[gnso-rpm-wg] RPMs Working Group: Updated TMCH Charter Questions tabulated categories document

[Beckham, Brian]

Dear David, Mary, WG Members,

Apologies if this is not the right email to reply to as I realize there have been a few related exchanges on this topic.  Also, please do accept my apologies but I will not be able to attend tomorrow’s call, nor will my WIPO colleagues.  Below are some suggestions for your consideration.

Kind regards,

Brian

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Under Category 1 Guidance, Question 1 (Question 1 in the combined chart) asks:


·         “Should the verification criteria used by the TMCH be clarified or amended? If so how?”

Although there may be sufficiently understood context underlying this question, it is not readily apparent from the present formulation.  Should we instead ask something like:


·         “How do the verification criteria used by the TMCH validator (Deloitte) assist in fulfilling the purpose for which the TMCH was created?  To the extent such verification criteria are not seen to adequately fulfil the purpose for which the TMCH was created, how could they be adjusted to better do so?”

Under Category 2 Verification & Updating of TMCH Data, Question 1 (Question 6 in the combined chart) asks:


·         “Should there be an additional or a different recourse mechanism to challenge rejected trademarks?”

Perhaps there should be a question preceding this which asks something like:


·         “What is the incidence of challenges to trademark records sought to be entered into the TMCH?  On which grounds were such challenges brought?  To the extent those grounds may be perceived as inadequate, how could the challenge mechanism be adjusted to provide sufficient opportunities for legitimate challenges to be heard?”

Under Category 3 Balance, Question 1 (Question 8 in the combined chart) asks:


·         “Does the scope of the TMCH and the protection mechanisms which flow from it, reflect the appropriate balance between the rights of trademark holders and the legitimate rights of non-trademark registrants?”

This question seems better addressed when actually looking at the flow-on mechanisms (the Notices, Sunrises, and URS), not necessarily the TMCH itself.

Under Category 3 Balance, Question 2 (Question 10 in the combined chart) asks:


·         “Should the scope of the TMCH be limited to apply only to the categories of goods and services in which the generic term(s) within a trademark are protected? If so, how?”

First, this question seems to be directed not at the TMCH itself, but rather to application of the flow-on mechanisms (the Notices, Sunrises, and URS).  As such, perhaps the Working Group should consider whether this question should be removed, or – following explanation of the underlying intent – at least, revised.  Second, further to Kiran Malancharuvil’s comment (seconded by John McElwaine and others), this question at minimum should replace the word “generic” with “dictionary”.

Under Category 5: Costs & Other Fundamental TMCH Features, Question 2 (Question 16 in the combined chart) asks:


·         “Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?”

As with several items noted above, this question seems to also be considering (but without stating it in these terms) the flow-on mechanisms (the Notices, Sunrises, and URS).  For example, in its current formulation, the question might produce an answer that only looked at the proportionality of the TMCH itself, whereas the costs of Sunrises (and for trademark owners, ongoing defensive registrations, and possibly curative enforcement actions) vs their benefits (e.g., premium registration fees, and outsourcing trademark record validation) probably warrant consideration in assessing the overall cost-benefit equation for “the TMCH”.


From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of David Tait
Sent: Sunday, December 04, 2016 6:26 PM
To: gnso-rpm-wg at icann.org
Subject: [gnso-rpm-wg] RPMs Working Group: Updated TMCH Charter Questions tabulated categories document

Dear All

In advance of the meeting of the Rights Protection Mechanisms Working Group on Wednesday at 1800 UTC, I am pleased to enclose the updated review of the TMCH Charter questions which has been prepared by the Sub-Team tasked to conduct an initial review of these questions.

Staff have been expressly asked to draw your attention to Question 15. Two possible formulations of this question have been prepared and the Sub-Team is seeking the view of the Working Group as to which of these should be adopted.

Kind regards,

David Tait

David A. Tait
Policy Specialist (Solicitor qualified in Scotland, non-practicing)
Internet Corporation for Assigned Names and Numbers (ICANN)

Mobile: + 44-7864-793776
Email:  david.tait at icann.org<mailto:david.tait at icann.org>
www.icann.org<http://www.icann.org>


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