The Internet Corporation for Assigned Names and Numbers (ICANN) launched the application process for new generic Top Level Domains (gTLDs) in January 2012. The new gTLD program resulted in an unprecedented expansion of the Domain Name System (DNS) from the existing 22 TLDs, such as .COM and .ORG, to currently over 1,200 gTLDs.
While a handful of new gTLDs appear to be showing reasonable growth of domain name registrations, the volume of domain name registrations across the new gTLD name space overall is less than impressive. As a result of this, some new gTLD Registry operators are seeking to implement an exit strategy in order to cut their losses and to sell their gTLD Registry. This has resulted in an emerging aftermarket for the purchase of new gTLD Registries, which saw the sale of .REISE which means “travel” in German and .HIV in 2015.
Initially the aftermarket was mostly conducted via auctions with the gTLD Registry being purchased by the highest bidder. However, this method seems to have been eschewed in favour of direct negotiations between interested parties. For example, 2016 saw the sale and purchase of .OBSERVER, .SHOPPING, .JETZT which means “now” in German, .BOSTON and the portfolio sale of .ARCHI, .BIO and .SKI. As such the sale and purchase of new gTLD Registries is becoming more common place and the consolidation of ownership of new gTLD Registries is well underway.
This trend has continued in 2017 with the acquisition of the .IRISH gTLD by Donuts, the company which oversees a portfolio of circa 200 gTLDs. Continue Reading
Back by popular demand – this year’s survey includes questions on:
- best practice for creating and clearing trademarks;
- trends in online infringements of trademarks; and
- changes to trademark filing strategies as a result of the Brexit referendum.
The resulting report will be sent to all survey participants in May 2017.
The survey should take less than 10 minutes to complete. We obviously place great emphasis on protecting the confidentiality of our clients, so the results will be shared in a way that does not reveal the identity of the participants.
Please click here to complete the survey. We would be grateful if you could complete the survey by 31 March 2017.
We would be grateful if you would please just provide one collective response on behalf of your company.
Thank you very much for your participation.
This is our fourth consecutive year running the Benchmarking Survey, to read our reports from 2016 back to 2014, please use the links below:
This short IP Enforcement V-log, summarises a recent claim of online infringement in which French courts were permitted to proceed against online infringement outside France.
But does this pave the way for future multi-jurisdiction cases under Article 5 of the Brussels regulation?
Watch this v-log here
IP Enforcement Focus is a series of written, video and audio posts which plug into your current enforcement issues. Click here to subscribe to IP Enforcement
The Beijing IP Court recently made headlines by granting a record amount of damages for patent infringement -no less than RMB 49 million (USD7.15m)-, one of the highest amounts since the court was established in November 2014. Moreover, the Court also granted the Plaintiff’s demand for a reimbursement of no less than RMB 1 million (USD150k) in legal fees, which is –to our knowledge- also one of the highest amounts ever granted for this type of expenses in China. These figures are no doubt eye-catching, and this case proves especially interesting because of the reasoning employed by the court to get to those amounts.
Factual background of the case
The patent infringement dispute was brought by Plaintiff Beijing Watchdata System Co., Ltd. (“Watchdata”) against Defendant Beijing Hengbao Co., Ltd., (“Hengbao”) over an invention patent on security tokens used for online banking.
The patent invoked in this procedure protects a process using a physical security device (e.g. a USB token) to secure online operations, as well as the security device itself, which involves the technical process performed by the token device: receiving operational instructions from an online system (e.g. online banking instructions for a money transfer), receiving user input on the USB key token (e.g. keying-in a password or pressing a confirm button on the token device), confirming the user action, and sending operational instruction to the online system (e.g. electronical data to approve the money transfer).
The patent infringement was clear-cut. Hengbao’s USB tokens, as tested and analyzed in court, fell squarely within the scope of protection of the patent.
The damages Continue Reading
The UK Court of Appeal confirmed on 18 January that an employee was not entitled to any compensation from his employer for the income generated by his patented inventions, as the returns did not amount to an “outstanding benefit” to his employer.
In general, inventions made by employees as part of their usual duties will belong to their employers – they have the right to exploit the invention as they wish without requiring the employee’s permission or paying any compensation. But the position is different when a patent is granted to the employer for the invention, if the invention is judged by the Comptroller of Patents as being of “outstanding benefit” to the employer. It may then have to pay compensation to the employee based on the value of the patent(s) to the employer’s undertaking (s.40(1) of the Patents Act 1977 (“PA 1977“)).
The claimant in Shanks v Unilever had built the first prototype of a device to measure glucose concentrations in blood. He had done this at home, in his own time, apparently using slides from his daughter’s toy microscope kit. The claimant’s employer obtained patents to the invention but did not use the invention itself; instead, it licensed it to other companies producing glucose testing kits. The value of the patent to the employer was determined to be £24.5m.
The inventor claimed that as the patent was of “outstanding benefit” to his employer, he was due compensation under the PA 1977. However the Hearing Officer rejected the inventor’s claim deciding that the financial benefit to the company was not “outstanding” (adding that, if it had been assessed as outstanding, then he would have awarded the claimant 5% as his fair share), in part because the benefit had to be calculated in relation to the employer’s group of companies, rather than the single entity holding the employment contract. Continue Reading
With President Trump in the White House and a Republican majority in both the House and Senate, tax reform is once again high on the agenda. Several weeks ago, President Trump promised “a tax reform bill that will reduce our trade deficits, increase American exports, and will generate revenue from Mexico that will pay for the wall if we decide to go that route.” Last week, the White House revealed that the President is considering a so-called “border adjustment tax” — a tax advocated for by UC Berkeley Professor Alan Auerbach for about a decade under the name “destination based cash flow tax.”
Under the proposed border adjustment tax, a company pays taxes based on where its products are consumed, rather than where the company is headquartered — or the intellectual property (IP) covering the products are located. When a company sells products in the United States, it will have to pay taxes on the profits made on those sales, even if the products were manufactured abroad. Conversely, if a company sells its products overseas, it will not need to pay U.S. taxes on profits made on those overseas sales. The border adjustment tax accomplishes this dynamic by disallowing a tax deduction for the cost of imported goods. Labor costs, however, would be deductible. Further, the general corporate tax rate would be reduced from 35% to 20%, thereby benefiting purely U.S. domestic companies as well — i.e., those that purchase, manufacture, and sell only in the United States.
So how could this affect foreign IP holding companies? U.S. companies are currently able to shift their profits to a foreign jurisdiction having a low corporate tax rate by transferring their IP to a holding company in that foreign jurisdiction and paying the holding company license fees to use the IP. The license fees that the U.S. company pays to the foreign IP holding company are deductible under the current tax regime. Under the proposed border adjustment tax, those licensing fees would no longer be deductible, and thus could not be used to reduce the U.S. company’s U.S. tax liability. Indeed, the use of a foreign IP holding company would increase a company’s overall tax liability, if the foreign jurisdiction imposes any taxes at all on the foreign IP holding company’s income.
In addition, not only is the proposed border adjustment tax expected to kill IP holding companies, it also incentivizes U.S. companies to conduct their R&D operations within the United States rather than developing their technology abroad or purchasing products with technology developed abroad. This is because labor costs remain deductible under the proposed tax, while the cost of imported goods (which includes R&D costs) are not. Thus, although the company pays a real expenditure for those goods, for tax purposes, those expenditures are treated as taxable profit. In other words, a company will not have to pay taxes on labor costs associated with IP developed in the United States, but will have to pay taxes on such labor costs abroad. Thus, if the border adjustment tax gets passed, Trump may very well “bring back IP and IP-creating jobs again.”
On 8 September 2016, the European Court of Justice (CJEU) handed down judgment C-160/15 on the means of hyperlinking which caught quite some attention. It has become known as the GS Media decision (see our blog post). In essence, this CJEU judgment imposed new verification duties on commercial website owners who embed hyperlinks to third-party content in their web sites. A Swedish court was first to apply the new criteria (Attunda Tingsrätt, case ref.: FT 11052-15) and now, judgments in Germany and the Czech Republic which deal with the new set of considerations developed in Luxembourg have been handed down.
District Court of Hamburg Continue Reading
On 7 February, negotiators for the European Parliament, Member States and the Commission agreed the proposal for a regulation on EU cross-border portability of online content services. This is the first agreement relating to the modernisation of EU copyright rules proposed by the Commission as part of the Digital Single Market strategy.
Under the new rules, which will come into force at the beginning of 2018, service providers of paid-for online content must enable subscribers to access and use the online content service when they are temporarily in another Member State. So, for example, when subscribers to Netflix or Spotify are travelling in Europe, on holiday or on business, they will be able to access content on those services in the same way they access those services when they are at home. Provided the online service provider has acquired the necessary rights and licences in the country of residence of the subscriber, the service provider will be deemed to have all the rights needed to provide access to the service to that subscriber in other EU Member States.
In a February 7, 2017 webinar, the Hogan Lovells Digital Single Market (DSM) team presented its take on new developments for 2017. Nils Rauer was among the speakers and commented on the Commission’s efforts to regulate large video sharing platforms, both through the proposed copyright directive, which would impose heightened obligations on platforms to fight against online infringement, and through the AVMS (Audiovisual Media Services) Directive, which would impose obligations on video sharing platforms to fight against other forms of harmful content.
Continue Reading (Including link to Webinar recording and slides)
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel ordered the transfer of a domain name because, although it had never been used for an active website, it had been used to send fraudulent emails in an attempted cyber fraud.
The Complainant was Chantelle S.A. of Cachan, France, a well-known French lingerie company founded in 1876. It was the owner of various trade mark registrations, including the International trade mark registration no. 160643 in the term CHANTELLE, registered in 1952. It also owned various domain names, including <groupechantelle.com>, registered on 5 December 2000.
The Respondent was listed as Emmanuel Vila of Marseille, France. He did not respond to the Complaint.
The disputed domain name was <groupe-chantelle.com> (the “Domain Name”). It was registered on 21 September 2016 and had never resolved to an active website. However, in its Complaint, filed seven days after the Domain Name was registered, the Complainant was able to produce evidence that the Domain Name had been used to create email addresses in the names of certain of the Complainant’s actual employees in its accounts department. Such email addresses had then been used to send emails to the Complainant’s business partners, asking for monies to be paid into a different bank account, supposedly due to a change of bank details. Continue Reading