ICANN set out a system of response to the applications made for new gTLDs, known as “Comments, Objections & Program Feedback”. The aspect that can assist you with your trademark protection efforts is the application objections process (open until March 2013), where providing you have standing and go through the approved dispute resolution service, you can object to an application for a new gTLD on 4 main grounds:
- String confusion (too similar to an existing gTLD)
- Limited public interest
- Community objection
- Legal rights
It is this last one that holds the key to trademark protection and we’ll go on to explore what is meant by a legal rights objection and more importantly how to use one to protect your brand at the gTLD level.
Legal Rights Objections
A legal rights objection is one where “the applied-for gTLD string violates the legal rights of the objector” (ICANN) and is overseen by WIPO (the World Intellectual Property Organisation).
They outline the procedure as an assessment of the evidence by an independent, external and neutral expert or experts (assessment can be conducted by one or three people). The purpose of the assessment is to determine whether the applicant’s potential use of the applied-for gTLD would be likely to infringe the objector’s existing trademark, or IGO name or acronym.
Key facts about launching a legal rights objection:
- The objection “window” is only open for 9 months from June 13th 2012, so you must raise yours before this period ends on March 13th 2013.
- Objections must be filed electronically and in English
- Each objection to an application must have a separate submission and set of fees, so if you object to more than one application for a gTLD, you’ll need to prepare a submission for each one and be prepared for multiple sets of fees ($10,000 per dispute, with $8000 being refunded to the prevailing party after conclusion)
- Pursuing a legal rights objection does not preclude you following any of the other trademark protection routes described in this article, so if your objection doesn’t stand up, you still have other options
What should go in your objection submission?
For each objection filed, you must include your full name and current contact information as the objector plus a statement illustrating why you believe you meet the standing requirements (refer to the link earlier explaining standing).
You will then go on to describe the basis of your objection to the gTLD application, detailing the grounds for your objection and a full and detailed explanation of why you think your objection is valid.
Do be careful to distinguish between the two, grounds for objecting are the general principles on which you object whereas the validating statements relate specifically to the facts and evidence pertaining to your particular situation.
Make sure you include clear copies of any documents that support or provide evidence for your objection. Lastly objections are limited to 5000 words or 20 pages (whichever is less); so you’ll need to make sure your wording in concise as well as being suitable for legal documentation.
- Make sure of your grounds and validating evidence for your objection claim
- Prepare your objection submission (5000 words or 20 pages whichever is less)
- Make funds available for WIPO fees ($10,000)
- Submit your application electronically