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

Sat May 20 20:07:53 UTC 2017

I agree with the clarification -- we're talking about *registered* GIs, but
excluding trademarks.  Unregistered GIs are not part of this discussion and
neither are trademarks.  In other words, we are discussing GIs that are
registered in *sui generis *protection systems.

I think we need to deal with GIs as a unique category of Intellectual
Property and discuss protection of GIs on their own merits.  (We can put
aside registered trademarks that function as GIs, since those are already
part of the TMCH, Sunrise and Claims.). We would need a greater depth of
knowledge about how GIs are protected in those countries that protect GIs
under a registration scheme (other than through the trademark laws).

If anyone has a worldwide survey of protection of GIs on a national and
multinational basis, that would be very helpful.

My general understanding is that various jurisdictions protect GIs in
widely differing ways -- some have GI registries (with differing criteria
and differeng protections), some have statutes that protect specified GIs,
some protect GIs through regulatory/administrative/trade-related means,
some protect GIs only through "curative" means using litigation (which
further breaks down to whether they use unfair competition or passing off
theories or both), and some may not protect them at all.

I'll let J. Scott speak for himself, but I think his point was that a
significant level of international parity is a necessary foundation for us
to create "ICANN-style" RPMs -- and the vastly differing variety of
approaches to GI protections evidences a notable lack of international
parity and consistency, which in turn raises concerns about the prudence of
this WG creating RPMs for GIs.  This does not need to be the last word on
the subject, but it is a subject that will require truly significant debate
and exploration.  I think these are the reasons why J Scott suggested the
approach summarized by Mary Wong in her recent email -- not to quash debate
but to find the right forum for it.

On a related note, when I think about what we would need to accomplish to
do justice to the issues involving GIs, I do share Paul McGrady's concern
that such an exploration would add a year to our work.  My concern is that
a subteam would have an extensive course of work, and that finding time in
the work plan to do it would be extremely challenging.  I don't think the
subteam needs to exist now, since its scope does not overlap with the TMCH
questions.  The TMCH question that's relevant here is what is meant by
"mark protected by statute or treaty" and that is one we should focus on
now, through Paul and Kathy's proposals

Now we do have a Charter question that touches on GIs, and we need to look
at that Charter question in due course and decide how to respond to it.
How and when we'll do that, I'll leave to the Co-Chairs.

Greg

On Fri, May 19, 2017 at 9:03 AM Jonathan Agmon <jonathan.agmon at ip-law.legal>
wrote:

> I agree with your statement in general. I am not sure when it comes to
> protection of IP protected strings in the domain name system, international
> parity would provide a balance at the end of the day. This,  because
> various countries have different forms of protection and would not
> necessarily agree with each other on how to protect some strings, even if
> they agree such forms of strings should be protected. Moreover, some in
> this space may abuse such lack of parity.  I hope that the development of
> Policy in this WG would overcome such international lack of parity by
> agreeing on what should go in, even if some countries have disagreement
> about how to protect these strings.
>
>
>
> I hope we can agree that applying the above to GIs, the lack of
> international parity should not prevent the WG from agreeing that some
> strings should be recorded for sunrise claims purposes. If the first stage
> is passed, then we should look into the minimum requirements to allow them
> into a TMCH/Ancillary database which would allow owners to enjoy sunrise
> claims. Such requirements should in my view mandate registration in a
> national law provided for registry.
>
>
>
> I think Claudio’s proposal to have a sub-team review the various forms of
> registration/protection for GIs and recommend which ones should go into a
> database was proper to try and reach a clear and balanced solution for this
> type of strings.
>
>
>
>
>
>
>
>
>
>
>
> Jonathan Agmon (胡韩森)
>
> Advocate, Director
>
> Attorney and Counsellor at Law (admitted in New York)
>
> jonathan.agmon at ip-law.legal
>
> 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 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
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> of this message cannot be guaranteed on the Internet.
>
>
>
> *From:* J. Scott Evans [mailto:jsevans at adobe.com]
> *Sent:* Friday, May 19, 2017 12:05 PM
> *To:* Jonathan Agmon <jonathan.agmon at ip-law.legal>
> *Cc:* claudio di gangi <ipcdigangi at gmail.com>; Dorrain, Kristine <
> dorraink at amazon.com>; Dorrain, Kristine via gnso-rpm-wg <
> 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
>
>
>
> Mechanisms with international effect need international parity of rights
> to be balanced. There are many types of IP that are jurisdiction specific
> that are not included for that very reason.
>
> Sent from my iPhone
>
>
> On May 19, 2017, at 4:36 AM, Jonathan Agmon <jonathan.agmon at ip-law.legal>
> wrote:
>
> 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.
>
>
>
> Thanks,
>
>
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [
> mailto:gnso-rpm-wg-bounces at icann.org <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
>
>
>
> Kristine,
>
>
>
> 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
> <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.trademark-clearinghouse.com%2Fsites%2Fdefault%2Ffiles%2Ffiles%2Fdownloads%2FTMCH%2520guidelines%2520v1.0%2520_1.pdf&data=02%7C01%7C%7C06f62058313f494a3f2d08d49e9222d9%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C1%7C636307797870426953&sdata=fyTdAwtcRMA1ghjHsYrVgU37oTtwutAlM23Qs7bb%2B3s%3D&reserved=0>
>
>
>
>
> 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,
>
> Claudio
>
>
>
>
>
> <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
>
> www.ip-law.legal
> <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.legal&data=02%7C01%7C%7C06f62058313f494a3f2d08d49e9222d9%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636307797870426953&sdata=2b%2Fso96AEKyuiUubN0k5d5iUCQrGxdIIMEJwe8L2vec%3D&reserved=0>
>
> *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 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
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>
>
>
> On Thu, May 18, 2017 at 11:06 AM, Dorrain, Kristine <dorraink at amazon.com>
> wrote:
>
> Claudio,
>
>
>
> 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?
>
>
>
> Thanks,
>
>
>
> Kristine
>
>
>
> Kristine Dorrain
>
> Corp Counsel – IP | Amazon | 206.740.9339
>
> dorraink at amazon.com
>
>
>
>
>
>
>
> *From:* 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>; Mary Wong <mary.wong at icann.org>;
> 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> 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> on behalf of claudio di gangi <
> ipcdigangi at gmail.com>
> *Date: *Thursday, May 18, 2017 at 00:38
> *To: *Amr Elsadr <amr.elsadr at icann.org>, "gnso-rpm-wg at icann.org" <
> 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> 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://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense.proofpoint.com%2Fv2%2Furl%3Fu%3Dhttps-3A__community.icann.org_x_egffAw%26d%3DDwMFaQ%26c%3DFmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM%26r%3DDJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y%26m%3DChPYu7Pom9Q696Uwc8-dT46u9trdGITKjSEadA6pzZ8%26s%3DgBvKh0Vr3M8dBZqDSkduiGQ0pU3m58XAovvRQP65PjM%26e%3D&data=02%7C01%7C%7C06f62058313f494a3f2d08d49e9222d9%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636307797870426953&sdata=QTxTcKWiWGV9G1TzjTU6ZiAZAXRi2aFW762U0Upj02o%3D&reserved=0>
>
>
>
> 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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-- 

*Greg Shatan *C: 917-816-6428
S: gsshatan
gregshatanipc at gmail.com
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