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

Jonathan Agmon jonathan.agmon at ip-law.legal
Fri May 19 08:35:54 UTC 2017

To add to Claudio’s response as to Kristine’s question:
“Is there a particular harm that you think companies with unregistered GIs face that other companies with other sorts of unregistered (or common law) marks aren’t facing?“

I agree and support that not everyone should get in and the idea is not to get everyone in, but to accommodate foreign (non-US in this case) registration systems. When it comes to GIs the US uses the trademark system to register GIs. In Europe, soon, you will not be able to register GIs as a trademark (Massimo can provide more details). In some countries, to register a GI you are required to use a special registry (see Brazil, India, Russia for example). Therefore, we should accommodate registered GIs, if they are registered eithet as trademarks or under ancillary or  sui generis registries. There are other forms of non-registration schemes for GI protection, which I didn't address and would personally think they should be excluded.
We can and should allow such strings protection when they are registered under national laws and according to the various systems available.

I hope this answers the question more fully.


From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of claudio di gangi
Sent: Thursday, May 18, 2017 11:20 PM
To: Dorrain, Kristine <dorraink at amazon.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


Thank you, I think these are great questions. I provided a response below for your consideration. Also, Jonathan and Massimo are extremely well-versed in GIs, and they may be able to address any gaps in my analysis.

According to the TMCH Guidelines, http://www.trademark-clearinghouse.com/sites/default/files/files/downloads/TMCH%20guidelines%20v1.0%20_1.pdf

the following types of marks are eligible: (see p.7 of the TMCH Guidelines).

"The following are not considered registered trademarks but might be eligible for inclusion in the Clearinghouse under another type of trademark:

 *   Well-known or famous trademarks, unless they are also registered;

 *   Unregistered (including common law) trademark;

 *   Court-validated marks;

 *   Marks protected under statute or treaty;

 *   Other marks that constitute intellectual property"

In the United States, GIs are protected as a type of trademark. Specifically, they are afforded protection as a "certification mark". Since the GI is registered as a "certification mark" in the U.S., the owner of the mark is not allowed to use it in commerce, but licenses the mark for use by producers and distributors. As a GI, the sign is used in commerce to certify that the goods associated with the mark originate in a particular location, and because of the characteristics of that location, the goods have a certain reputation for quality. As a certification mark, the mark can be recorded in the TMCH and is eligible for protection in both Sunrise and Claims.

In other countries, GIs are protected based on national (or multi-national) laws that create a 'sui generis' system of protection for these types of signs. This is a special form of protection; "sui genris" from Latin, means "of its own kind". In these countries, GIs are registered on a separate registry within the trademark office.

The fundamental issue is the following:

What is the rationale for protecting GIs in new gTLDs, when the GI is registered as a "certification mark" in the United States, but it is denied protection when the GI is registered in another country under a national law specifically for these types of signs? The GI is serving the same commercial function (as described above) within the country, whether it is registered as a certification mark or registered on the GI registry.

I hope you find this explanation helpful. Please let me know of any questions/comments.

Best regards,


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>


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On Thu, May 18, 2017 at 11:06 AM, Dorrain, Kristine <dorraink at amazon.com<mailto:dorraink at amazon.com>> wrote:

There are several types of rights not recorded in the TMCH.  This was part of the balance that was stuck when the TMCH/Sunrise/Claims was formed.  We don’t let in: common law marks, purely figurative marks, and non-registered GIs.  The DB is for *registered* marks.

Is there a particular harm that you think companies with unregistered GIs face that other companies with other sorts of unregistered (or common law) marks aren’t facing?  Not everyone gets in.  We know this.  Anyone with an unregistered mark (GI or otherwise) can get in the TMCH by registering their mark.

Can you help me understand why we need special rules for this particular class of mark?



Kristine Dorrain
Corp Counsel – IP | Amazon | 206.740.9339
dorraink at amazon.com<mailto:dorraink at amazon.com>

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 7:55 PM
To: Amr Elsadr <amr.elsadr at icann.org<mailto:amr.elsadr at icann.org>>; 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] Action Items from Review of all RPMs in all gTLDs PDP Working Group Call - 17 May 2017


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,

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.


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,
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=>



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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