The 81st ICANN meeting (ICANN 81) was held in Istanbul, Türkiye, in November 2024, offering a significant platform for global discussions on internet governance, domain names and online policy.

In this blog post, Mutlu Yıldırım Köse and Baran Güney provide some key insights from the conference. In another post, to be published next week, they will explore domain name disputes and online enforcement in Türkiye.

New gTLD Program

ICANN 81 provided a comprehensive review of the current state and future direction of the Domain Name System (DNS).

Key discussions centered on the ongoing developments in ICANN’s New gTLD Program, particularly Round 2 of the program. Round 2 focuses on the diversity and inclusivity of the DNS including universal acceptance of the new gTLDs as well as the inclusion of more Internationalized Domain Names (IDNs).

ICANN has confirmed that the application round for new gTLDs is expected to open in April 2026 in a time-limited window lasting 12-15 weeks. There will be restrictions applied. Private auctions, closed generics, and plural/singular delegations will not be allowed. It is aimed at improving fairness and transparency in the process.

Another key deliverable for Round 2 is the Applicant Guidebook (AGB). It outlines eligibility criteria, application processes, compliance obligations, objection procedures, applicant commitments, contracting terms and delegation steps.

The AGB reflects the culmination of studies and policy work that has been done over the last 10 years. ICANN aims to get the Board’s approval by 2025 for AGB, with the final public comment period scheduled for May 2025. The AGB is expected to be published by December 2025.  

RDRS

Another topic discussed at ICANN 81 was Registration Data Request Service (RDRS). The RDRS was introduced by ICANN as a response to challenges posed by the GDPR, which restricted public access to domain registration data.

The RDRS aims to connect requesters seeking non-public data with registrars who participate in the RDRS. However, participation is voluntary.

As of October 2023, about 60% of all gTLD registrations were covered by participating registrars. ICANN continues to monitor the effectiveness of RDRS and gathers data to improve the process, but the voluntary nature of registrar participation remains a limitation.

The RDRS has seen limited use, with only 2,109 total requests submitted in its first year, those were mostly from IP holders. Despite being globally available, the participation rate is low, and only 91 registrars are involved.

ICANN plans to run the service for two years and will assess its effectiveness afterwards, given the low volume of requests and concerns about its ability to fully address post-GDPR access challenges.

The primary reason for denial of requests is incompleteness in the submitted forms. Many requests are either denied or closed due to missing information. There is a need for better education for requestors, and guidance for registrars to improve the submission process and reduce these issues.

Mutlu Yıldırım Köse and Baran Güney are members of Gün + Partners in Turkey. Mutlu is also a member of the MARQUES Cyberspace Team

The EUIPO and European Patent Office (EPO) have published their latest joint report into the impact of IP rights on firm performance in the EU.

The research found that companies owning IP rights see a 23.8% higher revenue per employee and pay wages that are 22.1% higher on average.

While only around 10% of SMEs register IP rights, those that do so have 44% more revenue per employee compared to their counterparts without IP rights, while large firms enjoy a 16% increase.

The report also found that companies that own EU trade marks have 40.9% more revenue per employee, while those with designs have a 29.3% increase in revenue and a 24.8% rise in wages.

The research is based on data from 119,000 firms across all 27 EU Member States over the period 2013-2022. It follows similar studies published in 2015 and 2021.

The full report is available on the EUIPO website here. The Executive Summary can be read here. The image shows the cover of the report.

Places are still available for the next MARQUES Meet the Judges event, which takes place in Rome, Italy on Thursday 30 January 2025.

The event will be a roundtable discussion with eminent Italian judges, representatives of the Italian Patent and Trade Mark Office, members of the Italian and EUIPO Boards of Appeal and industry representatives.

The following judges and officials are already confirmed to take part:

• Hon. Paolo CATALLOZZI - Supreme Court of Cassation, First Civil Section
• Hon. Elisa FAZZINI - Court of Appeal, Milan, First Civil Section
• Hon. Silvia VITRÓ - President of the Court of Enterprises, Turin
• Avv. Prof. Gustavo OLIVIERI - Full Professor of Commercial Law, LUISS University, Rome, and Member of the Italian Board of the Appeals against the decisions of the Italian Patent and Trademark Office
• Avv. Cinzia NEGRO - Member of the 2nd and 3rd Boards of Appeal, Boards of Appeal, European Union Intellectual Property Office – EUIPO

Other moderators and speakers include: Avv. Vittorio Cerulli Irelli, Avv. Elisa Vittone, Avv. Flavia Tamburrini, Avv. Lorella Cipriani (BOTTEGA VENETA), Avv. Laurence Morel-Chevillet (BULGARI) and Dr. Andrea Chianura (LAVAZZA).

The meeting starts with a Buffet Lunch at 12.00 and concludes with a Drinks Reception at 18.30.

Topics covered in the discussion will include: proof of use, protection of well-known trade marks, including heritage brands, showing reputation and acquired distinctiveness through market surveys, patronymic trade marks, how to deal with gaps between market realities and the restrictive examination practices for non-conventional signs as trade marks.

The programme will also offer participants the chance to enjoy a special theatrical performance on “The Trials of Oscar Wilde”, written by Merlin Holland and John O’Connor.

This event will be conducted in Italian and will be held at the OFF/OFF Theatre, Via Giulia 20, Rome. Registration is €325 (MARQUES members) or €450 (non-members). For more information, and to reserve your place, please visit the dedicated page on the MARQUES website.

Spaces are filling up but there are still some available, so act now to reserve your place!

Photo of OFF/OFF Theatre from the theatre’s website

MARQUES wishes a Happy New Year to all readers of the Class 46 blog!

We already have a number of events planned for 2025. These include:

• Meet the Judges in Rome (Thursday 30 January): a round table with Italian and European trade mark judges. This will be conducted in Italian and will include a drinks reception and theatrical performance. Booking is already open and more information is here.
• Spring Team Meeting in Barcelona (13-14 March): MARQUES Council and Team members have been sent invitations to attend. More details are here.
• Question the Trade Mark Judges in London (25 March): Held in association with UCL IBIL, details coming soon!
• Annual Conference in The Hague (16-19 September): The programme for the 39^th MARQUES Annual Conference will be published in the Spring.
• Corporate Focus Group meetings (20 March and 6 June): MARQUES Corporate members will be sent invitations for these webinars soon.

More events and webinars will be announced during the year.

In addition, look out for new episodes of the Talking MARQUES podcast, the monthly issues of the HouseMARQUES newsletter, publications by MARQUES Teams and of course posts on the Class 46 and Class 99 blogs for more updates from MARQUES.

Booking is now open for the next MARQUES Meet the Judges event, which takes place in Rome, Italy on Thursday 30 January 2025.

The event will be a roundtable discussion with eminent Italian judges, representatives of the Italian Patent and Trade Mark Office, members of the Italian and EUIPO Boards of Appeal and industry representatives.

It will start with a Buffet Lunch at 12.00 and conclude with a Drinks Reception at 18.30.

Topics covered in the discussion will include: proof of use, protection of well-known trade marks, including heritage brands, showing reputation and acquired distinctiveness through market surveys, patronymic trade marks, how to deal with gaps between market realities and the restrictive examination practices for non-conventional signs as trade marks.

Speakers include: Avv. Vittorio Cerulli Irelli, Avv. Elisa Vittone, Avv. Flavia Tamburrini, Avv. Lorella Cipriani (BOTTEGA VENETA), Avv. Laurence Morel-Chevillet (BULGARI) and Dr. Andrea Chianura (LAVAZZA).

The programme will also offer participants the chance to enjoy a special theatrical performance on “The Trials of Oscar Wilde”, written by Merlin Holland and John O’Connor.This event will be conducted in Italian will be held at the OFF/OFF Theatre, Via Giulia 20, Rome.

Registration is €325 (MARQUES members) or €450 (non-members). For more information, and to reserve your place, please visit the dedicated page on the MARQUES website.

The MARQUES Anti-Counterfeiting and Parallel Trade Team has published a paper on tracking and tracing technologies used to protect brands.

The paper looks at different types of technologies and their pros and cons.

It covers holograms, watermarks, security inks, chemical taggants, microprinting, QR codes and RFID, GPS, NFC, tamper-evident packaging, secure packaging design, blockchain, DNA marking, machine learning and AI, secure authentication apps, secure labels and seals, authentication tags and barcodes.

The paper looks in depth at two specific solutions, AlpVision Cryptoglyph and Fingerprint and PLASTIWARD in-plastic security. It also considers the use of watermarking in authentication of academic certificates, forgery prevention, copyright protection and data authentication and the recent resurgence in the use of RFID and QR codes as anti-counterfeiting tools by brands such as Moncler, Gucci and HP as well as by the wine industry.

The paper is written by Team members Todd Bontemps, Frank Jørgensen, Carsten Menebröcker, Elena Bojinova Miller, Maria Cecilia Romoleroux, Birgit Wuest and Ray Lei Zhao. It can be downloaded here (MARQUES log-in required).

Picture taken from the paper

As part of the MARQUES Regulatory Team’s focus on brand restrictions, Maria del Carmen Alvarado and Daniela Supo discuss some recent case studies in Peru.

Trade marks are far more than just logos or symbols – they are the essence of a brand’s identity, a bridge between consumers and the products they trust. In Peru, as in many parts of the world, this vital connection is being reshaped by stringent regulations aimed at promoting public health.

However, these brand restrictions, while well-intentioned, come with a cost: they challenge the very foundation of trade mark rights by curtailing how companies can express their uniqueness and value. As industries such as tobacco, pharmaceuticals, and food products grapple with increasing limitations on their use of trade marks, it raises a critical question: How far can regulation go before it starts eroding the power of brands to compete and thrive in the marketplace?

This analysis delves into the impact of Peru's brand restrictions, examining the fine line between public interest and the protection of intellectual property rights.

General considerations on brand restrictions

Brand restrictions encompass regulatory measures that limit the use of trade marks, including plain packaging, prohibitions on specific brand elements, and mandatory health warnings.

Although these measures are often introduced to promote public health, they also significantly restrict the ability of businesses to differentiate their products and communicate their brand values to consumers.

Empirical evidence from around the world suggests that the effectiveness of such restrictions is mixed. For instance, Australia’s plain packaging law for tobacco, which aimed to reduce smoking rates by removing brand identity from cigarette packs, has led to unintended consequences such as a rise in counterfeit products.

Similarly, in Peru, the introduction of brand restrictions has created new challenges for businesses, particularly in sectors such as tobacco, pharmaceuticals, and food.

Case study: processed foods and beverages

Peru’s Law on the Promotion of Healthy Nutrition for Children and Adolescents (Law No. 30021) introduces a series of restrictions on food advertising aimed at minors, particularly targeting processed food and non-alcoholic beverages high in sugar, fat or salt, with the goal of promoting healthier eating habits among individuals under 16 years old.

Specifically, Article 8 of the law prohibits advertisements that use visuals, characters, or messages likely to attract children under 16 or imply benefits such as enhanced strength, popularity or superiority.

For example, the use of colourful or animated characters often seen in children’s food packaging is restricted if they convey such messages. Additionally, advertisements that create misleading associations, such as suggesting that the consumption of a product provides health or social benefits, are also prohibited.

Prohibition on characters and visuals

The law explicitly prohibits the use of animated characters, both real and fictional, in advertising aimed at children under 16 if these elements suggest strength, popularity or superiority. Companies that incorporate such characters into their trade marks are significantly restricted in how they can market their products.

In Resolution No. 104-2019/CCD-INDECOPI (25 June 2019), the advertising of a powdered beverage featuring an animated character dressed as a superhero and holding the prepared product with a caption at the top stating "activate your power" was sanctioned.

The Commission for the Supervision of Unfair Competition (CCD) ruled that the imagery and wording promoted the acquisition of strength as a benefit of consuming the product. The Commission noted that the superhero was depicted making a hand gesture symbolizing strength, which suggested that the product, “Kiwigén” was the source of power and energy.

Use of fruit images

Another important restriction under the Healthy Food Law pertains to the use of fruit images on processed food products that do not contain those natural ingredients. This regulation directly affects trade marks that incorporate such elements, forcing businesses to reconsider their branding strategies.

In Resolution No. 101-2019/CCD-INDECOPI, a company was fined for using a personified pineapple on the packaging of a beverage that did not contain pineapple as an ingredient.

Despite the company's argument that the image was a registered trade mark, the competent authority ruled that using the fruit in a misleading way violated the provisions of the law, particularly Article 8(m), which prohibits the use of images that falsely suggest the presence of natural ingredients.

The authority further established that the fact that the pineapple image was a registered trade mark did not exempt the company from complying with advertising regulations.

Celebrity and athlete endorsements

In addition to restrictions on characters and visuals, Peru’s Healthy Food Law limits the use of real-life figures such as celebrities and athletes in advertising aimed at children. The law seeks to prevent the association of unhealthy products with positive attributes such as athletic performance or social popularity.

In Resolution No. 112-2019/CCD-INDECOPI, a beverage company was fined for using the image of a well-known Peruvian soccer player in its advertising. The use of the athlete, combined with the product's positioning as a sports drink, was seen as promoting the idea that consuming the beverage would improve athletic performance, which is prohibited under Article 8(e) of the law.

Advertising warnings

Peru’s Healthy Food Law also mandates the inclusion of "high in" labels on food packaging for products that exceed the permissible levels of sugar, fat and sodium. These labels are intended to inform consumers about the potential health risks associated with consuming these products.

However, this requirement limits the space available for branding and marketing, as it obliges companies to allocate a significant portion of their packaging to these warnings.

This regulation echoes similar measures implemented in countries such as Chile, where "high in" labels have become mandatory for certain food products. In Peru, the requirement to include these warnings has prompted businesses to rethink their packaging design and how they present their brands to consumers.

Conclusions

The imposition of brand restrictions in Peru highlights the ongoing challenge of balancing public health objectives with the rights of trade mark holders. While these regulations aim to protect vulnerable consumers, particularly children, from unhealthy products, they also limit businesses’ ability to fully utilize their trade marks in differentiating their offerings and conveying their unique value propositions to the market.

Although Peru’s approach is somewhat less restrictive compared to countries such as Chile and Mexico, it still creates significant hurdles for companies, especially in the processed foods and beverages sector. The limitations on the use of characters, visual elements, and specific marketing strategies that are crucial for building brand recognition and consumer loyalty present serious challenges. These constraints can undermine a brand’s ability to effectively communicate with its target audience, especially younger consumers.

Moreover, the broader economic implications of these restrictions cannot be overlooked. Innovation may be stifled, as companies are forced to operate within narrower marketing frameworks, limiting their capacity to differentiate their products and engage consumers.

This is particularly challenging for small and medium-sized enterprises (SMEs), which often rely on creative branding strategies to remain competitive. SMEs may find it more difficult to comply with these regulations while maintaining their market presence and competitive edge.

It is vital that policymakers continually evaluate the impact of these restrictions and explore less burdensome alternatives that could achieve the same public health outcomes.

Striking the right balance is essential. Overly restrictive measures can dampen innovation, reduce competition, and diminish the inherent value of trade marks.

As Peru continues to implement and refine its brand restrictions, it is crucial to ensure that these measures remain proportionate, evidence-based, and considerate of their broader economic consequences, fostering both consumer protection and a competitive, innovative marketplace.

Maria del Carmen Alvarado and Daniela Supo are lawyers with Rodrigo, Elias & Medrano Abogados in Peru. Maria is also a member of the MARQUES Regulatory Team. 

Pictures provided by the authors