Recommended Reading: Mostert and Schwimmer, "Notice and Takedown for Trademarks"
The 100th Anniversary Issue of The Trademark Reporter includes a thought-provoking article by Frederick W. Mostert and Martin B .Schwimmer, entitled "Notice and Takedown for Trademarks," 101 TMR 249 (January-February 2011). [pdf here].
The authors begin by noting that "[t]rademark fraud on the Internet is rife." They assert that there is an urgent need for development of a legal scheme that addresses this problem.
In some other areas of IP law, such as copyright and domain name disputes, quite successful strides have been made in developing clear guidelines and remedies with which to tackle online deception. The Digital Millennium Copyright Act (DMCA) and the Internet Corporation for Assigned Names and Numbers’ (ICANN)’s Uniform Domain Name Dispute Resolution Policy (UDRP) are good examples. Woefully left behind in the fray are measures to combat deceptive trademark abuse online.
After reviewing the workings and effectiveness of the DMCA, VeRO, and UDRP processes, the authors propose an expedited dispute resolution proceeding (EDRP).
We suggest the exploration of multinational legislative adoption of a two-phase expedited dispute resolution proceeding (EDRP) that can channel disputes into the first three categories [i.e., default, negotiated settlement, arbitration] wherever possible. The first phase is a mandatory notice and takedown/safe harbor procedure resembling the DMCA and VeRO. The second phase is a voluntary inter partes arbitration reminiscent of the UDRP. The purpose of phase one is to provide intermediaries with a legislative motivation to take down the easy cases (primarily the defaults); the purpose of phase two is to motivate the parties to first negotiate and then arbitrate, where feasible.
The authors recognize that their proposed EDRP system will have to be universal, and they posit that "WIPO is in an ideal position to develop country guidelines on notice and takedown for trademarks."
Text Copyright John L. Welch 2011.