
In the recent WIPO domain name decision of Velcro Industries B.V. and Velcro USA Inc. v Qungdao Kunwei Knitting Co. Ltd, Case No. D2700 - 0203, the issue of the validity of trade mark rights in ICANN proceedings was considered. Velcro USA Inc, the complainant, is the proprietor of various registered trade marks for the mark VELCRO in various territories in respect of “loop and hook fasteners” The respondent, a competitor in Asia for several years, registered the domain name china-velcro.com to which the complainant objected. As a defence, the respondent argued that the mark VELCRO has been used by third parties for several decades to describe ”loop and hook fasteners” and has become generic. The respondent alleged that the trade mark rights of the complainant were therefore not valid because the mark VELCRO had allegedly lost its distinctiveness. The Arbitration Panel ruled in favour of the complainant, noting that it does not have jurisdiction to decide on the validity of registered trade mark rights, a competence that is in the sphere of each geographical territory in respect of which a trade mark is registered. The Arbitration Panel held that the requirement that the complainant is a proprietor of trade mark rights was met and the further requirements that the domain name was registered and used in bad faith and that the respondent had no legitimate right or interest in the mark VELCRO, were evident from the facts. The limitations in respect of the WIPO Arbitration Panel’s jurisdiction, albeit necessary for practical reasons, may therefore have implications that may or may not be in favour of a trade mark proprietor depending on the facts of a particular case. On the one hand, a respondent may not allege that a complainant’s rights are invalid. On the other hand, should both the complainant and the respondent be the proprietor of registered trade mark rights in different territories, the complainant should not be able to argue that the respondent’s rights are invalid. The question is, of course, what the effect would be where a male fide domain name owner attempts to rely on “dubious” trade mark rights, typically in a country with a less than adequate intellectual property framework. In that event, it is submitted that the complainant will have difficulty in satisfying the requirement that the respondent has “no legitimate right or interest” in the domain name despite the fact that the domain name may be registered and used in bad faith. In the case of VELCRO, the lack of jurisdiction of the Arbitration Panel in adjudicating the validity of registered trade mark rights counted in Velcro’s favour. However, we are left pondering what the situation would have been should the respondent have been the proprietor of trade mark rights in respect of the mark VELCRO in other territories. On a correct interpretation of the ICANN regulations, it is submitted that the respondent would, in that event, have been able to claim that it had a legitimate interest in the mark VELCRO. This could have left the complainant in a very difficult situation. In conclusion, although there are remedies for the protection of trade marks against abuse by domain name owners, in some cases, a trade mark proprietor that overlooks the possibility of obtaining ownership of domain names incorporating its important trade marks at an early stage of its business, does so at its own peril. Christophe van Zyl Candidate Attorney Christophe-v@adamsadams.co.za Adams & Adams Steven Yeates Partner steven-y@adamsadams.co.za Adams & Adams

12/07/2008 \| Posted in: Trade Marks and Intellectual Property

Featured news Sea Harvest alleges something fishy about I&J advertisement
In a recent ruling of the Advertising Standards Authority (ASA) Directorate, Sea Harvest Corporation and Irvin & Johnson (I&J), two major competitors in the seafood product market, came head to head over a television commercial advertising “I&J Light & Crispy” frozen fish products.

The commercial in issue starts by showing a split screen with similar fish products on each side, one having a very appetising look while the other is made to look unappetising. The appetising fish product is identified as “I&J Light & Crispy” and the other product is referred to as “Brand X”. The commercial then shows two families, one eating the appetising fish product while the other family is visibly unhappy. The unhappy family moves over to the other side of the screen and is welcomed by the happy family.

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The firm practises directly in several Southern African countries and through long-established associates in others.