Register your brand in the correct writing due to new Top-Level Domains

Starting January 12, , for a period of ninety days  organizations (both public and commercial institutions) may apply for their own top level extension (a gTLD). The new gTLDs are mainly known as the new DOT BRAND extensions. Large international companies may have their brand or a generic term such as  a gTLDs to put on record. So instead of .COM or .ORG the domainname will read. ABCOR,. Or .SHOP or .BANK (for the financial world). Much has been written about the advantages and disadvantages for trademark holders to own a DOT BRAND gTLD. But what consequences does this new option have for brand owners in general?

ICANN is expected to issue (the organization that regulates the new issue) between twenty and one hundred new gTLDs. Perhaps the most important for brand owners to keep in mind: the new gTLD may be applied for in all languages and scripts are (including Japanese, Chinese, Arabic, Cyrillic, etc.). Trademark holders will be the first to obtain a gTLD. Since this is done on the basis of a trademark registration, it is important for brand owners to ensure that not only the major brands have been registered in our usualLatin script, but also in other scripts. The expectation is thatmany Asian and Arab organizations especially   will claim new gTLDs. They may for example, claim, with the same priority, the domain name. SHOP (in Chinese). There must, however, be a valid trademark registration in Chinese writing. Therefore please check on time if your most important brands have been registered in the the portfolio or the most important brands are registered in the major scripts.
 

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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?