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Clare Speed from Reckitt Benckiser Comments in Support of RPM in the new gTLDs

  • To: <irt-final-report@xxxxxxxxx>
  • Subject: Clare Speed from Reckitt Benckiser Comments in Support of RPM in the new gTLDs
  • From: "Speed, Clare" <Clare.Speed@xxxxxxxxxxxxxxxxxxxx>
  • Date: Thu, 2 Jul 2009 14:35:41 +0100

> Dear Sirs
> If new gTLDs are introduced, we urge ICANN to introduce rights protection 
> mechanisms of the type suggested by the IRT.  Nonetheless, we feel that the 
> proposals do not go far enough in some parts and our most pressing concerns 
> are below: 
> 1. The IP Clearinghouse 
> We would prefer the validation of our TM data to be every 2 or 3 years.  We 
> are the owners of a large global TM portfolio, which changes with new 
> filings, re-branding and acquisitions and sales.  Validating our TM data 
> annually would be a huge task.  The proposed sanctions or penalties for 
> mistakes in the data should be reasonable and take into account the fact that 
> large portfolio owners would be submitting a substantial number of documents.
> We are also concerned that the IPC fee is kept to a reasonable level.
> 2. Globally Protected Mark list
> We broadly agree with the idea of the GPM list, although we believe the 
> thresholds need further study.  Account must also be taken of the fact that 
> some global brand owners (for many different reasons) file TM Applications in 
> different countries in the name of different entities (subsidiary, holding or 
> other related companies).  Further, recordal of TM assignments can, in some 
> countries, take several months/years meaning that acquired brands could stand 
> in the name of the previous owner for some time.  We think that it should be 
> sufficient to qualify for a GPM if a brand owner can prove a relationship 
> between these companies.  
> 3. Top level Rights Protection Mechanisms
> We support the proposal that applied-for gTLDs should not be accepted if they 
> are identical or confusingly similar to a GPM.  Our experience is that most 
> infringement cases concern our brands plus a non-distinctive element (eg 
> NUROFEN-PILLS, NUROFENDRUGS) or misspellings (NEUROFEN) rather than the 
> identical Mark (NUROFEN).
> 4. Second level Rights Protection Mechanisms
> For the reasons above, we would prefer for applied-for second-level domains 
> to be blocked if they are both identical or confusingly similar to a GPM. 
> 5. URS
> We support the system.  However, we think that the proposed cost of $100-$200 
> should be per complaint, rather than per domain.  If a registrant files for 3 
> very similar domains (NUROFEN-pills.pharma, NUROFEN-drugs.pharma and 
> NUROFEN-pain.pharma), then the proposed cost could be $600.  For a few extra 
> hundred dollars, the brand owner might decide it worthwhile opting for the 
> UDRP, whose Examiners would make a far more detailed assessment of the case.  
> Setting a fee that is too high would lead to frustrations as brand owners are 
> drawn back to the UDRP.  This would be an opportunity missed.
> We also think it important that the costs of the process are shared 
> (complainant and registrant).
> 6. URS and Sanctions against abusive complaints
> In terms of sanctions for brand owners making abusive complaints, we think 
> this should be looked at very carefully.  Since the sanction would be 
> potentially very harsh (a ban from using the URS for 1 year), we think that 
> the Examiners should examine complaints very carefully before deciding that a 
> complaint is "abusive".  However, this cannot be done if the sole purpose of 
> the URS is to provide a very speedy assessment.
> Yours faithfully
> Clare Speed
> Trade Mark Attorney
> D +44 (0)1753 446744  M+44 (0)7967 575784 
> Reckitt Benckiser Group plc, 103-105 Bath Road 
> Slough, Berkshire SL1 3UH, United Kingdom 
> T +44 (0) 1753 217800 F +44 (0) 1753 217899 
> www.reckittbenckiser.com 

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