Are you ready for trademark registration? when you are making researching about it, you will come across the trademark objection. Some questions might raise in your mind for easy and hassle-free registration, here are a few such questions that will help you for effective trademark registration. Read ahead and get your queries solved.
1. Is there such a thing as a legal rights objection?
For trademark owners and Intergovernmental Organizations (IGOs), third parties may file a formal objection prior to ICANN’s approval of a New gTLD application on several grounds.
It is determined if an applicant’s use of the applied-for gTLD will likely infringe (described below) the objector’s existing trademark, or my acronym or name (described below).
ICANN Applicant Guidebook states that a panel determination is an expert determination and advice that ICANN will accept as part of the dispute resolution process. This determination is independent of any other ICANN objection option.
2. Are there any other types of objection options available to ICANN?
In order to resolve potential disputes over new gTLD applications, ICANN offers three other types of predelegation objection-based dispute resolution procedures, which are not administered by WIPO, such as string confusion objection, limited public interest objection, and community objection. A “Independent Objector” is also available for the latter two types of objections, as a public service by ICANN. In addition, ICANN has established a process for the Government Advisory Committee (GAC) to provide “GAC Advice on New gTLDs” when applications are identified by governments as problematic. Please refer to Module 3 of the ICANN Applicant Guidebook for more information about all ICANN objection options.
3. To determine whether a Legal Rights Objection will be sustained, what criteria will a panel use?
In accordance with section 3.5.2 of the ICANN Applicant Guidebook, an independent panel will determine whether the applicant has the potential to use the proposed gTLD as follows:
Takes unfair advantage of the distinctive character or reputation of an objector’s trademark, service mark, or acronym, registered or unregistered
Affects unfairly the distinctive character or reputation of the objector’s mark, the name of an IGO, or the acronym of any IGO, or both
Creates an unacceptably high likelihood of confusion between the gTLD applied for and the mark or acronym of the objector.
A panel will typically assess the merits of an objection in light of the parties’ pleadings, as well as the following non-exclusive consideration factors.
A trademark objection will be considered in light of the following nonexclusive factors:
Whether the gTLD applied for is identical or similar to the existing mark, including appearance, phonetic sound, or meaning.
An examination of whether the objector was bona fide in acquiring and using rights in the mark.
A third party or objector is recognized as the owner of the mark which corresponds to the gTLD within the relevant sector of the public.
The applicant’s intent when applying for the gTLD, including whether the applicant knew about the objector’s mark at the time of application for the gTLD, or was unable to reasonably have been unaware of it. Also, if the applicant has applied for or operated TLDs that are identical or confusingly similar to the marks of others, or if the applicant has engaged in a pattern of conduct in this regard.
The applicant must demonstrate that the sign associated with the gTLD has been used, or that it is being prepared to be used, in a bona fide manner to offer goods or services or to provide information in a way that does not interfere with the objector’s legitimate use of its trademark.
It is necessary to determine whether the applicant holds trademarks or other intellectual property rights in the sign corresponding to the gTLD, if such rights were acquired and used legitimately, and whether the applicant’s purported or likely use of the gTLD is consistent with the acquisition or use of the mark or other intellectual property rights.
The extent to which the applicant has been commonly known by the gTLD sign, and if so, whether any purported or likely use of the gTLD by the applicant is in alignment with this.
The bottom line
By now, few of your questions might be answered. With this, go forward and have the best and easy trademark registration process.
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