[GNSO-RPM-WG] Proposed policy principles and proposed draft language for consolidating individual TMCH proposals #4 & #5

[Paul Keating]

Paul

1Nice work by Paul here.  I support this language.

Paul Keating


From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> on behalf of Paul Tattersfield <gpmgroup at gmail.com>
Date: Tuesday, August 4, 2020 at 12:58 PM
To: gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: [GNSO-RPM-WG] Proposed policy principles and proposed draft language for consolidating individual TMCH proposals #4 & #5


Proposed policy principles

GIs are not eligible for Claims and Sunrise RPMs unless independently registered as an eligible trademark.

GIs and other quality schemes protected by statute may be held in centralized ancillary databases.

Treaty organizations and organizations protected by statute are not always able to register their word marks at a national trademark office. In some jurisdictions their marks are reflected as a “non registration” (e.g. #89 series in USPTO) which ensures no one can subsequently register an infringing trademark. Once such word marks are listed with a National or Regional Trademark Office they must be treated within the Clearinghouse in the same way as a registered word mark or a court validated word mark and must be eligible for Claims and Sunrise.

There is no bar on the Clearinghouse Provider and other third party service providers providing other additional ancillary services.


Proposed draft language

3.2          The standards for inclusion in the Clearinghouse are:

‘3.2.1     Nothing in section 3.2 shall exclude the Clearinghouse provider and registry
                operators from offering additional voluntary services to mark holders.

‘3.2.2     In this section “word mark” includes service marks, collective marks,
                certification marks and word marks protected by statute or treaty.

‘3.2.3     The standards for inclusion to be eligible for Claims and Sunrise are:

(1)  Nationally or regionally registered word marks from all jurisdictions.
(2)  Any word mark that has been validated through a court of law or other
       judicial proceeding.
(3)  Word marks protected by a statute or treaty in effect at the time the mark
       is submitted to the Clearinghouse for inclusion and is listed at a national or
       regional trademark office.
(4)  Subsection (3) does not apply to geographical indications and other quality
       schemes unless they also satisfy subsections (1) or (2).

‘3.2.4     The standards for inclusion in ancillary databases only and not eligible for
                Claims or Sunrise are:

(1)  Other marks that constitute intellectual property.
(2)  Geographical indications and other quality schemes protected by statute.

‘3.2.5     Protections afforded to trademark registrations do not extend to applications
                for registrations, marks within any opposition period or registered marks that
                were the subject of successful invalidation, cancellation or rectification
                proceedings.
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