DOMAIN DISPUTES
It is equally important that many respondents regard any word that appears in a dictionary as ‘generic’ (and, therefore, fair game) whether it describes the goods for which it may be registered as a trademark (and despite the fact that a word that simply describes the goods or services for which protection is sought, will not be accepted for trademark registration in most jurisdictions), or not. It is important, therefore, that a complainant establishes first, that any possibly descriptive trademark relied upon has acquired a secondary meaning or is recognised as the complainant’s trademark; and second, that the respondent’s registration and use of the domain name is in bad faith.
Eric Ramage has lectured on trademark law and internet and domain name issues for many years, and is a tutor with Nottingham Law School. He is chair of the UK Joint Examining Board for patent attorneys and trade mark attorneys, a former member of council of the UK Institute of Trade Mark Attorneys, and a longstanding member of council of
the European Community
Trade Mark Association (ECTA), whom he represented on the panel that advised EURid (the .eu domain name registry) on the implementation of internationalised domain names. He became a member of the UK domain registry Nominet’s former policy advisory board in 1999 (and was actively involved in draſting the original Nominet DRS) and was its chair from 2006 until 2010.
Te expert’s decision in the first Nominet DRS case, (
xigris.co.uk, DRS 0001) contained these words:
“Not all experts appointed to make decisions under the policy will be trademark specialists, so if complainants are proposing to rely on propositions commonly deployed in trademark disputes, they would do well to flesh them out with evidentiary support and in a fashion comprehensible to someone not well versed in that practice area.”
Eric Ramage is a trademark advocate litigator at Alexander Ramage Associates LLP. He can be contacted at:
eric@ramage.co.uk
INTERNATIONAL PATENT AND LAWFIRM SWEDEN EUROPE RUSSIA
European Patents, Trademarks, Designs Internet Law & Domain Name Disputes Social Network Law
Copyright & Commercial Law IP & Business Law in Russia
Stureplan 4C, 114 35 Stockholm, Sweden
info@fenixlegal.eu
www.fenixlegal.eu www.worldipreview.com Trademarks Brands and the Internet Volume 1, Issue 2 59
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