Trade Mark Owners Fail To Block New gTLDSLeading London Patent and Trade Mark firm reports on trade mark owners’ failures to stop their brands becoming new Internet gTLDs.
By: Baron Warren Redfern Of the 69 legal rights objections (LROs) filed by brand owners against applications to create new generic top level domains (gTLDs), 12 have now been decided by World Intellectual Property Organisation (WIPO), and all have been in favour of the gTLD applicant. About 1,300 new gTLDs will be added to the Internet in the coming months and years, which will operate alongside the existing ones such as .com, .org .co.uk and so on. Each one of these new gTLDs will be operated by a private company, and the top bidders included Google, Amazon, and a new company called Donuts, which is backed by $100 million of venture capital. Some of these .gTLDs are non-contentious trade marks like .google, .bmw or .bbc, while others are for generic words like .blog, .fashion and .home. There were a total of 1,930 applications originally made to operate a new gTLD, however these included only 1,409 different character strings. There were many identical applications for popular suffixes like .home, .inc and .art. The most popular was .app, attracting 13 separate applications. However, before any are launched an exhaustive program of evaluations and objections must be completed to make sure everyone has had their say. In recent times about 100 were abandoned because of a decision by ICANN – the body which runs the Internet - not to allow private companies to gain control of generic gTLD’s like .books, if they were not going to allow third parties to register domain numbers under them. It is now the turn of trade mark owners, who through the LRO program have filed 69 separate objections against 38 different gTLD strings. However, none of the objections has met with success so far. In the most part the earlier rights holders owned brands which were slightly different to the gTLD applied for, or were for words which were quite generic, so would not really function as a trade mark if used as a gTLD, like “Express” or “Tunes” or “Home”. As such, WIPO has so far not considered anyone to have made out a convincing case. The decisions to date related to the gTLDs: .mls, .vip, .express, .rightathome, .tunes, .limited, .pin, .mail, and .home – the last of which was applied for by 11 parties, and has been objected to by one particular trade mark owner in each case. Baron Warren Redfern partner Jerry Bridge-Butler said: “The decision to allow private companies to operate new parts of the Internet under new gTLD’s was always going to be highly controversial, and these latest decisions indicate just how keen WIPO and ICANN are to push the applications through at the expense of earlier rights holders – who have all been given short shift. “However, it is debatable whether the creation of a new gTLD would damage an existing trade mark, in particular if that mark were relatively weak, for example the US fashion brand Express, which is quite non-distinctive word. “Very few of the objections have been raised against gTLD applications for what would normally be considered a trade mark, the exceptions being .yellowpages and .merck. We are still awaiting the decisions on those cases.” Meanwhile, online shopping giant Amazon looks unlikely to be able to bag .amazon for itself, due to grave concerns raised by South American governments which share the Amazon region. A group within ICANN called the Governmental Advisory Committee (GAC) filed a so-called “consensus” objection to the .amazon application, and it is now up to ICANN’ BWR patent and trademark attorneys provide help and advice for all trademark and patent applications and trademark infringement cases. For more information visit the BWR website. Photo: https://www.prlog.org/ End
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