Managing IP is part of the Delinian Group, Delinian Limited, 8 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Del Monte succeeds in new gTLD challenge

American food producer Del Monte has become the first party to win a legal rights objection (LRO) to a new gTLD

In a split decision published this week, a WIPO panel found that there was “something untoward” about an application for the gTLD .delmonte filed by Del Monte International, based in Monte Carlo.

Del Monte

The objector, Del Monte Corporation, owns trade marks for Del Monte in 177 jurisdictions, with use going back to 1891.

Respondent Del Monte International owns trade mark registrations for Del Monte in South Africa, which date to 1966. It has also signed three licence agreements with Del Monte Corporation regarding use of the trade mark on certain products and in certain geographical areas.

Del Monte International had applied for the .delmonte string without notifying Del Monte Corporation or any of its other licensees.

No other parties applied for the string in this round.

The panel considered eight factors in its decision, regarding the registration and use of the mark, and any rights owned by the respondent.

Two of the three-person panel, Sebastian Hughes and William Towns, agreed that the gTLD applied for “creates an impermissible likelihood of confusion between the gTLD and the Objector’s mark”.

But panellist Robert Badgley dissented, saying it was “a close case” and a few points tipped the balance in favour of the respondent: “Respondent has a bona fide basis for owning this gTLD, even if Objector would also have a had a bona fide basis if it had been the applicant for this gTLD.”

Badgley also said he had favoured the acceptance of supplemental submissions from the parties, something which the majority refused. In particular, the South African trade mark certificates were not available to the panel.

The LRO procedure enables rights owners to challenge new gTLD applications that they believe take unfair advantage of, impair the distinctive character of, or otherwise create an impermissible likelihood of confusion with their mark.

Nearly 80 LROs have been filed. So far, 30 have been decided and Del Monte is the first one in which the objection has been upheld. Four cases have been terminated.

more from across site and ros bottom lb

More from across our site

Significant changes to the standard of law are unlikely, say sources, who note that some justices seemed sceptical that the parties disagreed on the legal standard
Sources say the High Court of Australia’s ruling that reputation is immaterial in trademark infringement cases could stop famous brands from muscling out smaller players
Members from both sides of the US House of Representatives wrote to USPTO director Kathi Vidal on Friday, March 24, expressing their concern about “patent thicketing.”
Charles Hoskin of Singaporean e-commerce platform Shopee, who made the jump from a luxury brand, says honest conversations and collaborations are key to combatting counterfeiting
Adam Williams speaks to Managing IP about the legacy of Brexit and why IP has sometimes got ‘lost in the noise’ at Westminster
Lawyers wish the latest manual had more details on Federal Circuit cases and that training materials for design patent examiners were online
Counsel are eying domestic industry, concurrent PTAB proceedings and heightened scrutiny of cases before institution
Jack Daniel’s has a good chance of winning its dispute over dog toys, but SCOTUS will still want to protect free speech, predict sources
AI users and lawyers discuss why the rulebook for registering AI-generated content may create problems and needs further work
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP