[gnso-rpm-wg] [renamed] Geographic indications

Massimo Massimo at origin-gi.com
Wed Feb 8 17:16:29 UTC 2017

Thank you Kathy and Marc.

I agree with Marc, the 3 marks listed by Kathy are not being used as geographical indications. The interest of question 8 for me is to enquire on those marks filed under paragraph 2.4.1 of the TMCH guidelines (marks protected by Statute or Treaty) : “For marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to: geographical indications and designations of origin”.



From: trachtenbergm at gtlaw.com [mailto:trachtenbergm at gtlaw.com]
Sent: 08 February 2017 17:58
To: kathy at kathykleiman.com; Massimo <Massimo at origin-gi.com>; gnso-rpm-wg at icann.org
Subject: RE: [gnso-rpm-wg] [renamed] Geographic indications


I would note that at least for the first 3 marks listed below, they are not being used as geographic indicators.  Rather, they are registered in connection with the following goods/services:

Class 09: Apparatus for recording, transmission or reproduction of sound, images or data; Data carriers of all types with and without data; Software; Electronic publications [downloadable]; Data processing equipment; Computer

class 35: Advertising; Online advertising in a computer network; Publication of printed products [also in electronic form] for advertising purposes; Presentation of companies on the Internet and other media; Mediation of trade and economic contacts, also via the Internet; Public relations [public relations]; Managing directors; Business administration; Office work; Compilation, updating and maintenance of data in computer databases; Systematization of data in computer databases; Collecting and arranging of topic-referred press articles

Class 38: Providing access to computer programs on data networks; Providing access to information on the Internet, in particular via smartphones; Providing access to server services on the Internet; Providing Internet chatrooms; Providing online conversation folders and electronic mailboxes for transferring messages between users to software applications; Providing portals on the Internet; Computer support, namely providing access to software program versions via websites, by e-mail, telephone and other terminals suitable for telecommunications as support services for troubleshooting; Wireless electronic transmission of data, documents, information, messages and software applications; Electronic transmission and streaming of digital content to third parties via worldwide and local computer networks; E-mail services; Message and image transmission by computer; Telecommunications, in particular telecommunications via platforms and portals on the Internet; Providing access to databases; Forwarding all kinds of Internet addresses [Web messaging]

As discussed any times before, a dictionary word or name of a place can have a different meaning depending on the context.  In some contexts the word can have source indicative (i.e., trademark) meaning when used in connection with goods or services unrelated to the word.  In other contexts, the word can have generic or descriptive meaning.  For example, APPLE has source indicating/trademark meaning when used in connection with computers and devices, but generic or descriptive meaning when used in connection with apples.  Similarly, “Rome” could be used as a geographic indicator to refer to the city in Italy in one context or have source indicating/trademark meaning in another, such as ROME Furntiture.

Furthermore, since the example below says “registrants”, presumably the clams notice did deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names.

Best regards,

Marc H. Trachtenberg
Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601
Tel 312.456.1020
Mobile 773.677.3305
trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/>

[Greenberg Traurig]

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 Kathy Kleiman
Sent: Wednesday, February 08, 2017 10:24 AM
To: massimo at origin-gi.com<mailto:massimo at origin-gi.com>; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: [gnso-rpm-wg] [renamed] Geographic indications


Tx you for posting information about Geographic Indications. Others responded privately to share that they see geographic terms and indicators in the TMCH Database - some of which are coming from design/style/figurative marks (linking TMCH charter questions 7 and 8).

Specifically, John Berryhill shares that registrants he works with have received TM Claims Notices for:

- Munich  --- https://register.dpma.de/DPMAregister/marke/register/3020130626206/DE<https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAregister_marke_register_3020130626206_DE&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=-ilAU1MAaJUL-TG2B6iSrSFzOpqlkYqIZcsrnt6BMl0&e=>

- Muenchen   --- https://register.dpma.de/DPMAregister/marke/register/3020130626192/DE<https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAregister_marke_register_3020130626192_DE&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=omKayKP9cG7bgeZpFzA8o97o8p-KfL_RWdA4jDtVNyM&e=>

- Munchen  --- https://register.dpma.de/DPMAregister/marke/register/3020130626214/DE<https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAregister_marke_register_3020130626214_DE&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=TN4bwErzPTxS3VKDpoKH_LZx1RHp2FDylEzyY2dqYrI&e=>

- Tahiti  - French trademark

-  Ireland -- UK trademark

He notes that the registrants were using the domain names in geographically descriptive ways.

Best, Kathy

On 2/7/2017 11:04 AM, Massimo wrote:
Dear Mary,

I am not sure I understand the answer provided to question 8 on Geographical Indications: As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements".

I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8.



Mr Massimo Vittori
Managing Director – oriGIn
1, rue de Varembé 1202, Geneva, Switzerland
Telephone: +41 (0) 22 755 07 32
E-mail: massimo at origin-gi.com<mailto:massimo at origin-gi.com>


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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 Mary Wong
Sent: 06 February 2017 15:50
To: gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up

Dear all,

Following on the circulation of the previous summary table of the questions, input and discussions so far on TMCH Charter Questions categories 1 and 2 (below), please find attached a similar summary table for the remaining categories (3 – 6). As the Working Group has yet to begin discussing these, staff has taken the liberty of adding what we believe to be relevant background information from the community comments to the TMCH that were provided for the 2015 RPM Paper.

We will post both tables to the Working Group wiki for your easy reference as well.

Thanks and cheers

From: Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>
Date: Thursday, February 2, 2017 at 18:18
To: "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Table summarizing TMCH Charter questions, WG follow up questions, and input from Deloitte and Registry Operators

Dear all,

As discussed at the end of the Working Group call yesterday, staff has begun to compile a table that combines the agreed TMCH Charter questions with the relevant Working Group follow up questions, Deloitte response (if any), and (where applicable) input that was received from various registry operators and the Registries Stakeholder Group (note that the Registries SG is the only community group so far that has provided us with a response to our initial solicitation for input from all the various Supporting Organizations, Advisory Committees and GNSO Stakeholder Groups and Constituencies).

Attached is the compilation we have done for TMCH Categories 1 (Education) and 2 (Verification and Updating of TMCH Data). As Kathy and others noted on the call, not all questions have direct responses, and in some cases we have inserted what we thought might be relevant information even if it is not an actual reply. Do let us know if you spot any inaccuracies or omissions.

We hope you find the document useful. If we may, we suggest that you review it with a view toward identifying the following:

•         What additional data or follow up input is needed, and from whom, to complete our review of these aspects of the TMCH?

•         What additional data or follow up input should we request from Deloitte, including for our expected discussion with them at ICANN58?

Please note that we have not yet included any information from the Analysis Group’s review of the TMCH, as we understand that a Final Report will be forthcoming from them shortly, and possibly before ICANN58. We will incorporate any relevant data once the Final Report is out, and will in the meantime continue working on a table for the remaining TMCH Charter categories and questions.

The full Deloitte response to the TMCH Data Gathering questions and the three responses we received to the set of Registry-directed questions can be found here: https://community.icann.org/x/_pHRAw<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-5FpHRAw&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=j1dzQaxlhM5xBUhXEYRGC0lh_4M1Z-WKmCcEoU5x7NY&e=>.

The full Registries Stakeholder Group response to our early solicitation for overall input can be found here: https://community.icann.org/download/attachments/59643854/RySG%20RPM%20Response_05JUL16.pdf?version=1&modificationDate=1468352438000&api=v2<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_download_attachments_59643854_RySG-2520RPM-2520Response-5F05JUL16.pdf-3Fversion-3D1-26modificationDate-3D1468352438000-26api-3Dv2&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=pYnmfdJT0T2YnwjwuF10ZkyTBa3KLsqX9ZFv-2wmcQo&e=>.

Thanks and cheers

Mary Wong
Senior Policy Director
Internet Corporation for Assigned Names and Numbers (ICANN)
Email: mary.wong at icann.org<mailto:mary.wong at icann.org>
Telephone: +1-603-5744889


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