IntA
tRADEMARKs In
tHE IntERnEt AGE
At the beginning of the new decade, the Internet looks like the key
battleground for trademark disputes. Matthew schmidt explains.
In 2009, intellectual property took centre stage in of the Internet Corporation for Assigned In September, INTA president Richard Heath
a number of ways that affected both trademark Names (ICANN) and its proposal to allow an delivered testimony before the US Congress House
owners and consumers. While trademark unlimited number of new generic top level Subcommittee on Courts and Competition Policy
harmonisation remains a paramount goal for the
domain names (gTLDs).
hearing on the expansion of top level domains
international trademark community, several key and its effects on competition. Heath’s testimony
developments brought about renewed interest in
Earlier in 2009, the INTA submitted extensive
raised brand owners’ concerns about the proposal
making this goal a reality. However, trademark
comments on the September 30 expiration of the
by ICANN to expand the domain name space
issues and developments were most prevalent
Joint Project Agreement (JPA) between the U.S.
and allow an unlimited number of new generic
on the Internet. Intellectual property issues such
Department of Commerce and ICANN. These
top level domain names to be introduced to the
as generic top level domains and cybersquatting
reflected the concerns of trademark owners
Internet starting in 2010.
occupied brand owners and customers around
over ICANN’s management of the domain name
the world. system (DNS), and encouraged the Commerce
Shortly after INTA president Heath’s testimony
Department and ICANN to enter into a new
in Washington, DC, the U.S. Department of
The International Trademark Association
agreement once the JPA had expired. Without
Commerce and ICANN issued an Affirmation
(INTA), and other global intellectual property of Commitments. The long-term effect of this
adequate oversight, at least in the interim, by the
organisations, worked in co-operation to document remains unknown, and the future of
US government, it is doubtful whether ICANN
combat the widespread dangers associated ICANN’s gTLD proposal is unclear.
will make improvements in several key areas in
with counterfeiting and looked at ways to
its DNS management.
align standards and increase penalties against
Voluntary measures to stem
criminals.
The uncertainty for trademark owners increased counterfeit sales on the Internet
exponentially as ICANN continued its plans for
Based on an earlier report by INTA’s Anti-
taking the initiative an explosion of new gTLDs. Through extensive
Counterfeiting and Enforcement Committee, two
on Internet issues comments fed back to ICANN on its Draft
special task forces facilitated discussions between
In 2009, trademark owners saw new waves of
Applicant Guide and through its leadership role
trademark owners and companies that provide
cybersquatting and counterfeiting through the
within the Intellectual Property Constituency, a
services on the Internet. The discussions aimed
Internet. The INTA took a number of initiatives
component of ICANN’s governance structure,
to develop voluntary best practices to combat the
to ensure that trademark owners’ concerns are
the INTA helped to convince ICANN to form the
sale of counterfeits on the Internet. One important
heard and addressed. Chief among these was Implementation Recommendation Team (IRT), outcome of these best practices is the creation or
the adoption of a resolution by the INTA board which developed tools for protecting trademarks sharing of contact information by online service
of directors focusing on the accountability as new gTLDs were rolled out. providers to assist trademark owners in notifying
www.worldipreview.com World Intellectual Property Review Digest 2009 27
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