[gnso-rpm-wg] Action Items from Review of all RPMs in all gTLDs PDP Working Group Call - 17 May 2017

Thu May 18 19:21:04 UTC 2017

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From: ipcdigangi at gmail.com
Sent: 18 May 2017 8:58 pm
To: psc at vlaw-dc.com
Cc: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Action Items from Review of all RPMs in all gTLDs PDP Working Group Call - 17 May 2017

Phil,

Thanks so much for your feedback and for this line of inquiry.

The notion of maintaining non-trademarked GIs in an ancillary database was based on an effort to find a compromise solution with stakeholders who expressed concern about keeping both types of IP records in the same database. Currently, we refer to this tool as the "Trademark" Clearinghouse, so I think some feel that adding different types of IP records in the same database may send a mixed message on some level. (Of course, I defer to those who raised this concern because I do not want to speak on anyone's behalf).

There may be administrative and/or policy reasons (as you suggest) that would justify keeping things separate. The current rules permit Deloitte to establish an ancillary database, presumable for these types of issues, so it wouldn't entail reinventing the wheel. In fact, this was one of the issues that led to me suggest forming a small team on GIs to take a look at the issue and report back with some preliminary findings for the WG's consideration. I think it would also help to get input from Deloitte on the costs/benefits of organizing things in this manner.

I hope this is responsive to your question, and please let me know of any follow-up questions/comments.

Best regards,
Claudio

On Wed, May 17, 2017 at 11:21 PM, Phil Corwin <psc at vlaw-dc.com<mailto:psc at vlaw-dc.com>> wrote:
If the outcome of that analysis is yes - GIs as a form of IP should be protected in new gTLDs, then a subsequent issue to be determined is whether GIs should be recorded in the TMCH, or an ancillary database maintained by the operator of the TMCH, which is currently Deloitte

Claudio:

Why are we complicating things?

If non-trademark GIs were be afforded the RPMs of sunrise registration and TM claims notice, why would we want the registrar to have to check against two separate databases?

If you are contemplating different RPMs that is a further complication.

Just wondering.

Thanks, Philip

Philip S. Corwin, Founding Principal
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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<mailto:gnso-rpm-wg-bounces at icann.org>] On Behalf Of claudio di gangi
Sent: Wednesday, May 17, 2017 10:55 PM
To: Amr Elsadr; Mary Wong; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] Action Items from Review of all RPMs in all gTLDs PDP Working Group Call - 17 May 2017

Mary,

Yes, this is very helpful.

For clarification, an important element of the proposal was not to have GIs recorded in the TMCH per se.

Rather, the proposal was to have a subteam consider whether the RPMs, as currently designed, afford protection to all GIs (as some GIs are not registered as TMs in certain jurisdictions), and if not, to consider changes to the RPMs to ensure protection for this type of IP.

If the outcome of that analysis is yes - GIs as a form of IP should be protected in new gTLDs, then a subsequent issue to be determined is whether GIs should be recorded in the TMCH, or an ancillary database maintained by the operator of the TMCH, which is currently Deloitte.

Deloitte is permitted to maintain an ancillary database under the current rules.

So the issue is really about the RPMs and the protection of GIs (namely, those GIs that are not registered as trademarks, but are protected under national laws that do not require their registration on the trademark register).

I hope this helps clarify. Please let me know if you have any questions.

Thank you for your help.

Best regards,
Claudio

On Wed, May 17, 2017 at 7:12 PM Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>> wrote:
Hello Claudio and everyone,

In the case of this particular Action Item, the staff understanding is that we will ask the full Working Group (especially those members who could not attend the call held earlier today) if they agree that the Working Group will not be considering the question of whether GIs should be included in the TMCH. If that is the general view of the Working Group, then the next step can be for those in favor of including GIs in the TMCH to work on a proposal that can be sent to the GNSO Council in respect of source identifiers (such as GIs and other than as registered trademarks) that may be protectable but not necessarily intended to be covered by the current scope of the TMCH. This may take the form of a new PDP or possibly be a separate matter to be discussed at the appropriate time by this group.

I hope this is helpful. Once the recording and transcript of the call today are available, staff will follow up with the Working Group to find out what the general view of the group is on this GI questions.

Cheers
Mary

From: <gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org>> on behalf of claudio di gangi <ipcdigangi at gmail.com<mailto:ipcdigangi at gmail.com>>
Date: Thursday, May 18, 2017 at 00:38
To: Amr Elsadr <amr.elsadr at icann.org<mailto:amr.elsadr at icann.org>>, "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: Re: [gnso-rpm-wg] Action Items from Review of all RPMs in all gTLDs PDP Working Group Call - 17 May 2017

Amr, all,

I would like to request guidance on the last action item, #5...

I'm confused why the Council would consider a PDP on the TMCH and a certain form of IP, when those issues are supposed to be addressed by this Working Group?

Or was this action item intended to convey something different?

Best regards,
Claudio
On Wed, May 17, 2017 at 4:25 PM Amr Elsadr <amr.elsadr at icann.org<mailto:amr.elsadr at icann.org>> wrote:
Dear Working Group Members,

Below are the action items from today’s Working Group call. They are also posted along with the notes, meeting documents/materials, attendance, recordings and transcripts on the meeting’s wiki page here: https://community.icann.org/x/egffAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_egffAw&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=ChPYu7Pom9Q696Uwc8-dT46u9trdGITKjSEadA6pzZ8&s=gBvKh0Vr3M8dBZqDSkduiGQ0pU3m58XAovvRQP65PjM&e=>

Thanks.

Amr

Action Items:

1. Staff to circulate a call for consensus on the Working Group mailing list regarding the Working Group consideration of proposals to include Geographical Indications in the TMCH
2. Staff to consolidate resources of data/work available on consideration of non-exact matches generating Claims Notices, and share with the Working Group
3. Michael Graham to repost his proposal on trademark non-exact matches generating Claims Notices, with refinements based on discussions held to-date
4. Rebecca Tushnet to repost suggestions on data required to evaluate the proposal to extend the match criteria of permissible records in the TMCH (DONE)
5. Claudio Di Gangi, Jonathan Agmon and Massimo Vittori to consider drafting a proposal for the GNSO Council to consider a PDP on inclusion of Geographical Indications in the TMCH

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