Embed Size (px)
Citation preview
The use of Trademarks on the Internet: Problems and solutions
Trademark owners’ perspective
Marques cyberspace team
September 2012
Agenda
- Marques view on the role and responsibility of Internet intermediaries in the field of trademarks
- Focus on N&A procedures in Europe
- Focus on challenges raised by the new gTLDs
September 2012
Role and responsibility of Internet intermediaries
o Internet landscape has changed dramatically
o New intermediaries have emerged
o Current situation / Liability of intermediarieso - Primary liability quite harmonised within the EU o - Legal uncertainty/fragmentation on secondory
liability: questions of national law
o Clear and detailed guidance needed
September 2012
Role and responsibility of Internet intermediaries
E-commerce Directive 2000/31/EC
Need for clear definitions of hosting, actual knowledge, awareness, expeditiously etc
September 2012
Notice and action procedures in Europe
o Self regulation to be encouraged and developed
Current situation: o - Actions against illegal content deemed to be ineffective
and too slow o - Too much legal fragmentation and uncertainty for
hosting service providers and notice providers o - Notion of hosting, actual knowledge, awareness,
expeditiously not clear
o Neither easy to find nor to use pages or tools to notify illegal content
September 2012
Approach recommended
o All hosting service providers should have a notification illegal content procedure in place
o Harmonisation of N&A procedures
o Complainants should: - provide sufficient details - clearly identify the alleged illegal content
o Evidence that the content provider could not be contacted before contacting the hosting provider or that the content provider was contacted first but did not act?
September 2012
Approach recommended
o Abusive/unjustified notifications should be prevented and sanctioned - Clear definition of abusive/unjustified notifications needed
- Detailed notices to be required- Easy and accessible appeal procedures to be provided
o Hosting service provider should consult the providers of alleged illegal content but the content should be removed before informing said providers to avoid delay
o Hosting service provider should provide feedback to notice providers about the status of their notice
September 2012
Approach recommended
o Content to be removed or disabled depending on circumstances
- complainant should be able to select option
o Content to be removed or disabled as fast as possible depending on circumstances
o Exclusion of online intermediaries liability in case of removal of content which was notified and later found to be legal
September 2012
Focus - New gTLDs and challenges for brand owners
o New shape of the Internet with unlimited number of new generic Top-Level Domains (gTLD) now allowed
o Around 1200 gTLD registries expected to open in 2013 vs about 275 ccTLD domain registries and 21 gTLD registries : increase of at least 300%
September 2012
Focus - New gTLDs and challenges for brand owners
o Main issue: protection at the second level / cybersquatting
o Defensive registrations not affordable
o Trademark Clearinghouse and RPMs (URS, PDDRP and UDRP) not sufficient
o Liability of registrars and registries with regard to the new gTLDs
September 2012
Focus - New gTLDs and Marques recommendation
o Disclosure by the registrars of the registrants’ details using whois privacy services
o All registries, gTLDs and ccTLDs, should adopt a version of the URS
o Loser Pays
o Allow the transfer of a domain to a winning complainant following a URS complaint and speed up the URS to a maximum of 10 working days.
September 2012
Focus - New gTLDs and Marques recommendation
o Block on the string corresponding to a mark at the second level in all registries for trademark owner which has filed 10 or more successful procedures to reclaim said mark
o Registries which support domain names at the second level which feature in more than 120 URS or UDRP cases in a year should be required to develop and implement stronger rights protection measures or face suspension of their registries or financial penalties
September 2012
