Comments on IRT Final Report(Leslie, Guan Yuanyuan)
Comments of Leslie, Guan Yuanyuan To the Open Comment Period of the Implementation Recommendation Team (IRT) July 4th, 2009 LEGAL ADVICE ON IRT FINAL REPORT First, different countries have different jurisdiction. IRT does not take into account differences in trademark law in different countries. Different countries around the world with different legal culture, different legal traditions, and the legal system or the basic principles are very different as well. A specific trade mark which is registered in their own country as the well-known trademark does not necessarily automatically be protected in other countries. Because of different basic principles of trademark law in different countries, the trade mark owner should comply with the provisions of the Trademark Law of other countries, so that this particular trade mark can be protected in other countries. For example, the basic principles of China Trademark Law refer to the basic norms which should be followed during the establishment and protection of trademark rights. There are six basic principles in China Trademark Law: the principle of registration; the principle of applying earlier; the principle of good faith; the principle of voluntary registration; centralized registration, classified management principles and the principle of parallelism of administrative protection and judicial protection. Especially, the principles which reflect the difference of China trademark law compared with the other countries are as follows: (A) The principle of registration Trademark registration is a process which confirms the attribution of the trademark exclusive right. There are two basic principles used to confirm the attribution of the trademark exclusive right which are adopted by countries all over the world. One is the principle of registration, and the other is the principle of use. The principle of registration means that the trademark exclusive right is obtained by registration. Regardless of whether or not to use the trade mark, as long as consistent with the provisions of the Trademark Law, and after the trademark registration is approved by the competent authority, the applicant shall obtain the trademark exclusive right which is protected by law. The principle of use means that the exclusive right can be generated by using the trademark. According to this principle, the first user can get the exclusive right to use trademarks. The Article III of China Trademark Law prescribes that the trademark which is approved for registration by the Trademark Office, is the registered trademark. And the registrant owns the exclusive right to use the trademark which is protected by law. It shows that China Trademark Law adopts the principle of registration. (B) Centralized registration, classified management principles Centralized registration, classified management principles are prominent characteristics of China trademark legal system. According to the market economics and trademark¡¯s own characteristics, trademark registration should break the state of sector division and region division. And the Trademark Office should be responsible for centralized review of trademarks and approval of registration. Hereby, the Article II of Trademark Law prescribes that the Trademark Office which is under the State Industry and Commerce Administration Office, is in charge of the national trademark registration and management. It decides that the national trademark registration will be charged by the Trademark Office which is under the State Industry and Commerce Administration Office, and any other institution has no right to charge trademark registration. It clearly expresses Centralized registration, classified management principles. Classified management means that industrial and commercial administrative organs at all level charge trademark management in accordance with the law. To carry out the different levels of management, is in favor of the close integration of trademark management and the local actual situation. And it can make the administration of trademarks regular and institutionalized. (C) The principle of parallelism of administrative protection and judicial protection This is another prominent feature of China trademark legal system. Trademark Law stipulates that the trademark infringement, with which the infringed can choose industrial and commercial administrative organs or the people's court to deal. If the infringed complaints to the industrial and commercial administration authorities, industrial and commercial administrative organs basing on the effective evidence provided by infringed or the evidence made by their own investigation, may order the infringer to immediately cease its violations and compensate the infringed for loss, and fine the infringer violations as well. In that case, the parties have discontentment of the punishment decision made by Industrial and commercial administrative organs, they can go to the people's court to start a lawsuit. The principle of parallel protection facilitates the resolution of trademark disputes and is conducive to the protection of trademark exclusive right. These are the characteristics of China Trademark Law hereinbefore and the Trademark Law is very different from the United States Trademark Law. First, the United States Trademark Law is based on the principle of use as a basic principle. It not only adopts the principle of first use to judge the trademark¡¯s attribution, but also maintains trademark right basing on the use. It can be said that in the United States, there is no trade mark without use. Second, the United States trademark registration is divided into federal registration and state registration. This is highly different from the principle of centralized registration in China trademark law. Besides the United States and China, the Trademark Law of any other country has its own characteristics. IRT ignores the differences in different jurisdictions, which does not conform to reality and IRT report can not gain global consensus. Second, speaking from the legal theory, IRT does not correctly coordinate conflicts of the trademark rights and domain name rights. There is too much emphasis on the interests of trademark holders and highly neglect of the interests of domain name registrants in IRT report. In essence, it embodies the neglect of trademark rights and only attaching importance to domain name rights. With the development of Internet technology, more and more individuals, companies, organizations, even government departments cannot survive without the internet. In particular, the domain name system has played an important role not only in e-commerce but also e-government. In that case, we should consider the balance between the interests of different interest groups, not just concerned about the interests of a specific group. ¡°A terrible situation, the trademark owner has the heaven-born exclusive right, which excludes others to adopt a common name to the registration and use of domain names.¡± ¢Ù Therefore, IRT report only emphasizes the trademark right and ignores domain name rights. It doesn¡¯t meet legal requirements, and is neither objective nor impartial. Third, mechanisms advocated by IRT go far beyond the scope of ICANN's functions. According to the U.S. Government ¡°White Paper¡± in 1998, the purpose of ICANN is ¡°to manage and perform a specific set of functions related to coordination of the domain name system, including the authority necessary to: (A) Set policy for and direct allocation of IP number blocks to regional Internet number registries; (B) Supervise operation of the authoritative Internet root server system; (C) Supervise policy for determining the circumstances under which new TLDs are added to the root system; and (D)Coordinate the assignment of other Internet technical parameters as needed to maintain universal connectivity on the Internet. The IRT final report actually gives ICANN a new function, which is, supervision and protection of trademark rights owned by the specific group-the trademark holders (listed in the globally protected trademark list), including the criteria made in ICANN policies to decide whether the trademark should be protected or not and what kinds of domain names should be protectively reserved. Objectively speaking, whether the trademark is well-known, whether the trademark or specific name needs to be protected, is judged by the proper authorities. ICANN doesn¡¯t have this authoritative function. ICANN should not be responsible for judging whether the domain name registration infringes the right of a third party. Therefore, there is no reasonable basis that ICANN reserves domain names referring to civil rights and interests. Trademark holders have the right and obligation to safeguard their own trademarks. When their trademarks are infringed by others, they can apply for arbitration through UDRP or go to courts to claim termination of the infringement and damage compensation. Fourth, whereas no change of the essential social or legal issues from when UDRP is enacted until now, there is no need for implementation of mechanisms advocated by IRT. As we known, in order to resolve domain name disputes, the World Intellectual Property Organization drew up and published the ¡°Uniform Domain Name Dispute Resolution Policy¡± (UDRP) in 1999. It has been nearly 10 years from then. In fact, UDRP has gained global consensus on the scope of trademark protection and the evaluation criteria. A decade now, nature of social or legal issues has not changed, which is still rights¡¯ conflict between domain name registrants and trademark holders. Therefore, mechanisms advocated by IRT should be unnecessarily implemented. Fifth, IRT report is unable to solve disputes of domain name thoroughly. As the second point above mentioned£¬conflicts of the trademark rights and domain name rights, in fact, fundamentally speaking, the root of the domain name dispute lies in conflicts of the current domain name registration management system and trademark registration management system. To solve domain name disputes completely, domain name registration management system must be coordinated with the trademark registration management system. After 100 years¡¯ development, modern international management system of trademark registration has formed the trademark protection¡¯s complete system of ¡°Paris Convention¡±, ¡°Madrid Agreement¡±, ¡°Nice Agreement¡±, and ¡°Trade-Related Aspects of Intellectual Property Right Protocol¡± made by the World Trade Organization. And different countries have also established a mature system of trademark law. Therefore, it is entirely possible to build a new domain name registration management system in terms of the successful experience of international trademark registration management system. Through international cooperation, by the way of international treaties, and through the effective functioning of international organizations, domain name disputes can be ultimately resolved. In conflicts of trademark rights and domain name rights, IRT advocates measures to strengthen the protection of trademark rights which greatly hinders the development of the domain name system. It will continue to exacerbate the conflicts between two rights and the right owners¡¯ interests can not be evenly resolved, which leads to conflict intensification and results in very serious consequences that ultimately each country¡¯s government has to take legal enforcement to establish their own respective domain name system for domain name right protection. In that case, ICANN¡¯s the authority position in the global Internet domain name system will be shaken. Closing Comment In summary, IRT ignores the difference in state¡¯s jurisdictions, ignores the protection of domain name registrants¡¯ rights, and with the paranoiac and simple intention protects the rights of trademark holders. It not only further exacerbates conflicts of domain name and trademark, but also misleads ICANN to implement measures beyond the scope of the ICANN functions to limit the domain name registration which will seriously hinders the development of the global domain name system. Finally, it will lead to shakiness of ICANN¡¯s authority position in the global Internet domain name system. Therefore, IRT report is neither objective nor impartial, it is not possible to resolve domain name disputes thoroughly, and it can not be globally agreed on. Leslie, Guan Yuanyuan guanyy@xxxxxxxxxxx asmartlawyer@xxxxxxx Legal Supervisor£¬CONAC £¨China Organizational Name Administration Center£© New member£¬ NCUC £¨Noncommercial Users Constituency£© ¢Ù J. Crew Int'l v. crew. Com (crew. com) D200020054, available at http: / / arbiter. Wipo. Int / domains / decisions / html / d200020054. htm.
Legal Advice on IRT Final Report.doc