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Wednesday, 11 November 2009

Bad faith, trade marks and the .eu TLD

The IPKat has long been puzzled that the complex web of rules relating to the registration of .eu domain names and their somewhat begrudging nod towards the recognition of the interests of trade mark owners has not been the subject of extensive litigation in Europe's national and Community trade mark courts. Now he has an answer: next month, as a pleasant hors d'oeuvres to the European judicial Christmas break, the Court of Justice of the European Communities will be hearing arguments in Case C-569/08 Internetportal und Marketing GmbH v Richard Schlicht, a reference for a preliminary ruling from the Oberster Gerichtshof (Austria).
The questions referred are as follows:

"1. Is Article 21(1)(a) of Commission Regulation ... [the bit that's deleted here and wherever the Regulation is mentioned, is the bit that goes '(EC) No', which seems tediously repetitive, effectively uninformative and quite deleterious to what might otherwise be a pleasurable experience for the reader ...] 874/2004 ... laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration to be interpreted as meaning that a right within the meaning of that provision exists,

(a) if, without any intention to use it for goods or services, a trade mark is acquired only for the purpose of being able to register in the first phase of phased registration a domain corresponding to a German-language generic term? [This itself raises the question of indirect use. If I register German generic term A as a trade mark where it's not generic, eg Spain, in order secure registration of A.eu, but it is my intention to use the domain name A.eu in respect of the goods or services for which A is registered, have I used the mark?]

(b) if the trade mark underlying the domain registration and coinciding with a German-language generic term deviates from the domain in so far as the trade mark contains special characters which were eliminated from the domain name [it's a hard life being an umlaut in the 21st century ...] although the special characters were capable of being rewritten and their elimination has the effect that the domain differs from the trade mark in a way which excludes any likelihood of confusion?

2. Is Article 21(1)(a) of Regulation ... 874/2004 to be interpreted as meaning that a legitimate interest exists only in the cases mentioned in Article 21(2)(a) to (c)?

If that question is answered in the negative:

3. Does a legitimate interest within the meaning of Article 21(1)(a) of Regulation ... 874/2004 exist if the domain holder intends to use the domain - coinciding with a German-language generic term - for a thematic internet portal? [doesn't this depend somewhat on what the theme is?]

If questions (1) and (3) are answered in the affirmative:

4. Is Article 21(3) of Regulation ... 874/2004 to be interpreted as meaning that only the circumstances mentioned in subparagraphs (a) to (e) are capable of establishing bad faith within the meaning of Article 21(1)(b) of Regulation ... 874/2004?

If that question is answered in the negative:

5. Does bad faith within the meaning of Article 21(1)(b) of Regulation ... 874/2004 exist if a domain was registered in the first phase of phased registration on the basis of a trade mark, coinciding with a German-language generic term, which the domain holder acquired only for the purpose of being able to register the domain in the first phase of phased registration and thereby to pre-empt other interested parties, including the holders of rights to the mark? [Here we have the possibility of two separate standards of bad faith emerging and obtaining a judicial imprimatur -- one for registration of domain names, the other for the registration of trade marks]".
The IPKat looks forward, as ever, to seeing what emerges. Merpel says, some of these issues are a bit historical, aren't they? The first phase of phased registration has come and gone and isn't about to return.

The .eu domain registration rules here
Dispute your .eu registrations here

1 comment:

Anonymous said...

This is not purely historical. There are still .eu disputes being decided that relate to sunrise period registrations of this type.

Here is a fairly recent one for emirates.eu - http://www.adreu.eurid.eu/adr/decisions/decision.php?dispute_id=5405

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