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

icannlists icannlists at winston.com
Sat Apr 29 17:38:30 UTC 2017


I’m not so sure that it is so much outside the scope of our Charter so much as we have to decide if we want to tack another year onto Phase 1 of this PDP.  I don’t.

Best,
Paul



From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Phil Corwin
Sent: Saturday, April 29, 2017 11:03 AM
To: Greg Shatan <gregshatanipc at gmail.com>; Jonathan Agmon <jonathan.agmon at ip-law.legal>
Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week

I agree with Greg’s statement, with the exception of “Whether or not there should be an RPM for GIs is a valid point for discussion.  This is not the right time for that discussion.”

Actually, I think the discussion we are having as to whether GIs which do not have trademark registrations should be eligible for registration in the TMCH, and thereby eligible for Sunrise registrations and the generation of TM Claims Notices, is close to the same debate. (But I certainly agree that the creation of a new GICH is outside the bounds of our Charter.)

Based upon the dialogue so far, I lean toward the side of argument that only GIs that have been trademarked should be eligible for TMCH registration. That seems best supported by the facts that have been brought forward. It also accords with my view that, notwithstanding the limited (in scope and demonstrated use) exceptions in the current policy, we should hew as closely as possible to maintaining the TMCH as a database of verified trademarks and not allow the registration of terms that fall short of that clear and simple standard of eligibility.

Philip S. Corwin, Founding Principal
Virtualaw LLC
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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 Greg Shatan
Sent: Saturday, April 29, 2017 11:37 AM
To: Jonathan Agmon
Cc: J. Scott Evans via gnso-rpm-wg
Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week

+1000 to J Scott on this point:

A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims.

Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims.  GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks.  Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak).  Why would GIs go into a trademark database?  Mixing GIs and trademarks as if they were indistinguishable makes no sense.  Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims.  A record in the TMCH without a corresponding RPM cannot be seriously contemplated.  Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs.

Whether or not there should be an RPM for GIs is a valid point for discussion.  This is not the right time for that discussion.  Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion.  That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks.

Greg
[As always, in my personal capacity, unless otherwise noted.]


Greg Shatan
C: 917-816-6428
S: gsshatan
Phone-to-Skype: 646-845-9428
gregshatanipc at gmail.com<mailto:gregshatanipc at gmail.com>

On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon at ip-law.legal<mailto:jonathan.agmon at ip-law.legal>> wrote:
+1



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Jonathan Agmon (胡韩森)

Advocate, Director

Attorney and Counsellor at Law (admitted in New York)

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www.ip-law.legal<http://www.ip-law.legal>



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From: Massimo at origin-gi.com<mailto:Massimo at origin-gi.com>
Sent: 29 April 2017 22:48
To: jsevans at adobe.com<mailto:jsevans at adobe.com>
Cc: jonathan.agmon at ip-law.legal<mailto:jonathan.agmon at ip-law.legal>; 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


The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level.

Best, Massimo
________________________________
From: J. Scott Evans<mailto:jsevans at adobe.com>
Sent: ‎29.‎04.‎2017 16:02
To: Massimo<mailto:Massimo at origin-gi.com>
Cc: Jonathan Agmon<mailto:jonathan.agmon at ip-law.legal>; 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
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights.

Sent from my iPhone

On Apr 29, 2017, at 6:58 AM, Massimo <Massimo at origin-gi.com<mailto:Massimo at origin-gi.com>> wrote:
The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate.

An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name.  So Prosciutto di Parma can be for sure in the TMCH.

But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory?

Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation.

Best, Massimo
________________________________
From: J. Scott Evans<mailto:jsevans at adobe.com>
Sent: ‎29.‎04.‎2017 15:18
To: Massimo<mailto:Massimo at origin-gi.com>
Cc: Jonathan Agmon<mailto:jonathan.agmon at ip-law.legal>; 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
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means.

Sent from my iPhone

On Apr 29, 2017, at 6:08 AM, Massimo <Massimo at origin-gi.com<mailto:Massimo at origin-gi.com>> wrote:
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not  divergence at all in terms of  definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality.

Best, Massimo
________________________________
From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg at icann.org>
Sent: ‎29.‎04.‎2017 14:46
To: Jonathan Agmon<mailto:jonathan.agmon at ip-law.legal>
Cc: 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
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness.

Sent from my iPhone

On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon at ip-law.legal<mailto:jonathan.agmon at ip-law.legal>> wrote:
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,



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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>

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F IL +972 9 950 5500<tel:+972%209-950-5500>


Soroker Agmon Nordman Pte Ltd.

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

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


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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%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%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%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%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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