[GNSO-RPM-WG] Q#8

Tue Sep 17 17:06:41 UTC 2019

Sorry the last part of my email was lost:

Proposals for changes to the scope of the RPMs should be re-targeted at 7.1
& 7.2

The proposed wording in 3.2.3 is not right the current wording would seem
to be fine.

3.2.4 isn’t really a problem pre se for the RPMs though it is very wide if
they decide to include all types of intellectual property :-) Though is
that within our Charter?

On Tue, Sep 17, 2019 at 4:58 PM Paul Tattersfield <gpmgroup at gmail.com>
wrote:

> Seems to me the underlying premise is flawed
>
> 3. CRITERIA FOR TRADEMARK INCLUSION IN CLEARINGHOUSE
> …
> 3.2 The standards for inclusion in the Clearinghouse are:
> 3.2.1 … 3.2.5  etc.
>
> Whereas the [compulsory] RPMs flow from 7.0
>
> 7. PROTECTION FOR MARKS IN CLEARINGHOUSE
> The scope of registered marks that must be honored by registries in
> providing Trademarks Claims services is broader than those that must be
> honored by registries in Sunrise services.
>
> 7.1 For Trademark Claims services - Registries must recognize and honor
> all word marks that have been or are: (i) nationally or regionally
> registered; (ii) court-validated; or (iii) specifically protected by a
> statute or treaty in effect at the time the mark is submitted to the
> Clearinghouse for inclusion. No demonstration of use is required.
>
> 7.2 For Sunrise services - Registries must recognize and honor all word
> marks: (i) nationally or regionally registered and for which proof of use –
> which can be a declaration and a single specimen of current use – was
> submitted to, and validated by, the Trademark Clearinghouse; or (ii) that
> have been court-validated; or (iii) that are specifically protected by a
> statute or treaty currently in effect and that was in effect on or before
> 26 June 2008.
>
> On Tue, Sep 17, 2019 at 4:29 PM Paul Keating <Paul at law.es> wrote:
>
>> Seems to me that the majority is attempting to guide the process by not
>> permitting discussin on something that they disagree with .
>>
>>
>>
>> *From: *GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> on behalf of claudio
>> di gangi <ipcdigangi at gmail.com>
>> *Date: *Tuesday, September 17, 2019 at 5:22 PM
>> *To: *Kathy Kleiman <kathy at kathykleiman.com>
>> *Cc: *"gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
>> *Subject: *Re: [GNSO-RPM-WG] Q#8
>>
>>
>>
>> Kathy, all,
>>
>>
>>
>> Last week, we spent the first full hour of the call discussing the first
>> Question 8 proposal, and zero minutes on the second proposal on Question #8
>> (In comparison we spent much time discussing both proposals for question
>> #7).
>>
>>
>>
>> I am aware that some members spoke in support of the first proposal (I
>> was on audio only), but do not know how many, while some others did not
>> speak in support, and that we agreed to spend this full week to solicit WG
>> members views on the list before moving forward. This week has not yet
>> concluded (we have through today), yet new language is being posted below
>> now for consideration.
>>
>>
>>
>> A few additional points, the week prior Phil conducted an informal poll
>> using the Zoom room functionality, which helped provide transparency on WG
>> members views for consensus building, which was not done last week on
>> Question #8.
>>
>>
>>
>> Nor has there been an effort to bring the various proponents together to
>> reach a compromise position, which we recently did in the sprint of the
>> consensus-building process on Question #7, the design mark topic. So I’m
>> not sure why question #8 is being treated so differently in all these
>> various ways (as described above) compared to Question #7.
>>
>>
>>
>> Can someone kindly shed some light on this disparity in treatment between
>> the way we are approaching question 7 and question 8?
>>
>>
>>
>> Thanks!
>>
>>
>>
>> Best regards,
>>
>> Claudio
>>
>>
>>
>>
>>
>> On Tuesday, September 17, 2019, Kathy Kleiman <kathy at kathykleiman.com>
>> wrote:
>>
>> All,
>>
>> Last week we found considerable overlap and common ground on Q#8.  I
>> promised to circulate language sharing that agreement and slightly refining
>> existing proposals.
>>
>> Q#8:
>>
>> 3.2 The standards for inclusion in the Clearinghouse are:
>>
>> 3.2.1 Nationally or regionally registered word marks from all
>> jurisdictions.
>>
>> 3.2.2 Any word mark that has been validated through a court of law or
>> other judicial proceeding.
>>
>> 3.2.3 Any word marks specified in and protected by a statute or treaty *as
>> trademarks *[1] in effect at the time the mark is submitted to the
>> Clearinghouse for inclusion.
>>
>> 3.2.4 Other marks that constitute intellectual property.  [see below]
>>
>> 3.2.5 Protections afforded to trademark registrations do not extend to
>> applications for registrations, marks.
>>
>> [1]  *By "trademarks," the WG means "trademarks, service marks,
>> certification marks and collective marks."*
>>
>> For purposes of clarity, separate or ancillary databases of the Trademark
>> Clearinghouse Provider (or another provider) may include other marks, but
>> those databases should not be used for Sunrise or Trademark Claims Notices
>> under the RPMs. Registries may use those separate or ancillary databases to
>> provide additional services but are not required to do so under the RPMs.
>>
>> (Appropriate corresponding changes will be percolated across the *Trademark
>> Clearinghouse* Applicant Guidebook)
>>
>> -----------------
>>
>> Best, Kathy
>>
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