice from a provider that you have had an objection filed against your application, you will have 30 calendar days to file your response. If you do not respond within 30 days, you will be in default and the objector will prevail.

If your application has been objected to, you can work to reach a settlement with the objector. This would result in either a withdrawal of the objection or a withdrawal of your new GTLD application. You can also file a response to the objection and enter the dispute resolution process. You can withdraw your new GTLD application, in which case the objector will prevail by default and your application will not proceed.

Perry4Law would like to remind that if you fail to file a response to an objection, the objector will prevail by default. So you must defend and oppose any objection raised by a third party.

Perry4Law and PTLB wish all the best to all parties to the new GTLDs process.

Renewal Of An Expired Trademark In India And United States

Trademark law of India is passing through an interesting and developmental phase. Recently Samsung has raised the issue of international exhaustion of a trademark under Indian trademark law. Similarly, trademarks registrations in India have also increased as India is becoming a favourite destination for commercial activities world over.

Trademark registration in India is regulated by the Trademarks Act 1999 of India. A registered trademark is valid for a period of 10 years that can be renewed for another 10 years at a time. Further, international registration of trademarks under Madrid Agreement and Madrid Protocol can also be explored by applicants. However, the Madrid Agreement and Madrid Protocol and its applicability and implementation in India are still in a flux.

There may be cases where a trademark holder fails to renew his/her/its trademark in time. Renewal of an expired trademark is the only option left in such cases. In India even if the mark has been expired, one can apply for its re-registration. If someone else applies for registration of expired trademark as per the prescribed procedure, owner of expired trademark can file objections at the registry, tribunal or appropriate forum.

In United States (US), to keep the registration alive or valid for all trademarks registrations, except for non Madrid Protocol based registrations, the registration owner must file specific documents and pay fees at regular intervals.  Failure to file these documents will result in the cancellation of his/her/its registration.

For Madrid Protocol Based Registration, after the protection is granted to the international registration and a U.S. registration issues, to keep protection in the U.S., the U.S. registration owner must file specific documents and pay fees at regular intervals. Failure to file these documents will result in the cancellation of his/her/its U.S. registration and the invalidation of protection of the international registration by the United States Patent and Trademark Office (USPTO).

Under Section 8 of the Trademark Act, 15 U.S.C. §1058, a §8 Declaration of Continued Use is required to be given by the trademark owner. The Declaration is a sworn statement, filed by the owner of a registration that the mark is in use in commerce. If the owner is claiming excusable nonuse of the mark, a §8 Declaration of Excusable Nonuse may be filed. The purpose of the §8 Declaration is to remove marks no longer in use from the register.

The USPTO will cancel any registration on either the Principal Register or the Supplemental Register if a timely §8 Declaration is not filed by the current owner of the registration during the prescribed time periods.  The USPTO has no authority to waive or extend the deadline for filing a proper §8 Declaration. Registrations finally cancelled after the expiry of permissible period due to the failure to file a §8 Declaration cannot be reinstated or revived.  A new application to pursue registration of the mark again must be filed.

Holders (owners) of registered extensions of protection to the U.S. (also called §66(a) registrations, registrations resulting from 79’ series applications, international registrations extended to the U.S.) who wish to maintain the protection granted their mark in the U.S. pursuant to the Madrid Protocol must file an affidavit or declaration of use in commerce or excusable nonuse to avoid cancellation of protection in U.S. Such affidavits are required pursuant to Section 71, 15 U.S.C. §1141k, of the Trademark Act.  The USPTO has no authority to waive or extend the deadline for filing a proper §71 Declaration.  Registrations finally cancelled after the expiry of permissible period due to the failure to file a §71 Declaration cannot be reinstated or revived.  A new application to pursue registration of the mark again must be filed.  

The holder of a registered extension of protection of an international registration to the U.S. must file an application for renewal of the international registration with the International Bureau (IB). Renewal of international registrations is governed by Article 7 of the Madrid Protocol and Rules 29 - 31 of the Common Regulations under the Madrid Agreement and Protocol.

A renewal can be filed during the six months before expiry of the period of protection or in the six months following the expiry of the current period of protection with the payment of a surcharge.

The term of an international registration is ten years, and it may be renewed for ten years upon payment of the renewal fee.

Perry4Law hope this information would be useful to all concerned stakeholders.

USPTO Grants Apple Trademarks For Its Retail Outlets Designs And Layout

Apple has been vigorously protecting its brand and trademark around the world. In one such example, the US Patent and Trademark Office (USPTO) accepted Apple's request last week for trademarks on the minimalist design and layout of its retail outlets.

With a booming e-commerce in India, Apple must be planning to protect its brand and trademark in India as well. Apple has already showed its displeasure for the Asian region, especially in China. In 2011, authorities in the Chinese city of Kunming stopped 22 fake Apple stores from illegally using the company's trademarks after Apple lodged a complaint with authorities.

Since trademark is territorial in nature, Apple must also protect its interests in the Indian territory. Intellectual property rights (IPRs) in India are well known and India has a strong trademark law in the form of Trademarks Act, 1999.

Further, international registration of trademarks under Madrid Agreement and Madrid Protocol can also be explored by Apple. The Madrid Agreement and Madrid Protocol and its applicability and implementation in India are still in a flux.

Apple said in its application in May, 2010 that it was not claiming color as a feature of the mark. The mark consists of the distinctive design and layout of a retail store, it said.

Apple must be very careful while engaging in e-commerce activities in India. There are well recognised legal requirements to start an e-commerce website in India and the legal formalities required for starting e-commerce business in India. Similar regulatory requirements do exist in other countries as well.

For instance, Apple was recently fined in Beijing Court for unauthorised e-book sales. Similarly, there are many cyber laws due diligence requirements in India that companies like Apple must comply with in India in order to engage in legally sustainable e-commerce business activities.

There are many techno legal compliance requirements that e-commerce portals, including Apple, Amazon, E-Bay and others, must comply with. At Perry4Law and Perry4Law’s Techno Legal Base (PTLB) we believe that cyber law due diligence, Internet intermediary liability and cyber due diligence for Indian companies must be kept in mind by various e-commerce websites and players.

At the end of the day managing techno legal IP a requirement is of great importance to all concerned who are eying upon India as a market.

Does Indian Trademark Law Recognise International Exhaustion Or National One?

The dispute titled Samsung Electronics Co. Ltd. & Anr. v. Kapil Wadhwa & Ors has finally reached the corridors of Indian Supreme Court. Unsatisfied with the decision of a Division Bench of Delhi High Court, Samsung has filed an appeal before the Supreme Court of India.

Briefly speaking, Samsung sued Kapil Wadhwa and others for unauthorised sale of Samsung printers imported from foreign markets into India. Furthermore, Samsung also accused Kapil Wadhwa and others for indulging in the behaviour of meta-tagging and deep hyperlinking with Samsungs website for the sale of alleged imported printers.

A single Judge of Delhi High Court held in favour of Samsung whereas a Division Bench of Delhi High Court partially overruled the decision of the single Judge. The Division Bench upheld the judgement of single Judge to the extent of injuncting Kapil Wadhwa and others from engaging in the act of meta tagging and hyperlinking.  Feeling aggrieved Samsung has now approached the Apex Court of India. The Supreme Court has issued notices to the concerned parties in this regard.

Samsung is insisting that the sales by present defendants/traders is an infringement of its Trademark, whereas local traders are claiming that they are well within their rights to sell goods legally bought abroad and imported into India. The question boils to the crucial point whether Indian Trademark law endorses international exhaustion principle or nation exhaustion criteria.

Now the Supreme Court of India would analyse this issue and the same would be settled for the larger benefits of various stakeholders. Perry4Law would update in this regard the moment Supreme Courts judgement would be pronounced.

Pomegranate Patenting By US Company Blocked By India

Traditional knowledge of India has provided many modern days solutions. Many foreign companies have tried to obtain patents that are primarily based upon traditional knowledge of India.

Till recently we had no traditional knowledge digital library (TKDL) of India. However, now we have a TKDL that is serving the interests of India and international community by thwarting any attempt to patent a product or service based upon Indian traditional knowledge. The Indian TKDL is a representative database of 1200 Ayurvedic, Unani and Siddha formulations.

It has been reported that India has once again thwarted an attempt made by a US company to claim a patent at the United States Patent and Trademark Office (USPTO) on the use of pomegranate for the treatment of ulcers. To achieve this objective the Indian TKDL submitted prior art evidences in December 2010 in the form of references in three books from 11th century to 20th century.

Naturally if prior art and knowledge about an applied patent is already available in public domain there is little scope for the grant of a patent in that field. Objections regarding such applied patent are natural and in most cases they succeed as well.

After the objections raised by the Indian TKDL the applicant tried to amend the claims on August 14, 2012, but the examiner later rejected all the claims. This is a positive development and Perry4Law and Perry4Law’s Techno Legal Base (PTLB) congratulate TKDL on its proactive role in this regard.

The Madrid Agreement And Madrid Protocol And Its Applicability And Implementation In India

Intellectual property rights in India cover areas like trademark, copyright, patent, geographical indications, etc. As far as the trademarks law of India is concerned, the Trade Marks Act, 1999 (TMA 1999) and the corresponding Trade Marks Rules, 2002 (TMR 2002) regulate the legal framework pertaining to trademarks in India. It also regulates the national and international trademark registration in India. The TMA 1999 also regulates the convention application under Indian trademark law.

Of late international aspects of brand protection and trademark protection have assumed a centre stage in India. Trademark and brand protection under new gTLDs registration by ICANN is a very challenging aspect. The most important question to be asked these days is whether your brand and trademark is violated by new GTLDs?

Another significant aspect of international trademark protection pertains to adoption and implementation of Madrid Agreement and Madrid Protocol. International registration of trademarks under Madrid Agreement and Madrid Protocol has attracted the attention of international companies and trademark stakeholders.  

However, India has still not ratified the Madrid Protocol and accession of the same is still pending in India. Although India has enacted the Trademark (Amendment) Act, 2010 yet the same has not been notified so far. In the absence of the same, the proposed Act has no value.

Answering to a question in Parliament of India in the current monsoon session (August-September 2012) of the Parliament, the concerned minister has informed that the accession (proposed notification of Trademark rules under the Trademark (Amendment) Act, 2010 would enable the Indian companies to register their trademarks in the member-countries of the Protocol through a single applications as well as allow foreign companies to register their trade marks in India, within a specific timeframe i.e. 18 months.

At present, there are 86 contracting parties to the Protocol. Under the Trademarks (Amendments) Act, 2010, the Head Office of the Trade Marks Registry (which is at Mumbai) or such branch of the Trade Marks Registry as the Central Government may by notification in the Official Gazette specify, will deal with the international applications.

However, so far the trademark registration in India is governed by the TMA 1999 and till the 2010 Act is notified the position would remain the same.

International Registration Of Trademarks Under Madrid Agreement And Madrid Protocol

Trademark protection is generally territorial in nature. This means that trademark protection has to be sought under different jurisdictions to obtain protection under those jurisdictions. In order to obviate practical difficulties and hardships during such trademark application at international level, Madrid Agreement and Madrid Protocol have been adopted by the international community. The Madrid Protocol was adopted to render the Madrid system more flexible and more compatible with the domestic legislations of certain countries which had not been able to accede to the Madrid Agreement.

The Madrid Agreement and Protocol are open to any State which is party to the Paris Convention for the Protection of Industrial Property. The two treaties are parallel and independent and States may adhere to either of them or to both. In addition, an intergovernmental organisation which maintains its own Office for the registration of marks may become party to the Protocol. Instruments of ratification or accession must be deposited with the Director General of WIPO. States and organisations which are party to the Madrid system are collectively referred to as Contracting Parties.

The system makes it possible to protect a mark in a large number of countries by obtaining an international registration which has effect in each of the Contracting Parties that has been designated.

An application for international registration (international application) may be filed only by a natural person or legal entity having a connection, through establishment, domicile or nationality, with a Contracting Party to the Agreement or the Protocol.

A mark may be the subject of an international application only if it has already been registered with the Trademark Office (referred to as the Office of origin) of the Contracting Party with which the applicant has the necessary connections. However, where all the designations are effected under the Protocol the international application may be based on a mere application for registration filed with the Office of origin. An international application must be presented to the International Bureau of WIPO through the intermediary of the Office of origin.

An application for international registration must designate one or more Contracting Parties where protection is sought. Further designations can be effected subsequently. A Contracting Party may be designated only if it is party to the same treaty as the Contracting Party whose Office is the Office of origin. The latter cannot itself be designated in the international application.

The designation of a given Contracting Party is made either under the Agreement or under the Protocol, depending on which treaty is common to the Contracting Parties concerned. If both Contracting Parties are party to both the Agreement and the Protocol, the designation will be governed by the Agreement, in accordance with the so-called “safeguard clause” (Article 9sexies of the Protocol).

Where all the designations are effected under the Agreement the international application, and any other subsequent communication, must be in French. Where at least one designation is effected under the Protocol, the applicant has the option of English, French or Spanish, unless the Office of origin restricts this choice to one of these.

The filing of an international application is subject to the payment of a basic fee (which is reduced to 10% of the prescribed amount for international applications filed by applicants whose country of origin is a Least Developed Country (LDC), in accordance with the list established by the United Nations), a supplementary fee for each class of goods and/or services beyond the first three classes, and a complementary fee for each Contracting Party designated. However, a Contracting Party to the Protocol may declare that when it is designated under the Protocol, the complementary fee is to be replaced by an individual fee, whose amount is determined by the Contracting Party concerned but may not be higher than the amount which would be payable for the registration of a mark with its Office.

Once the International Bureau receives the international application, it carries out an examination for compliance with the requirements of the Agreement, the Protocol, and their Common Regulations. This examination is restricted to formalities, including the classification and comprehensibility of the list of goods and/or services; any matter of substance, such as whether the mark qualifies for protection or whether it is in conflict with an earlier mark, is left to each designated Contracting Party to determine. If there are no irregularities, the International Bureau records the mark in the International Register, publishes the international registration in the WIPO Gazette of International Marks, and notifies it to each designated Contracting Party.

These Contracting Parties may examine the international registration for compliance with their domestic legislation and, if some substantive provisions are not complied with, they have the right to refuse protection in their territory. Any such refusal, including the indication of the grounds on which it is based, must be communicated to the International Bureau, normally within 12 months from the date of the notification. However, a Contracting Party to the Protocol may declare that, when it is designated under the Protocol, this time limit is extended to 18 months. Such a Contracting Party may also declare that a refusal based on an opposition may be communicated to the International Bureau even after this time limit of 18 months.

The refusal is communicated to the holder, recorded in the International Register and published in the Gazette. The procedure subsequent to a refusal (such as an appeal or a review) is carried out directly between the administration or court of the Contracting Party concerned and the holder, without any involvement of the International Bureau. The final decision concerning the refusal must, however, be communicated to the International Bureau, which records and publishes it.

The effects of an international registration in each designated Contracting Party are, as from the date of the international registration, the same as if the mark had been deposited directly with the Office of that Contracting Party. If no refusal is issued within the applicable time limit, or if a refusal originally notified by a Contracting Party is subsequently withdrawn, the protection of the mark in question is, from the date of the international registration, the same as if it had been registered by the Office of that

Protection may be limited with regard to some or all of the goods or services or may be renounced with regard to only some of the designated Contracting Parties. An international registration may be transferred in relation to all or some of the designated Contracting Parties and all or some goods or services.

The system of international registration of marks has several advantages for trademark owners. Instead of filing many national applications in all countries of interest, in several different languages, in accordance with different national procedural rules and regulations and paying several different (and often higher) fees, an international registration may be obtained by simply filing one application with the International Bureau (through the Office of the home country), in one language (either English or French) and paying only one set of fees.

Similar advantages exist when the registration has to be renewed; this involves the simple payment of the necessary fees, every 10 years, to the International Bureau. Likewise, if the international registration is assigned to a third party or any other change, such as a change in name and/or address, has occurred, this may be recorded with effect for all the designated Contracting Parties by means of a single procedural step.

One disadvantage of the Madrid system is that any refusal, withdrawal or cancellation of the basic application or basic registration within five years of the registration date of the international registration will lead to the refusal, withdrawal or cancellation of the international registration to the same extent.

The process of attacking the basic application or basic registration for this purpose is generally known as “central attack”. Under the Madrid Protocol, the effects of a successful central attack can be mitigated by transforming the international registration into a series of applications in each jurisdiction designated by the international registration, a process known as “transformation”. Although transformation is an expensive option of last resort, the resulting applications will receive the registration date of the international registration as their filing date.

In 1997, less than half of a percent of international registrations were canceled as a result of central attack. The cost savings which usually result from using the Madrid system may be negated by the requirement to use local agents in the applicable jurisdiction if any problems arise.