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New internet, old trade mark lessons

James Nurton

As we all know, the internet changes everything about business. Except, perhaps, when it comes to branding.

Three developments in the apparently ever-lasting saga of new top-level domains this week provide lessons for brand owners doing business online.

PatagoniaFirst, the outdoor clothing store Patagonia has finally bowed to pressure and dropped its application for a generic top-level domain for .patagonia. Its application had been opposed by the governments of Argentina and Chile (who share the region known as Patagonia), and received over 1,000 individual comments from members of the public (which may have been orchestrated).

For several months, Patagonia has fought its case, pointing out that Patagonia is not among protected geographical terms; noting that it owns many trade marks for the word (including in the two relevant countries); and even questioning the independence of Independent Objector Alain Pellet.

This week, though, it became clear at the Icann meeting in Durban, South Africa that the body representing national governments would not support Patagonia’s position. The game was up, and the application was withdrawn.

AmazonIt now looks like Amazon, which is facing similar objections from as many as 10 Latin American countries and the Independent Objector, may also have to abandon its applications for .amazon in various scripts. If that happens, it will be odd that a company that almost defines e-commerce, and which has applied for 76 TLDs for various terms, will not be able to reserve its own brand. (Amazon founder Jeff Bezos is reported to have chosen the name because it sounded exotic and big, and began with the letter A.)

Meanwhile, away from Durban, WIPO has begun to publish its decisions on legal-rights objections, where trade mark owners have challenged gTLD applications. One case decided so far was filed by Express, a fashion chain, against an application for .express by Donuts. Unfortunately for Express, the panellist felt that its mark was simply too weak to be blocked: there were “so many common usages of the term ‘express’ that it is not reasonable to foreclose its use by Respondent as a gTLD”. As Kevin Murphy explains on the Domain Incite blog, this ruling looks bad for dictionary-word brands now and in future gTLD rounds.

It’s an eternal battle between marketers and trade mark professionals: whether to select a suggestive/descriptive brand or an invented one. You might think things would be different online, where anything goes. But this week’s developments suggest that they’re not. Just like in the real world, brands with a generic meaning invariably run into trouble.


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