[gnso-rpm-wg] [renamed] Back to Question #7
Kathy Kleiman
kathy at kathykleiman.com
Tue May 2 20:20:32 UTC 2017
Hi Paul,
Let me echo your respect and appreciation for "GNSO Policy, as developed
by the IRT and STI" and adopted by the Board as reflected in the AGB". I
agree! J. Scott made a similar point re: the existence of the Sunrise
Period and TM Claims itself -- all a product of the original process.
These were tough compromises negotiated carefully and worked on in good
faith by the participants and their stakeholder groups.
To that list of original agreements, we must add the bar against
acceptance of trademarks into the TMCH database with styling, design or
logo. The STI could not have been more clear in what it adopted for
addition to the TMCH database -- text marks outside of logos or designs.
The GNSO Council adopted the language, then the ICANN Board adopted it
and it was placed in the Applicant Guidebook. Exactly as you have
outlined above. In this case, the original text of the adopted rules is:
"The TC [Trademark Clearinghouse] Database should be required to include
nationally or multinationally registered "text mark" trademarks, from
all jurisdictions (including countries where there is no substantive
review). (The trademarks to be included in the TC are text marks because
"design marks" provide protection for letters and words only within the
context of their design or logo and the STI was under a mandate not to
expand existing trademark rights.)"
As the TMCH was created, and the Sunrise Period and TM Claims, so too
were these limits created to balance a system which to many (echoing
Paul Keating's earlier thought) provided unprecedented rights of
preemption to trademark owners. It all flows from the same page...
Best, Kathy
> Paul K
>
> It depends on your definition of the status quo, I suppose. If the
> status quo is the GNSO Policy, as developed by the IRT and STI and
> adopted by the Board as reflected in the AGB, meaning no mention of
> GIs in the TMCH, then the status quo seems just fine. However, if the
> status quo is that GIs have creeped into TMCH via the TMCH provider,
> than the status quo needs to be challenged.
>
> Best,
>
> Paul M
>
> *From:*gnso-rpm-wg-bounces at icann.org
> [mailto:gnso-rpm-wg-bounces at icann.org] *On Behalf Of *Paul Keating
> *Sent:* Sunday, April 30, 2017 12:54 PM
> *To:* 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
>
> Frankly I would like to know.
>
> And I don't want to maintain the status quo absent evidence that it is
> worth the intrusion.
>
> Sincerely,
>
> Paul Keating, Esq.
>
>
> On Apr 30, 2017, at 5:21 PM, Jonathan Agmon
> <jonathan.agmon at ip-law.legal <mailto:jonathan.agmon at ip-law.legal>> wrote:
>
> Paul,
>
> It's a good question that we can research, but given that some
> members of the group are less open to explore if registered GIs
> should be in the TMCH or not, I question if the entire exercise is
> not a waste of time.
>
> As I just suggested since there seems to be some disagreement
> (between US and other practitioners) perhaps leaving the status
> quo is best at this time.
>
> Thanks,
>
>
>
> 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 <http://www.ip-law.legal>
>
> *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
>
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> *From:*paul at law.es <mailto:paul at law.es>
>
> *Sent:*30 April 2017 19:01
>
> *To:*jonathan.agmon at ip-law.legal <mailto:jonathan.agmon at ip-law.legal>
>
> *Cc:*gregshatanipc at gmail.com <mailto:gregshatanipc at gmail.com>;
> 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
>
> This is a great thread and I find Greg's explanations are very
> helpful.
>
> Question: are GI's registered in a "GI registry" but NOT in a
> trademark registry entitled to treaty protections afforded to
> registered trademarks?
>
> Or are they treated "somewhat" differently as, for example, NGOs
> are treated under 6ter?
>
>
>
> Sent from my iPad
>
>
> On 30 Apr 2017, at 11:28, Jonathan Agmon
> <jonathan.agmon at ip-law.legal <mailto:jonathan.agmon at ip-law.legal>>
> wrote:
>
> Greg,
>
> When I used the word “mark”, I didn’t mean “trademark”. I was
> making a distinction between a “mark” and a “trade mark”
> because I was trying to state that various forms of indicators
> can become trademarks. Thus, the term “mark” is not reserved
> to trademarks, unless it is applied in the legal sense. If it
> is applied in the legal sense it is synonymous with the word
> “sign”.
>
> WIPO’s use of the word “sign” with respect to GIs should not
> be an indication that WIPO specifically wished to exclude
> “marks” from this definition because some other (non-US) legal
> systems define a trademark as a “sign” capable of
> distinguishing goods (or services) of one undertaking from
> those of other undertakings. See UK’s Trade Marks Act, 1994,
> s. 1. Under the UK TM Act GIS are collective trademarks. It
> states that: “a collective mark may be registered which
> consists of signs or indications which may serve, in trade, to
> designate the geographical origin of the goods or services.”
>
> I think that the rest of the discussion is not relevant to my
> point, because I am advocating the we should allow GI that
> have been registered into the TMCH because they are signs
> capable of disguising goods of one undertaking from those of
> other undertakings.
>
> Assuming we agree to have GIs that are registered in a
> national trademark registry into the TMCH, why do you object
> to having the same signs that are registered in a national GI
> registry into the TMCH?
>
> Thanks,
>
>
>
> 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 <http://www.ip-law.legal>
>
> *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
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> *From:*Greg Shatan [mailto:gregshatanipc at gmail.com]
> *Sent:* Sunday, April 30, 2017 8:11 AM
> *To:* Jonathan Agmon <jonathan.agmon at ip-law.legal
> <mailto:jonathan.agmon at ip-law.legal>>
> *Cc:* J. Scott Evans <jsevans at adobe.com
> <mailto:jsevans at adobe.com>>; Massimo <Massimo at origin-gi.com
> <mailto:Massimo at origin-gi.com>>; J. Scott Evans via
> gnso-rpm-wg <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
>
> Jonathan,
>
> Responses in-line:
>
> On Sat, Apr 29, 2017 at 10:59 PM, Jonathan Agmon
> <jonathan.agmon at ip-law.legal
> <mailto:jonathan.agmon at ip-law.legal>> wrote:
>
> Greg,
>
> You state: Claiming that GIs _are_ trademarks (or even
> "marks") is not something I can support.
>
> But, GIs are simply word marks.
>
> No, GIs are not "word marks." That is the point you are
> trying to prove. Stating it to prove the point is circular.
> They may be words (or designs, or combinations of words and
> designs). If by word "mark," you mean a trademark, then that
> is not true. If you don't mean a trademark, then what
> definition of "mark" are you using? I note that WIPO, in
> defining GIs, uses "sign" and not "mark". GIs may be words,
> and they may signify something, but they are not trademarks,
> unless and until they are registered as trademarks. Using the
> word "mark" to refer to both "trademarks" and "not trademarks"
> essentially strips it of meaning.
>
> PARMA is a word mark, is it not?
>
> It is not. PARMA is a word. It is not /per se/ a word
> mark. Whether it's a "word mark" depends on whether it is
> registered as a trademark (putting aside "common law" marks,
> since they are generally not accepted into the TMCH unless
> they are "court-validated"). If it is used in a way that
> qualifies as a trademark under the trademark laws of a
> particular jurisdiction as a trademark of some sort, and it is
> registered as a trademark, then it is a trademark (or a "word
> mark" if you wish). If it is a GI and it is registered as
> such, or if it is not registered at all, it is not a trademark.
>
>
>
> And PARMA can (and was) registered as trademarks in the US.
>
> Yes, but that hardly proves your point. Quite the opposite.
> There are currently seven registrations for PARMA (without any
> other words) on the US trademark register. With one
> exception, these trademarks are clearly not functioning in any
> way akin to a GI.
>
> Five are "standard form" registrations (text without any type
> of formatting) for PARMA, owned by five different registrants
> for the following goods and services:
>
> 1.Hard wood flooring; Engineered wood flooring; Laminate
> flooring; Luxury vinyl tile.
>
> 2.Restaurant and bar services, namely, fine dining restaurant
> services.
>
> 3.Faucets, shower heads and faucet sets. Towel rings,
> clothes-drying racks; bath accessories, namely, cup holders,
> toothbrush holders and soap dishes.
>
> 4.Computer software for use in displaying and printing digital
> typeface designs and typographic ornaments.
>
> 5. Fluid pumps-namely, irrigation and drainage pumps,
> sewerage and sump pumps, tractor-drawn farm implements-namely,
> corrugators, crop toppers, and beet cleaners.
>
> One is a registration for "PARMA!" (with an exclamation point)
> for "Flavourings and seasonings; Food seasonings; Seasonings."
>
> One is a registration for PARMA Plus Design (consisting of the
> word "PARMA" inside a stylized crown) for "Ham Products."
> This registration is owned by CONSORZIO DEL PROSCIUTTO DI
> PARMA ASSOCIATION ITALY Largo Calamandrei 1/A Parma (PR)
> ITALY, as a Certification Mark, with the statement: "The
> certification mark, as used by persons authorized by the
> certifier, certifies the regional origin of the products and
> certifies that those products conform to the production
> process, size, shape, weight, curing, slicing and packaging
> requirements promulgated by the certifier." I assume this is
> the registration you are referring to (particularly since
> there is no "standard form" registration for PARMA owned by
> the CONSORZIO DEL PROSCIUTTO DI PARMA).
>
> The CONSORZIO DEL PROSCIUTTO DI PARMA also owns two other
> Certification Mark registrations containing the word PARMA:
> One for PARMA HAM ("Ham" disclaimed) and one for PROSCIUTTO DI
> PARMA ("Prosciutto" disclaimed). Both of these are standard
> form registrations. (
>
> Notably, there is a registration for PARMA BRAND Plus Design
> (consisting of the words PARMA BRAND in a circle with a flying
> eagle clutching a sausage in its talons) ("Brand" disclaimed)
> for MEAT PRODUCTS-NAMELY, SAUSAGE, SALAMI, CAPICOLLO, LUNCH
> MEATS, owned by Parma Sausage Products, Inc. of Pittsburgh,
> PA. This registration predates all of the registrations owned
> by the Consorzio.
>
> Interestingly, all three of the Consorzio's applications were
> refused registration by the USPTO based on the PARMA BRAND
> Plus Design registration (which at that time included
> "Prosciutto" among its goods and services). *(For all those
> talking about "scope of protection" of text + design marks,
> this is a great example to consider -- the two text-only marks
> and the PARMA (and Crown) mark were refused registration by
> PARMA Brand plus a sausage-toting eagle. Clearly the scope of
> the PARMA Brand registration extended beyond the context of
> its design.) * The Consorzio del Prosciutto di Parma and Parma
> Sausage Products entered into a settlement agreement, whereby
> Parma Sausage agreed to remove "prosciutto" from its goods and
> services, which allowed the Consorzio applications to proceed
> to registration on the trademark register.
>
> Then, and only then, did the PARMA (and Crown), PARMA HAM and
> PROSCIUTTO DI PARMA "signs" become trademarks (assuming they
> were not registered as trademarks elsewhere first). These
> registrations could be relied on to register PARMA, PARMA HAM
> and PROSCIUTTO DI PARMA in the TMCH (noting there is still
> some disagreement in the WG whether the crown in the PARMA
> registration somehow disqualifies it from serving as the basis
> for entry of PARMA into the TMCH).
>
> Of course, each of the first six registrations above could
> also form the basis for entering PARMA into the TMCH (the
> sixth by excluding the "!"). None of these are GIs, of
> course. And the PARMA BRAND registration could form the basis
> for entering PARMA BRAND into the TMCH (again noting the
> disagreement on how such text plus design marks should be
> handled). This too, is not a GI, even if it used for meat
> products (but not prosciutto) made in the great city of
> Pittsburgh, PA. https://www.parmasausage.com/
>
> Can you explain, what you meant?
>
> Hope that helps. I've attached a document with some of the
> info referred to here....
>
> Thanks,
>
> You are most welcome.
>
> Greg
>
> <image001.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 <http://www.ip-law.legal>
>
>
>
> *T*SG+65 6532 2577 <tel:+65%206532%202577>
>
> *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
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> message cannot be guaranteed on the Internet.
>
> *From:*Greg Shatan [mailto:gregshatanipc at gmail.com
> <mailto:gregshatanipc at gmail.com>]
> *Sent:* Saturday, April 29, 2017 5:37 PM
> *To:* Jonathan Agmon <jonathan.agmon at ip-law.legal
> <mailto:jonathan.agmon at ip-law.legal>>
> *Cc:* J. Scott Evans <jsevans at adobe.com
> <mailto:jsevans at adobe.com>>; Massimo
> <Massimo at origin-gi.com <mailto:Massimo at origin-gi.com>>; J.
> Scott Evans via gnso-rpm-wg <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
>
> +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 <tel:%28917%29%20816-6428>
> S: gsshatan
> Phone-to-Skype: 646-845-9428 <tel:%28646%29%20845-9428>
> 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
>
> <image001.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 <http://www.ip-law.legal>
>
>
>
> *T*SG+65 6532 2577 <tel:+65%206532%202577>
>
> *T*US +1 212 999 6180 <tel:%28212%29%20999-6180>
>
> *T*IL +972 9 950 7000 <tel:+972%209-950-7000>
>
> *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
>
>
>
>
>
>
>
>
>
>
>
> 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:*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,
>
> <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%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vZtzroklJn8U8PtzSsFvxXra%2FUpVHdIy862yVH2W53U%3D&reserved=0>
>
>
> *T*SG+65 6532 2577 <tel:+65%206532%202577>
>
> *T*US +1 212 999 6180
> <tel:%28212%29%20999-6180>
>
> *T*IL +972 9 950 7000 <tel:+972%209-950-7000>
>
> *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
>
> This message is confidential. It may also
> be privileged or otherwise protected by
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> rules. If you have received it by mistake,
> please let us know by e-mail reply and
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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:*
>
> oFor _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).
>
> oFor _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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