The European Community Trademark Association’s annual conference saw a lively discussion about ICANN and the new top level domains.
Delegates in Stockholm enjoyed a varied programme, covering anti-counterfeiting, national trademark registrations, the challenges of the Internet and the Max Planck Study on the European trademark system.
The highlight was a panel on Internet Corporation for Assigned Names and Numbers (ICANN) and the new top level domains (TLD), which saw ICANN’s Olof Nordling, branch manager for the organisation in Brussels, outline various measures for protecting trademarks under the new regime and give advice on how brands can object to registrations.
But Nordling faced something of a grilling from panellist and World Trademark Review journalist Adam Smith, who pointed out that there is a “lack of demand” from brands for the new TLDs and pointedly referred to ICANN’s costing structure, which will see the non-profit organisation taking a cut for every domain registered.
Nordling responded, maintaining that ICANN’s financial interest in the domains was justified and emphasising its non-profit status.
Another panel asked ‘Who is the real winner in anti-counterfeiting?’ Sony Eriksson’s Ken Bonefield Nielsen, a former marine and current head of the company’s anti-counterfeiting department, gave a memorable presentation in which he acknowledged that “we are not the winners in this war”.
He suggested that prudent companies should set up a “structured approach to the problem”, using an APPI model—analyse, prioritise, plan and implement. “Relevant and reliable information” is key to success, Nielsen said, underlining the importance of tightly managing the supply chain in countries where there is a threat of counterfeiting.
Benoit Godard, the Interpol liaison at Europol, summarised recent international law enforcement efforts to combat counterfeiting. He produced some startling statistics about the relative profitability of illegal sidenafil (brand name, Viagra) versus heroin, suggesting that the former is a far more lucrative way for criminals to make money.
Eric Barnett, assistant deputy director of US Immigration and Customs Enforcement (ICE), detailed the agency’s efforts in the US to combat counterfeiting. ICE has needed to adapt its approach in light of the fact that many counterfeit goods enter the US by post.
Seizures through the post increased by 41 percent last year. Concurrently, the agency has “developed the use of a civil forfeiture law” to tackle domain names used for selling counterfeit good. With jurisdiction over .com, .org and .net, US courts have been highly effective at tackling online sales, Barnett said, but he acknowledged that many of the problem sites might just move their operation abroad to a domain that is not subject to US jurisdiction.
“This is good for US law enforcement, but not for the rest of the world,” Barnett said.
Other panels saw trademark owners, regulators and practitioners discussing the ‘greatest hits’ in trademark law over the past year and taking a look at the key decisions of the European courts—notably the Interflora case. Next year’s conference will take place in Palermo, Italy from June 20.
This article was first published on 01 August 2011 in World IP Review
ECTA, annual conference, 2011, Stockholm