[gnso-rpm-wg] FOR ACTION: Working Group members' poll on open TMCH questions

[Greg Shatan]

Brian,

I was going to *ad nauseum* instead of "at length"; otherwise, I fully
concur and support your remarks.

Greg

On Thu, Jun 22, 2017 at 9:08 AM, Beckham, Brian <brian.beckham at wipo.int>
wrote:

> Paul,
>
>
>
> This rather fundamental topic was addressed at length from the IRT reports
> through to the various AGB iterations – it was what led to agreement around
> the notion of “proof of use” and various national trademark office
> examination procedures.
>
>
>
> On this, in a letter dated January 26, 2010
> <http://www.wipo.int/export/sites/www/amc/en/docs/icann260110.pdf> on the
>  “STI Report on Trademark Protection in New gTLDs”, we said:
>
>
>
> ICANN policy development related to the technical coordination of the DNS
> should respect international and national legal and policy instruments. As
> presently drafted, the STI Report prima facie permits registries and the
> URS to discriminate against jurisdictions that do not conduct “substantive
> review” of trademark applications (TC §§ 4.1, 5.2, and 6.2, Annexes 6 and
> 7). Presumably this is meant to exclude trademarks registered with national
> IP offices that do not conduct examination on relative grounds.
> *[footnote]*  It may be noted that these offices routinely provide for
> opposition procedures achieving similar effect. The STI recommendation goes
> against the observation made by the WIPO Standing Committee on the Law of
> Trademarks, Industrial Designs and Geographical Indications in connection
> with the “Relation Between Opposition and Examination Procedures,” that
> neither approach (examination on relative grounds or opposition procedures)
> constitutes a preferred model.
>
>
>
> *[footnote]* E.g., Austria, France, Germany, Italy, Spain, Switzerland,
> the United Kingdom, Benelux, and the EC (OHIM).
>
>
>
> That comment remains valid today.
>
>
>
> Thanks for noting.
>
>
>
> Brian
>
>
>
> Brian Beckham | Head, Internet Dispute Resolution Section | WIPO
> Arbitration and Mediation Center
> 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247
> <+41%2022%20338%2082%2047> | E brian.beckham at wipo.int | www.wipo.int
>
>
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces@
> icann.org] *On Behalf Of *Paul Tattersfield
> *Sent:* Thursday, June 22, 2017 11:03 AM
> *To:* Mary Wong
> *Cc:* gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] FOR ACTION: Working Group members' poll on
> open TMCH questions
>
>
>
> Thank you for the opportunity to comment on the Design Marks and GIs
> survey.
>
> When some jurisdictions require substantive review of marks entering their
> trademark database and others give out marks like confetti for any
> conceivable idea you might wish to pursue in the future and, given the TMCH
> has to sit on top of all jurisdictions, I think there is a fundamental
> question that needs to be answered before delving into the detail of the
> other questions since its answer impacts the approach taken in most of the
> other questions.The first question has to be:
>
> Should we require a substantive review of all marks entering the TMCH?
>
> Best regards,
>
> Paul.
>
>
>
> On Thu, Jun 22, 2017 at 4:19 AM, Mary Wong <mary.wong at icann.org> wrote:
>
> Dear all,
>
>
>
> Please be informed that the poll to assess the sense of all members of the
> Working Group, in relation to certain types of design marks (i.e. stylized
> and composite marks) and to treatment of geographical indications, is now
> open. * Please be sure to fill in your response by 23.59 UTC on Monday 10
> July*: https://www.surveymonkey.com/r/WV26DQK.
>
>
>
> IMPORTANT NOTE:
>
>    - The Working Group co-chairs, assisted by staff, have developed a
>    Reference Guide containing relevant definitions (i.e. of “stylized marks”
>    and “composite marks”) as well as of relevant examples. *This
>    Reference Guide is attached for your convenience, and it should be
>    consulted as Working Group members go through the survey*, which
>    consists of 11 substantive questions and we believe ought *not* to
>    take too much time to fill in.
>
>
>
> Finally, please also note – the poll should be taken only by Working Group
> members, and not observers.
>
>
>
> Thanks and cheers
>
> Mary
>
>
>
>
>
>
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>
>
>
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