European trademarks saved by new gTLD clearinghouse rule, but details sketchy 28 May 10
Trademarks that have undergone examination based only on absolute grounds of refusal will be welcomed into the Trademark Clearinghouse proposed for the new generic top-level domain (gTLD) space, WTR has learnt. The news came from Kurt Pritz, senior vice president, services, at the Internet Corporation for Assigned Names and Numbers (ICANN), who was speaking at a roundtable hosted this morning by the UK Intellectual Property Office (IPO).
This is very good news for trademark owners who were up in arms in January when the policy group set up to propose how trademarks could be protected in the new space recommended that the clearinghouse include only those marks that have undergone "substantive review". The clearinghouse is described as a database of trademarks that supports the proposed pre-launch rights protection mechanisms for registries operating a new gTLD. These mechanisms comprise IP claims and sunrise services.
Brand owners from Europe were particularly outraged at the 'substantive review' recommendation, as most European systems - including the Community trademark regime - examine on absolute grounds of refusal only. "We see a real issue with the concept of 'substantive review'," contended European trademark owners association MARQUES and the European Communities Trademark Association (ECTA) in a joint letter to ICANN earlier this year.
Those brand owners represented at this morning's roundtable broadly supported the policy change, which will be published in the fourth - and probably final - Draft Applicant Guidebook this weekend. "Through discussions with the ICANN board and other groups, we found that unsubstantiated marks should be protected," said Pritz. "It means a whole series of marks that were not going to be included, will be."
However, in addition to other outstanding gTLD concerns, the details of exactly how those marks will be included remain sketchy. Pritz's presentation still separated marks that have undergone substantive review from those which have not. This will irritate European mark owners - as ECTA and MARQUES have argued: "There is no worldwide acceptance that a trademark registered following a 'substantive review' by a local office has a wider scope of protection and validity than a trademark that has not gone through this process."
While marks that have undergone substantive review will be automatically admitted into the clearinghouse, Pritz explained that "unsubstantiated" marks will have to be "validated" by the clearinghouse itself. As the clearinghouse is still a proposal, no one is sure exactly how it will be run - and by whom.
So European brand owners can breathe a sigh of relief that when ICANN launches new gTLDs, their marks may qualify for IP claims and sunrise periods. However, we still do not know which organization will win the bid to run the clearinghouse, its criteria or whether it will take the advice of an IP lawyer. Pritz confirmed that the tender is likely to be won by a for-profit company.
For those concerned about this process, the message of this morning's roundtable - which is applicable to brand owners from every jurisdiction - is to get involved. The UK IPO is launching a "mini-consultation" in order collect UK brand owners' concerns. The UK government's attaché to ICANN will submit these comments in a report at the next ICANN meeting in Brussels. Are other governments supporting their brands in the same way?
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