Trademarks v .tm gTLD

[David Flint <df@macroberts.co.uk>]

Re: Trademark based gTLD
========================
 
I have been following (insofar as I have had time to read the mail volume)
the discussion of new gTLDs which appears to be a discussion dominated
largely by US views and interests.
 
As a legal adviser outwith the US (but with clients having US interests)
this discussion is of great interest to me. I am particularly interested
in the discussion on .tm and .tm.int gTLDs.
 
However the debate so far appears to have failed to account fully for a
number of serious business issues in relation to trademarks and domain
names which I believe require to be considered as part of this debate:-
 
Firstly, trademarks are granted by class which could lead to several
trademark owners seeking the same .tm domain;
 
Secondly, as trademarks are national (or in the case of the EU) regional
the same .tm domain could be granted by different national registries -
albeit with a different national suffix.
 
Thirdly, as has previously been suggested, trademark owners jealously
guard their marks and recent US litigation and legislation enacted in
several States (including Georgia and proposed in California) specifically
covering use of trademarks in an electronic domain may mean that users of
a .tm domain may remain liable to be sued in a US court for Lanham Act
infringement (albeit that as I non-US lawyer I would argue that the US
court had no jurisdiction).
 
I appreciate that the question of trademark infringement on the internet
goes outwith the strict confines of the 19 December paper but our view is
that, in the absence of some form of international agreement on the
creation of some form of CYBERMARK (the precise scope of which can be
developed later) the creation of a .tm gTLD is likely to give rise to more
problems than it resolves.
 
I hope these comments are of assistance.
 
Due to work pressures, I am unable to monitor this list and would
appreciate any feedback being made to me directly. I would also be pleased
to elaborate on our ideas for the CYBERMARK.
 
Regards
 
David Flint
 
 
--------------------------------------------------------------------------
David Flint                                   Tel: +44 (0141) 332 9988
MACROBERTS                                    Fax: +44 (0141) 332 8886
Solicitors                                    E-Mail: df@macroberts.co.uk
IP & Technology Law Group
152 Bath Street
Glasgow G2 4TB                                SCOTLAND - UK
**************** http://www.macroberts.co.uk/ ***************************
-------------------------------------------------------------------------
*** "A lawyer's opinion is worth nothing unless paid for." - Proverb ***
-------------------------------------------------------------------------