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.
Attachment:
Legal Advice on IRT Final Report.doc |