[gnso-rpm-wg] Agenda and documents for Working Group call this week

J. Scott Evans jsevans at adobe.com
Sat Apr 29 12:54:02 UTC 2017


To weigh in here, regardless of years practiced, I sat in several windowless conference room over an 8 week period in 2009. As I pointed out below, GI's were never discussed. Early on, we did discuss allowing the TMCH to take in all kinds of IP rights and then the registries might choose which of those beyond trademarks they'd like to protect through Sunrise or TM Claims. That concept was rejected.

J. Scott

Sent from my iPhone

On Apr 29, 2017, at 5:17 AM, Jonathan Agmon <jonathan.agmon at ip-law.legal<mailto:jonathan.agmon at ip-law.legal>> wrote:

Paul,

To keep this friendly, it is important to avoid personal attributes.  And, I have practiced longer than you :) . But, I respectfully still think you are incorrect. You may have your understandibg and others may have theirs. The WG is comprised of professionals from different backgrounds, schooling and experience. I think that the process needs to take all opinions, laws, and positions into consideration when proposing a single balanced position or even when there is no consensus.

Thanks,




[cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png]

Jonathan Agmon (胡韩森)

Advocate, Director

Attorney and Counsellor at Law (admitted in New York)

jonathan.agmon at ip-law.legal<mailto:jonathan.agmon at ip-law.legal>

www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.legal&data=02%7C01%7C%7Ccf6204ff8f464b7822cc08d48ef9b8f9%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290650583080033&sdata=j4p%2Fz8dRdk2XDAy9k%2F2bhqhSpZSPuTihNBD%2FIwXXwjw%3D&reserved=0>


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Soroker Agmon Nordman Pte Ltd.

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8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL


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From: icannlists at winston.com<mailto:icannlists at winston.com>
Sent: 29 April 2017 19:55
To: jonathan.agmon at ip-law.legal<mailto:jonathan.agmon at ip-law.legal>; icannlists at winston.com<mailto:icannlists at winston.com>; ipcdigangi at gmail.com<mailto:ipcdigangi at gmail.com>; mary.wong at icann.org<mailto:mary.wong at icann.org>; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week


Thanks Jonathan.  I don’t think I need to address your specific critique of my position on GIs, other than to say that after 20 years of practice in this space my conceptual disagreements with you over them isn’t based on a lack of understand of what they are.

Thank you for submitting your substantive proposal.

Co-chairs – should we start responding to this proposal on the list, or should we wait and have Jonathan be able to present it on the next call (in other words, should the process be the same for his as it was for Kathy’s and mine?  I’m happy either way.  I just want to be sure Jonathan’s proposal is given an equal chance at being fully heard.

Best to all!

Paul



From: Jonathan Agmon [mailto:jonathan.agmon at ip-law.legal]
Sent: Friday, April 28, 2017 10:36 PM
To: icannlists <icannlists at winston.com<mailto:icannlists at winston.com>>; claudio di gangi <ipcdigangi at gmail.com<mailto:ipcdigangi at gmail.com>>; Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week

Paul,

I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue.

I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH.  In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry.

Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:

“GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH.  For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.”
Finally, please note that my time zone is UTC+8.

Thanks,



[cid:image001.png at 01D2C0B5.39D3A170]


Jonathan Agmon (胡韩森)

Advocate, Director

Attorney and Counsellor at Law (admitted in New York)

jonathan.agmon at ip-law.legal<mailto:jonathan.agmon at ip-law.legal>

www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.legal&data=02%7C01%7C%7Ccf6204ff8f464b7822cc08d48ef9b8f9%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290650583090042&sdata=4m%2FZMd5yqGpIyZmjJ%2B8Xsg5iD2GteGK22ohFWRtpA6s%3D&reserved=0>


T SG +65 6532 2577

T US +1 212 999 6180

T IL +972 9 950 7000

F IL +972 9 950 5500


Soroker Agmon Nordman Pte Ltd.

133 New Bridge Road, #13-02, 059413 SINGAPORE

8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL


This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.


From: gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org> [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of icannlists
Sent: Friday, April 28, 2017 9:35 PM
To: claudio di gangi <ipcdigangi at gmail.com<mailto:ipcdigangi at gmail.com>>; Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>; icannlists <icannlists at winston.com<mailto:icannlists at winston.com>>
Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week

Thanks Claudio.

You aren’t missing anything.  The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual.  It is very ICANN.  However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse.  Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one.

I hope you are well.  It is good to see you actively participating in an ICANN WG again!  Welcome back.

Best,
Paul





From: claudio di gangi [mailto:ipcdigangi at gmail.com]
Sent: Friday, April 28, 2017 1:49 PM
To: Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>; icannlists <icannlists at winston.com<mailto:icannlists at winston.com>>
Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week

Thanks,  Paul.

I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language.

There didn't seem to be a conclusion, hence my earlier email about next steps.

Please let me know if I missing something.

Best regards,
Claudio

On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists at winston.com<mailto:icannlists at winston.com>> wrote:
Thanks Claudio.  However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time.  Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).

Best,
Paul



From: gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org> [mailto:gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org>] On Behalf Of claudio di gangi
Sent: Friday, April 28, 2017 12:58 PM
To: Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week

Mary, all,

I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.

An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?

For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?

If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.

On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?

I'm looking forward to working with everyone on the team.

Thanks!

Best regards,
Claudio







On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>> wrote:
Dear all,

The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:


1.       Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest

2.       Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update

3.       Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)

4.       Notice of deadline for further follow up questions to the Analysis Group

5.       Next steps/next meeting

Notes:

o    For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7Ccf6204ff8f464b7822cc08d48ef9b8f9%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290650583090042&sdata=5LCtw79GNl7A%2FtQ%2F03rCvLiQ4HjVmgC5lXXnSaNh9cA%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7Ccf6204ff8f464b7822cc08d48ef9b8f9%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290650583090042&sdata=IErOiwizAIQHaNp82ZpPeAQrF83kBr5uWavtFjKmVdI%3D&reserved=0> (Claims).


o    For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).

For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.

Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.

Thanks and cheers
Mary
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