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

Mon Jun 26 14:14:36 UTC 2017

Paul,

Unless and until the TMCH is operated by a body qualified in and mandated by national, regional and international TM law, I think we have to rely on the fact that such bodies (IPOs) granted TMs under the laws prevailing in their jurisdictions, and it isn’t for an operator of an administrative database, the purpose of which is simply to allow TM owners to pay to record a legal right that they have already paid for so that they can choose whether or not to pay for other things too, to re-examine the legality of those legal rights.    

Kind regards

Marie

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Paul Tattersfield
Sent: jeudi 22 juin 2017 22:56
To: Greg Shatan
Cc: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] FOR ACTION: Working Group members' poll on open TMCH questions

Brian,

Thank you for the linked 2010 letter it makes interesting reading, especially the ICANN consensus policies should respect international and national trademark laws and policies section from which you quoted.

I can understand people not wanting to re-open issues especially if there is a possibility of not reaching consensus, or a feeling any changes may not align better with their interests than the existing system does, but I am concerned if we do not explore fully the consequences of having a less than optimal core framework any incremental changes like those the questions allude to, may compound the inequities the current framework permits. 

Or even worse there will never be consensus on obvious improvements that should be made but people will never agree to because they are fearful of the consequences that will only occur because they will be built on an underlying framework which is less than optimal.

This is not ideal.

Paul.

On Thu, Jun 22, 2017 at 2:11 PM, Greg Shatan <gregshatanipc at gmail.com> wrote:

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 <tel:+41%2022%20338%2082%2047>  | E brian.beckham at wipo.int |  <http://www.wipo.int/> www.wipo.int

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at 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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