[gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Kathy Kleiman kathy at kathykleiman.com
Wed Apr 19 23:17:11 UTC 2017


Hi All,

As promised, I am resubmitting a new version of my earlier 
recommendation. It now addresses issues from Question #7 (Design Marks) 
and #16 (Appropriate Balance). I submit this recommendation to the 
Working Group in my capacity as a member and not as a co-chair.

Text below and also attached as a PDF.

Best, Kathy

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*Design Mark Recommendation for Working Group - for Question #7 and 
Question #16 of TMCH Charter Questions (#7, /How are design marks 
currently handled by the TMCH provider?; /and #16, /Does the scope of 
the TMCH and the protections mechanisms which flow from it reflect the 
appropriate balance between the rights of trademark holders and the 
rights of non-trademark registrants?)/*

We (the RPM Working Group) have found a problem:

1.We have learned that Deloitte is accepting the words of design marks, 
composite marks, figurative marks, stylized marks, mixed marks, and any 
similar combination of characters and design (collectively “design marks”).

2.However, the rules adopted by the GNSO Council and ICANN Board 
expressly bar the acceptance of design marks into the TMCH Database.

3.Accordingly, Deloitte is currently in breach of the rules that ICANN 
adopted and must revise its practice to follow the rules adopted by the 
GNSO Council and ICANN Board for TMCH operation.

4.Alternatively, the Working Group by Consensus may CHANGE the rules and 
present the GNSO Council and ICANN Board with an expanded set of rules 
that Deloitte, or any future TMCH Provider, must follow.

5.In all events, we have a BREACH SITUATION which must be remedied. 
Further details, information and explanation below.

Expanded Discussion

/A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN 
Board/

The GNSO Council & ICANN Board-adopted rules (based on the STI Final 
Report and IRT Recommendations) that were very clear about the type of 
mark to be accepted by the Trademark Clearinghouse:

*“4.1 National or Multinational Registered Marks The TC Database should 
be required to include nationally or multinationally registered “text 
mark” trademarks, from all jurisdictions, (including countries where 
there is no substantive 
review).”*https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf

Further, the adopted rules themselves are very clear about the Harm of 
putting design marks into the TMCH Database:

*“[Also 4.1] (The trademarks to be included in the TC are text marks 
because “design marks” provide protection for letters and words only 
within the context of their design or logo and the STI was under a 
mandate not to expand existing trademark rights.)*

The Applicant Guidebook adopted the same requirements, as it must and 
should, namely:

“3.2:Standards for inclusion in the Clearinghouse

3.2.1Nationally or regionally registered word marks from all jurisdictions”

/Nonetheless, and in violation of the express rules adopted by the GNSO 
Council and ICANN Board and placed into the Applicant Guidebook, TMCH 
Provider Deloitte is accepting into the TMCH database words and letters 
it has extracted from composite marks, figurative marks, stylized marks, 
composite marks and mixed marks. Deloitte is removing words and letters 
from designs, patterns, special lettering and other patterns, styles, 
colors, and logos which were integral to the trademark as accepted by 
the national or regional trademark office./

/B. Harm from the Current Form/

The harm from this acceptance is that it violates the rules under which 
Deloitte is allowed to operate. It creates a situation in which Deloitte 
is operating under its own authority, not that of ICANN and the ICANN 
Community. Such action, in violation of rules clearly adopted by the 
GNSO Council and ICANN Board and written into the New gTLD Applicant 
Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to 
make its own rules and adopt its own protocol without regard to the 
scope, breadth and reach of the governing rules.

It is the type of misconduct anticipated by the GNSO Council and ICANN 
Board, and why the rules demand that ICANN hold a close relationship 
with the TMCH Provider /by contract/ to allow close oversight and 
correction of misinterpretation or failure to follow the rules. (See, 
3.1 in /Relationship with ICANN/, Special Trademark Issues Review Team 
Recommendations).

/C. Presumption of Trademark Validity Does Not Extend to Non-Stylized 
Version of the Registration Marks/

Further, words and letters within a composite marks, figurative marks, 
stylized marks, and mixed marks are protected within the scope of the 
designs, logos, lettering, patterns, colors, etc. That's not a Working 
Group opinion, that's a legal opinion echoed through case law and UDRP 
decisions.

In WIPO UDRP Decision /Marco Rafael Sanfilippo v. Estudio Indigo/, Case 
No. D2012-1064, the Panel found:

“Complainant has shown that it owns two trademark registrations in 
Argentina. The Panel notes that both registrations are for “mixed” 
marks, where each consists of a composition made of words and graphic 
elements, such as stylized fonts, a roof of a house, etc. See details of 
the registrations with drawings at section 4 above.

“As explained on the INPI website, “[m] ixed (marks) are those 
constituted by the combination of word elements and figurative elements 
together, or of word elements in stylized manner.” Accordingly, the 
protection granted by the registration of a mixed mark is for the 
composition as a whole, and not for any of its constituting elements in 
particular. Thus, Complainant is not correct when he asserts that it has 
trademark rights in the term “cabañas” (standing alone), based on these 
mixed trademark registrations.”

Similarly, in the US, federal courts have found that *the presumption of 
trademark validity provided by registration does not extend to the 
non-stylized versions of the registration marks*. See e.g.,

/Neopost Industrie B.V. v. PFE Intern/., Inc., 403 F.Supp.2d 669 (N.D. 
Ill. 2005) (registration of stylized mark didn’t extend protection to 
nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 
2015) (dealing with special form mark whose words were unprotectable 
absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.

Cir. 2016).

/D. Beyond the Scope of the TMCH Protection that the GNSO Council and 
ICANN Board Agreed to Provide Trademark Owners. /

As has been pointed out in our Working Group calls, the STI evaluations 
and IRT evaluations were long and hard and both groups decided in their 
recommendations to protect only the word mark – the text itself when the 
text was registered by itself. Neither allowed for the extraction of a 
word or letters from amidst a pattern, style, composite or mixed marks; 
neither created a process for doing so; neither accorded the discretion 
to the TMCH Provider (now Deloitte) to adopt any processes to handle 
this process independently.

The STI clearly elaborated its reasoning: that extracting a word or 
letters from a larger design, gives too many rights to one trademark 
owner over others using the same words or letters. As clearly elaborated 
in the STI Recommendations and adopted by the GNSO Council and ICANN 
Board (unanimously), it would be an unfair advantage for one trademark 
owner over others using the same words or letters. Specifically:

*“(The trademarks to be included in the TC are text marks because 
“design marks” provide protection for letters and words only within the 
context of their design or logo and the STI was under a mandate not to 
expand existing trademark rights.)” *

**

To the extent that Deloitte as a TMCH Provider is operating within its 
mandate, and the limits of the rules and contract imposed on it, /it may 
not take steps to expand existing trademark rights/. The rights, as 
granted by national and regional trademark offices are rights that 
expressly include the patterns, special lettering and other styles, 
colors, and logos that are a part of the trademark granted by the 
Trademark Office and certification provided by each Trademark Office and 
presented to the Trademark Clearinghouse.

II.*Breach and Correction*

Accordingly, Deloitte is in breach of the rules that ICANN adopted and 
must revise its practice to go to follow the rules adopted by the GNSO 
Council and ICANN Board. Deloitte’s extraction of words and letters from 
patterns, special lettering, styles, colors and logos, as outlined 
above, violates the rules adopted by the GNSO Council and ICANN Board 
for the Trademark Clearinghouse operation.

Bringing Deloitte’s operation of the TMCH – and its terms and 
requirements - rules does not require a consensus of the Working Group. 
Rather, it is a fundamental aspect of our job as a Working Group, as 
laid out by the GNSO Council in our charter, to review the operation of 
the Trademark Clearinghouse in compliance with its rules. As Deloitte is 
not operating in compliance with its rules in this area, it is in breach 
and must come into compliance. The excellent work of the Working Group 
in this area, and finding this problem through hard work and research, 
should be sufficient for ICANN Staff to act in enforcement of its 
contract and our rules. Point it out clearly and directly to Deloitte, 
to ICANN Board and Staff, and to the ICANN Community is one small 
additional step the Working Group might take.

Alternatively, the Working Group *by consensus* may CHANGE the rules and 
present to the GNSO Council and ICANN Board a new set of standards by 
which Deloitte (or any future TMCH provider) may use to accept the 
design and stylized marks currently barred by the rules. But such a step 
would require a *change* to the ICANN rules under which the Trademark 
Clearinghouse operate, and then acceptance by the GNSO Council and ICANN 
Board. ICANN contractors do not have the unilateral power to make their 
own rules or to change the rule that are given them.

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