[gnso-rpm-wg] Proposed agenda and documents for RPM Working Group call on 14 December

[Greg Shatan]

On the last point: It seems to me that the very essence of a Geographic
Indicator is that the word element is no longer a generic or descriptive
term.

Greg Shatan

On Wed, Dec 14, 2016 at 8:49 AM, URS - Uniform Rapid Suspension System -
MFSD <urs at mfsd.it> wrote:

> Just to add a comment to TMCH Charter questions, in particular to Q1 and
> Q4.
>
> In case of a composite mark (word + device) does the
> validation/verification criteria (guidelines: trademarks accepted where the
> name of the trademark is reflected in predominant letters and is clearly
> separable or distinguishable from the device element) provides the TMCH
> with too wide discretion and subjectivity?
>
> The issue of the protection and the protection’s extent for trademarks
> other than word marks should be clarified regarding all RPMs (TMCH, URS,
> PDDRP).
> While TMCH Guidelines contain provisions on “marks that does not
> exclusively consist of letters, words, numerals, special characters”, PDDRP
> (para. 9.2.1) and URS (URS Procedure para. 1.2.6.1) contains the wording
> “word mark”. With no PDDRP case so far the matter has not arose yet.
> However, in URS this led to interpretations (see sanofi.xin NAF
> FA1604001672049 http://www.adrforum.com/domaindecisions/1672049A.htm;
> flossy.shoes MFSD 7B10562D https://urs.mfsd.it/
> system_data/source_pdf/flossy.shoes.pdf).
>
> Hence, I retain that clarity regarding the RPM’s and, in this particular
> case, TMCH’s field of protection (meant as inclusion in TMCH and
> participation in sunrise and claims services) is essential.
>
> Concerning marks protected under statute or treaty, in particular
> Geographical Indications and Designations of Origin does the TMCH has a
> comprehensive list of treaties and statutes protecting GIs or of GIs
> protected under treaties and statutes?
>
> Finally how GIs, which are also registered trademarks, consisting in both
> word and device elements, where the word element might be regarded as
> generic or descriptive terms, are evaluated?
>
> Kind regards.
>
> Ivett Paulovics
> URS Domain Dispute Case Manager
> ---
>
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>
>
> Il giorno 13 dic 2016, alle ore 18:32, Mary Wong <mary.wong at icann.org> ha
> scritto:
>
> Dear all,
>
> The proposed agenda for our next Working Group call, scheduled for 14
> December at 1700 UTC, is as follows:
>
> 1.       Roll call (via Adobe Connect/phone bridge only) and updates to
> Statements of Interest
> 2.       Continue discussion of proposed TMCH Charter questions (see
> attached document)
> 3.       [If time permits] Review responses received to TMCH Data
> Gathering Sub Team list of questions sent to New gTLD Registry Operators
> (see attached)
> 4.       Next steps/next meeting
>
> *For Agenda Item #2*: the attached document contains updates made by
> staff based on the Working Group’s discussions on the call last week. It
> also includes the co-chairs’ proposed compromise language on the “generic
> terms” issue (Category 3, Question 2) that was circulated to the mailing
> list earlier today, and a few additional suggestions made to the mailing
> list since the last call and as of today (13 December).
>
> *For Agenda Item #3*: the attached document is a compilation of responses
> received so far from three registry operators (Public Interest Registry,
> Donuts, and Afnic) to the list of questions for New gTLD Registry Operators
> that was prepared by the TMCH Data Gathering Sub Team. Staff will continue
> to update the document as and when we receive any additional responses from
> other registries.
>
> Thanks and cheers
> Mary
>
>
> Mary Wong
> Senior Policy Director
> Internet Corporation for Assigned Names and Numbers (ICANN)
> Email: mary.wong at icann.org
> Telephone: +1-603-5744889 <(603)%20574-4889>
>
> <Table of Edited Charter Questions on the TMCH - 13 Dec 2016.docx><Compilation
> of Registry Responses to TMCH Data Gathering Sub Team.docx>
> _______________________________________________
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>
>
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