Have lots of questions to face your trademark objection? Here are some questions you can find answer for. Read ahead!
Can the parties mediate/settle their dispute?
In the event the parties wish to participate in mediation/settlement negotiations, at any point during the proceedings, they may jointly request a 30-day suspension. The WIPO Center can assist the parties in finding an appropriately qualified mediator to help the parties in seeking to reach a mutually satisfactory settlement of their dispute, under the WIPO Mediation Rules. In such event, the WIPO Center will not charge any additional fee for its mediation case administration services.
2. How much does it cost to file/defend a Legal Rights Objection?
For a case involving an objection to one application (i.e., for one gTLD) to be decided by one expert, the fee payable upon filing will be USD 10,000 for each party (this includes a non-refundable USD 2,000 case administration fee), subject to a refund of the expert fee (USD 8,000) to the prevailing party. Different fee arrangements apply to three-member panels and to possible consolidation scenarios; full details are provided in the WIPO Schedule of Fees for New gTLD Dispute Resolution.
For all objections and responses filed with WIPO, the initial fee to be paid at the time of filing of the objection or response is 10,000 (which covers the WIPO DRSP fee and Panel fee). Any applicable reduced Panel fees specified below (i.e. where a consolidation scenario is applied by WIPO in accordance with the WIPO Rules for New gTLD Dispute Resolution), would be refunded to the appropriate party from the initial filing fee, after the close of proceedings.
Payments may be made by any of the following means: bank transfer, credit card, WIPO Account. Please see the Schedule of Fees and Costs: New gTLD Pre-Delegation Legal Rights Objection Procedure for more details.
Non-payment of fees by an objector will result in rejection of the objection, without panel appointment. Non payment of response fees by an applicant will result in the objection being deemed successful.
3. Are there language requirements?
In all cases, the language of proceedings is English. According to the ICANN Applicant Guidebook, “Parties may submit supporting evidence in its original language, provided and subject to the authority of the Panel to determine otherwise, that such evidence is accompanied by a certified or otherwise official English translation of all relevant text.”
4. Are there word/page limits?
The substantive portion of an objection or response is limited to 5,000 words or 20 pages, whichever is less, excluding attachments. The objector or applicant must also list, describe and provide copies of any attached supporting evidence.
5. Who are the experts available for appointment?
The WIPO Center has posted a list of experts available for appointment prior to the start of the objection filing period. This list takes into account requirements of professional expertise and may be subject to additional development by the WIPO Center in light of case needs. As part of the process of appointment to an actual case, experts are required to affirm their neutrality by signing the WIPO Center’s LRO Statement of Acceptance and Declaration of Impartiality and Independence.
6. How is the expert panel appointed?
Unless the parties agree on a three-member expert panel, for a single-member expert panel the WIPO Center will appoint the expert in its sole discretion. Where the parties agree on a three member expert panel, each party may submit a list of three candidates from the WIPO Center’s list of experts, one of whom would be appointed as the respective party-elected expert co-panelist; the WIPO Center will then provide the parties with a list of five candidates from the WIPO Center’s list of experts for the parties’ respective ranking, with a view to the WIPO Center’s appointment of the third (presiding) expert panelist.
7. What are the remedies available?
The remedies are limited to the success or dismissal of the objection. There are no monetary damages, but the prevailing party is entitled to a partial refund of the panel fee (as described above). According to the ICANN Applicant Guidebook, a panel determination is “considered an expert determination and advice that ICANN will accept within the dispute resolution process.” Such determination is independent of any determination under either of the other types of ICANN objection options available.