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International - Trademark counsel urged to embrace the reality of gTLDs

By Trevor Little
May 07 2012

While the delayed gTLD reveal date has prevented trademark counsel attending this year’s INTA Annual Meeting from discussing the full list of applications, gTLDs remain a hot topic in DC, with ICANN stating that the TLD application system (TAS) held 2,091 applications when it was taken offline. This morning the conference opened with a call for brand owners to embrace the reality of the expanded online space.

An update on the resumption of the application window is expected tomorrow (Tuesday) but ICANN has revealed that, in addition to the 2,091 applications submitted or in progress when TAS was taken offline on April 12, a further 214 potential applications had been registered but had not yet been paid for or reconciled. As a result, ICANN has banked approximately $350 million in application fees.

There has been much speculation on expected demand and, armed with a sense of the scale of potential new gTLDS, in his opening address Gregg Marrazzo, 2012 INTA president and senior VP & deputy general counsel at The Estée Lauder Companies, argued: “The trademark community must embrace this reality and work with ICANN, governments and other stakeholders to educate them that trademark protection and online expansion can co-exist.”

While there is still some uncertainty over the timings of the gTLD application process, Marrazzo was able to state one certainty: “Pirates and counterfeiters will take advantage.” As such, he urged delegates to scrutinise the application list once published as the objection period will shortly follow, adding: “In meantime INTA will continue to interact with ICANN on these issues.”

At the heart of Marrazzo’s argument was the sentiment that trademark protection and online expansion can naturally co-exist (in his speech, he went on to make a similar argument with regards ACTA, which he feels is at risk of being derailed “mainly due to unfounded fear that it will impair public access to the internet”).

Speaking to WTR after the opening addresses, Alan Drewson, executive director of INTA, wondered “whether the recent glitch in the application system will permit ICANN to rethink its batching of the 2,000 applications. It makes sense to us to batch them in such a way that they deal with IDNs first and then work their way to ‘.brands’ and ‘.generics’. So far they have shown no interest in that approach but when you see the volume of applications received, the batching proposals we have put forward make a lot of sense”.

The answer to that question will follow shortly, once ICANN resumes the application process and announces future timings. The announcement is due tomorrow but, as with previous deadlines, could be subject to delay.

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