IP Summit: opportunities and threats of new gTLDs


The new generic top-level domains (gTLDs) offer great possibilities for brand owners and new businesses but they could present new challenges, as discussed at the PanEuropean IP Summit on Wednesday.

Imre Gonda, deputy head in the trademarks and designs department of the Hungarian Intellectual Property Office, said the new gTLDs are an “important step” that will foster innovation, but could create a strong monopoly for some businesses as well as new opportunities for trademark pirates.

Questions of how the new gTLDs will operate in an international environment, and inconsistencies in what constitutes “genuine use” of a trademark in different jurisdictions, must also be considered, he said.

Gonda noted that there may be some conflict between geographical indications (GIs) and geographic names in gTLDs, and where regions are divided by political boundaries and belong to more than one country.

“What qualifies as ‘geographically important’?” Gonda asked. “Whether it’s a country, region or city, where will the line be drawn?”

He added that GIs should be protected in a sui generis system, and that trademark-based practice should be applied in gTLD procedures.

Richard Graham, head of the digital IP department at luxury goods company Richemont, highlighted the potential of gTLDs to help fight online counterfeiting.

Trust on the Internet is under threat, he said. With one million sites selling counterfeit goods, and one billion product web page listings, promoting trust while increasing security is increasingly important.

However, it could be a long battle. Graham said Richemont feels “drowned” by the volume of illegitimate sites it is reviewing, though he is hopeful the situation will turn around as luxury brands begin to register their own “dot brands”, or gTLDs that feature the company name.

Online retailer Net-a-porter, watchmaker Montblanc and fashion house Chloe have all applied for their own dot brands, and as other luxury brands follow suit consumers will be more confident of where to buy genuine goods online, gradually tipping the scales in the other direction, he said.

The next step is promoting the dot brands, he added.

This article was first published on 12 December 2013 in World IP Review

IP Summit, gTLDs, luxury brands, GIs

Trademarks and Brands Online