On May 28, 2019, the Cyberspace Administration of China released the draft Measures on the Administration of Data Security (“Data Security Measures“, see our in-house English translation here) for public consultation.
These Data Security Measures will be a great leap forward in China’s current data protection landscape, which mainly consists of scattered provisions contained in various pieces of legislations and standards, such as the Cyber Security Law, the E-Commerce Law, the Consumer Rights Protection Law as well as the Personal Information Security Specification, the most comprehensive yet non-binding national standard with respect to data protection. The Data Security Measures, once officially promulgated, will be the first binding administrative regulation in China to specifically and systematically set out explicit protection for personal data and important data collected and processed through the use of cyber technologies, following the effectiveness of the Cyber Security Law in 2017 (see our briefings here).
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The Social Credit System (“SCS“) in the People’s Republic of China is not a new concept.
But the Chinese Social Credit System is nothing if not controversial. There are two world views of the SCS, which paint diametrically opposed images, from a means to improve people’s lives by punishing anti-social and bad behaviour to a data-driven Orwellian monster that allows the Chinese government to reach into every corner of one’s life. Where do you come out?
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David speaking at INTA on 21 May 2019
During the Annual INTA 2019 Meeting, a panel was held on the EU General Data Privacy Regulation (GDPR) and the temporary removal of data for the WHOIS directory. IPMT Partner David Taylor spoke on the following GDPR issues and their impact on global brand protection.
When the GDPR came into force back in 2018, the Internet Corporation for Assigned Names and Numbers (ICANN) implemented a temporary policy which resulted in a majority of global registrant data being hidden from public view in the WHOIS directory. This temporary policy cannot extend beyond one year, and is intended to be replaced by a policy agreed through an Expedited Policy Development Process (EPDP).
Panelists reviewed relevant recent developments having an impact on IP owners’ access to WHOIS data. They also discussed enforcement impact and solutions, future challenges, and strategy. Specific areas of focus included;
- the outcome of the EPDP,
- the impact the lack of WHOIS data has on the prevalence and persistence of IP-related domain name abuse,
- and the challenges of a lack of public access to domain registrant data in enforcement strategies and practices.
David provided some initial background to the developments over the last year since GDPR became effective and how ICANN has applied GDPR to domain name registrant data. He highlighted the practical differences brand owners see today as well as the difficulties encountered in obtaining disclosure of the now-redacted registrant details, providing a breakdown of the low disclosure rates despite the legitimate interests of brand owners.
Those who attended INTA can access the recorded presentations here.
.CLUB Domains, the Registry operating the .CLUB new generic Top Level Domain (gTLD), has recently launched a new service that enables qualified trade mark holders to block .CLUB domain name registrations containing their trade marks.
According to the .CLUB Domains’ press release, the Trademark Sentry Unlimited Name Blocking Service (UNBS) “protects a trademark from appearing in any portion of a domain with the popular .CLUB extension – literally covering trillions of permutations of a qualified trademark. Blocked at the registry level, protected names show up as “unavailable” through any registrar’s domain search.”
This service is therefore different from other existing brand protection services, such as Donuts’ Domain Protected Marks List (DPML), which enables trade mark holders to block their trade marks across Donut’s entire portfolio of 242 new gTLDs for a period of 5 years.
Indeed, whereas the Unlimited Name Blocking Service is limited to only one new gTLD (.CLUB), it does not limit protection to one string (= the trade mark term), but rather enables qualified trade mark holders to block all domain name registrations that contain their trade marks. The Registry gives the example of the qualified trade mark NEUSTAR which would block the registration of domain names such as <tryneustarservices.club>, <neustarrocks.club>, <myneustar.club>, etc.
This is particularly interesting for trade mark holders who are often the target of cybersquatters, especially as .CLUB is among the most popular new gTLDs. Indeed it is among the top 5 new gTLDs, ranking at the 4th place with over 1.5 million registered domain names. The first three are .TOP (3.4 million domain names), .XYZ (2.3 million) and .LOAN (1.6 million). The 5th is .ONLINE with just under 1.3 million registered domain names. Continue Reading
Brand owners seeking to register cannabis-related trademarks take note: the U.S. Patent and Trademark Office (USPTO) recently issued guidance regarding the effects of the 2018 Farm Bill on the registration of trademarks for goods and services involving hemp.
As background, the previous definition of “marijuana” in the federal Controlled Substances Act had a limited exclusion for certain portions of the Cannabis sativa plant. The 2018 Farm Bill, signed into law December 20, 2018, changed this definition, clarifying that Cannabis sativa containing less than 0.3% delta-9 tetrahydrocannabinol (THC) on a dry weight basis is “hemp,” exempt from the Controlled Substances Act’s definition of marijuana, and therefore not a controlled substance.
On the trademark side, the Lanham Act requires that use of a trademark in commerce must be lawful under federal law to receive a federal trademark registration. As a result of the previous federal definition of marijuana, the USPTO had historically refused registration when an application identified goods and services encompassing cannabidiol (CBD) or other extracts of marijuana because such goods and services were unlawful under federal law and could not support valid use in commerce.
In light of the 2018 Farm Bill’s change, the USPTO revised its policy in new examining guidance, stating that the USPTO will permit registration of applications filed on or after December 20, 2018 that identify goods encompassing cannabis or CBD, but only if the goods are derived from “hemp” (i.e., Cannabis sativa with less than 0.3% THC). Applications for goods which contain more than 0.3% THC will continue to be refused because these products still violate federal law.
During this year’s 2019 INTA Annual Meeting, our Greater China IP team discussed the following key issues around China’s evolving IP landscape.
What’s in store for brand owners in China?
Partner, Helen Xia discussed recent updates on strategies to curb trademark hijacking and factors leading up to this phenomenon. In recent years, China has had a high volume of trademark fillings due to the first-to-file principle, the lack of an intent-to-use requirement, and the low costs of filing marks. Internal and external pressures, including trade negotiations with the U.S., have given rise to these “bad faith filings”. The recent amendment of the Trademark Law (TML) serves to stifle this practice through rejecting applications filed in bad faith and without intent to use. In principle, evidence is now requested for such filings.
As part of a collaboration between EUIPO (the EU Intellectual Property Office) and EURid (the .EU and .ЕЮ Registry), a new service has been launched that allows EUTM (European trade mark) applicants and rights holders to opt-in to receive alerts as soon as a .EU or .ЕЮ domain name identical to their application has been registered.
This new move builds on the two bodies’ collaboration that was formalised in 2016. Since the start of this collaboration, EUTM applicants were easily able to check if an equivalent .EU domain name was available and, if they so wished, register it with an accredited registrar. But as of 18 May 2019, holders and applicants of a EUTM have been able to opt in to receive alerts as soon as a .EU domain name is registered that is identical to their EUTM application. The Registry states that, by receiving such an alert, EUTM holders can take appropriate action much sooner than they would be able to if they had to search for the offending registrations themselves.
EURid highlights on its website that certain registrants have, in the past, taken advantage of the early publication of EUTM applications in order to register trade mark names as .EU domain names in bad faith. The Registry stresses that “effectively reducing the risk of such cyber-squatting infringements requires adopting preventive actions such as raising awareness and pro-actively informing the EUTM holders.”
The EUIPO has said of the new service that it “goes a step further in helping to tackle potential .EU and .ЕЮ domain name abuse, and in creating a more transparent and trustworthy online .EU space.”
This post is selected from our Anchovy News publication: Anchovy® is our comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house. For more information please contact us at email@example.com
In the case “Tork”, for which the judgement was released earlier this year, the Federal Supreme Court (FSC) had to decide to what extent “aiding and abetting trademark infringement” is constituted if paper towels are advertised as being suitable for a particular dispenser.
The plaintiff sells hygiene products worldwide, including a trademark-protected paper towel dispenser. It also sells compatible paper towels under the same trademark.
The defendant sells paper towels and marketed a range of products as “suitable for” the plaintiff’s paper towel dispenser.
The plaintiff considered the filling of the dispenser with the secondary market product to be a trademark infringement and therefore took action against the defendant. However, it was unsuccessful in the proceedings before the District Court and the Higher District Court (HDC).
Decision Continue Reading
The U.S. Supreme Court has ruled that bankrupt trademark licensors cannot use federal bankruptcy law to rescind the rights of their trademark licensees to continue use of duly licensed trademarks. The decision settles a long-simmering circuit split on a question that the International Trademark Association has labelled “the most significant unresolved legal issue in trademark licensing.”
The case arose out of a 2012 license and product distribution agreement granted by Respondent Tempnology, LLC to Mission Product Holdings Inc. to use Tempnology’s COOLCARE trademarks in connection with its sales of Tempnology’s cooling fabric for athletic apparel. The agreement was set to expire in July 2016. When Tempnology filed for bankruptcy in 2015, it sought to use that declaration as the basis to rescind the license under §365 of the Bankruptcy Code (11 U.S.C. §365). In response, Mission Product argued that Tempnology’s rejection of the license merely opened up Tempnology to a breach of contract claim rather than nullify Mission Product’s rights to continue to use Tempnology’s trademarks or Mission Product’s obligations to pay royalties for the duration of the agreement. Continue Reading
Blockchain Week was in full force, with Consensus 2019 event held in New York City May 13-15. Our IPMT group was represented by Ted Mlynar, Head of the U.S. Blockchain and DLT Practice, and was joined by UK partners John Salmon and Richard Diffenthal. Coined the most influential blockchain event of the year, Consensus brought together a wide array of developers, regulators, investors, and more to discuss the future of blockchain and cryptocurrency. Hot topics included crypto regulation, investment opportunities, technology advances, ongoing legal issues, and predictions for the future. Over 8,000 attendees gathered to network, debate, collaborate, and exchange ideas.