WIPO Expert Meeting Tackles Trademark Protection, Role of Internet Intermediaries

19 September 2012

The changing digital landscape and the role of internet intermediaries in trademark protection and enforcement came into focus at a World Intellectual Property Organization (WIPO) meeting held earlier this week, ahead of the UN agency's Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) meeting.

The SCT, which kicked off its twenty-seventh session on Tuesday, had agreed in February to hold the information meeting in order to discuss the issue and explore possible solutions to trademark infringement on the web, as well as regulatory options in this field.

Internet intermediaries - such as Google, Ebay, Facebook, and Twitter - facilitate transactions between third parties on the web. Through internet intermediaries, illicit traders can offer counterfeit products to consumers or use protected signs without the trademark holder's consent. Numbers on just how much illicit trade is conducted in this way are often unreliable, however, with some experts just noting that the scale is "growing."

In his opening remarks, WIPO Director-General Francis Gurry said that much has changed since the adoption by WIPO of a joint recommendation on the protection of trademarks on the Internet in 2001.

Today, "challenges are more complex and difficult in the online world" and the debate on copyright and trademarks "is extremely heated," Gurry said.

Diverging views on options for protection

At the WIPO meeting, experts from both the private sector and civil society debated several proposals for addressing the challenges of trademark protection on the web. At the outset, Markus Kummer - emphasised the need to "preserve internet's successful elements," in particular its "user-centric-model," the possibility to innovate "without permission" and the neutrality of internet intermediaries, which is "part of the internet's open architecture."

Severine Abis - member of the European Association of Trade Mark Owners - advocated for a process that would require a trademark owner to notify an internet service provider of a possible trademark violation, who in turn would ascertain the infringement and remove the material.

However, Terri Chen - Legal Director on Trademarks at Google - argued that "intermediaries are not in the position to be trademarks judges." Google is both an internet intermediary and trademark holder for goods, such as Android phones, and services, such as YouTube.

Chen added that a balance is needed to ensure consumer protection - the aim of trademarks - does not stifle free speech rights.

Despite these diverging views, experts generally agreed that constructive cooperation is critical to tackling such challenges in the digital age.

"We need to keep open the dialogue to avoid litigation. The main issue comes down to trust and open communication [which] can build-up trust to reach the mutual objective of minimising infringements," David Ho from e-commerce platform Alibaba.com said.

National versus global approaches

The merits of regulatory action at the international level as opposed to the national level also featured prominently in the discussions. For one, Carole Aubert - Head of the Internet Unit of the Federation of the Swiss Watch Industry - stressed the global nature of trademark issues as the internet transcends national borders. One of her suggestions for action at the international level included a global trademark system with no country boundaries.

However, Konstantinos Komaitis - a policy advisor at the Internet Society - said that negotiations for a "traditional treaty or convention may be premature," noting that the territorial and consumer-focused nature of trademarks is difficult to encapsulate in international law instruments.

Nick Ashton-Hart - Geneva representative of the Computer and Communication Industry Association (CCIA) - echoed the sentiment that "trademarks are national creatures," and that "global regulation of national legal regimes presupposes that congruency exists at many levels, including that countries are at similar levels of development and have congruent public policy objectives."

"There is no magic solution to counterfeit," Ashton-Hart concluded. While the internet does facilitate market access, regulating the internet "is not a silver bullet," he said.

Further analysis of this week's WIPO discussions over trademarks and industrial design will be featured in next week's Bridges edition.

ICTSD reporting; "Internet Providers, Trademarks Owners Need Collaboration And Trust, WIPO Panel Says," IP WATCH, 18 September 2012.

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