[GNSO-RPM-WG] On Q8 ("Marks protected by statute or treaty")

[Mary Wong]

Dear all,

In the hopes that it will help consolidate and perhaps close off the Working Group’s discussions over Q8 and the issue of how to handle Geographical Indications (GIs), Designations/Appellations of Origin and the like, staff thought it may be helpful to note the suggestions proffered during the Working Group call this past Wednesday (to allow the Working Group to assess subsequent suggestions in light of the various proposals that had been made by Working Group members to date) as well as provide some additional background information.

SUGGESTIONS MADE DURING THE WEDNESDAY CALL:

  *   From Griffin Barnett, a possible definition for what might qualify under Section 3.2.2 (“marks protected by statute or treaty”): “Any designations specified in and protected by statute or treaty in effect at the time the designation is submitted to the Clearinghouse for inclusion, where such designation is also the subject of a trademark registration. For any such designations not the subject of a trademark registration, such designations could be recorded in a separate centralized ancillary database specifically for such designations.”


  *   From ICANN staff, a possible conceptual starting point for Section 3.2.2: Does the Working Group agree that, for the category of “marks protected by statute or treaty”, its scope ought to be limited to marks (not otherwise eligible under 3.2.1) that are nevertheless protected under a statute or treaty as a sign that functions as a trademark/source identifier?

ADDITIONAL BACKGROUND INFORMATION:

  *   For the rules that Deloitte currently uses to validate “marks protected by statute or treaty”, see the TMCH Guidelines, Section 2.4, pages 15-18: https://www.trademark-clearinghouse.com/sites/default/files/files/downloads/TMCH%20guidelines%20v1.2%20comm.pdf


  *   In 2017, Deloitte reported to the Working Group that, of around 98 marks submitted for validation under this category, 75 were admitted. However, because the category is about “marks protected by statute or treaty” and without a requirement to define/distinguish between a G.I. and other marks protected by way of this category, Deloitte was not able to tell us which, or how many, amongst the 75 will be considered “G.I.s” or Designations/Appellations of Origin (as those terms may be used in international treaty discourse or applicable law).


  *   In 2017, ICANN staff also prepared a partial glossary of terms that was done to try to assist with the Working Group’s deliberations on the TMCH (including the scope of “word marks”, composite/figurative marks, as well as G.Is.) Please see the attached document for the staff work product in this effort.

Thanks and cheers
Julie, Ariel & Mary
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