WIPO Talks to Ramp up on Trademark Issues for Internet, New gTLDs
GENEVA -- Substantive negotiations on the interplay of trademarks, new gTLDs and the Internet may ramp up next year in the World Intellectual Property Organization, participants said at a closed meeting of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications. After ICANN’s announcement to expand the domain name system with new gTLDs various interests have said evaluation of trademark norms is a big challenge, a WIPO official said.
Sign up for a free preview to unlock the rest of this article
Timely, relevant coverage of court proceedings and agency rulings involving tariffs, classification, valuation, origin and antidumping and countervailing duties. Each day, Trade Law Daily subscribers receive a daily headline email, in-depth PDF edition and access to all relevant documents via our trade law source document library and website.
The committee is evaluating whether it wants to continue work on trademarks and the Internet, the chairman said referring to earlier discussions and information prepared by the WIPO secretariat (http://xrl.us/bjghy9).
Internet industry representatives at the meeting were generally pleased discussions are moving forward. But the committee isn’t close to reaching any decisions, said a government official who wasn’t authorized to speak to the press. The WIPO secretariat appears to be gauging the interest of member governments about moving forward to possibly updating the 10-year-old joint recommendation on trademarks and the Internet to account for new technical issues, the government official said.
The talks aren’t limited to Internet intermediary liability, a participant said, referring to possible trademark conflicts with new possible top level domains. ICANN’s launch of new gTLDs is more important than the overall issue of trademarks and the Internet, Germany and Hungary said. The rights of trademark holders may be damaged if dispute resolution mechanism proposals are implemented in their current form, Germany said, because they don’t account for concerns of trademark holders. It’s not clear whether ICANN will implement the WIPO or certain other national proposals, Germany said.
Some delegations in the talks think it’s time to get ahead of the trademark concerns that are being raised, the government official said, referring to converging court cases in Europe and the U.S. The governments are trying to answer the question of whether to sit back and wait or take a more proactive role, he said. Some countries want to keep discussions going, while others are calling for a more in depth knowledge of the issues before diving too deeply into negotiations, he said.
The International Chamber of Commerce believes the convergence of trademarks and the Internet is a very complex issue, said an executive representing the group. Time is needed to consult with the chamber’s membership, she said. There isn’t enough information to start work in any particular direction, she said.
One idea that might be worth discussing is making the recommendation more like a Digital Millennium Copyright Act, but for trademarks, where intermediaries will have some kind of “safe harbor,” the government official said. It’s “too early” to predict where the negotiations may be going, he said.
The Computer & Communications Industry Association proposed a workshop on the practical challenges and technical difficulties in enforcing trademarks if policing is pushed onto Internet intermediaries, the government official said. The association represents some Internet intermediaries, he said. Some countries want the information session, the government official said, while others don’t.
Australia was concerned that the proposed information meeting would take up an entire day of a future session of the standing committee. An industry association wanting to promote an issue would normally invite participation using their own time and resources, Australia said. Australia also raised concerns with a CCIA lobbyist participating directly in the meeting because the association doesn’t represent trademark owners. Following the lobbyist’s recommendation to spend up to an entire day hearing why eBay and Google are so good appears to be a total waste of time, Australia said. Australia doesn’t want to increase the number of committee observers to include those not representing trademark issues.
Participants agreed that proposals on arrangements for the information meeting will be due by the end of the May meeting, committee Chairman Seong-Joon Park of the Korean Intellectual Property Office told us. The proposals would be discussed in November with the information meeting possibly coming together next spring, he said. Substantive negotiations would possibly take place during or after the 2012 information meeting, Park said.
The WIPO secretariat suggested possible approaches for dealing with primary liability of Internet intermediaries for the infringement of third parties’ trademarks, according to its report and interviews with executives. It suggested developing agreed standards, which would present “considerable difficulties” due to differences in substantive trademark laws of national and regional jurisdictions, according to a document prepared by the secretariat. The rapidly changing nature of the Internet could quickly render the specs obsolete, it warned.
Another suggested approach would consist of attempting to develop agreed standards for determining the presence or absence of secondary liability of Internet intermediaries, the secretariat’s document said. The standards would give a degree of legal and transactional predictability, for example through developing safe harbors provisions, it said. Consideration could be given to issues such as the role played by the Internet intermediary in relation to alleged trademark infringement, the degree of knowledge and control by the Internet intermediary with respect to the allegedly infringing activity by a user of its services, and the modalities of any response by the Internet intermediary when informed of such activity, it said.