[Discussion-igo-rc] IGO Acronyms / 6ter

Tue Jun 6 08:06:55 UTC 2017

Both as a matter of substance, and procedure, I agree with Jon.

Even if, for argument’s sake, a national law would take a more restrictive view, we have re-traced this ground on numerous occasions over the years.  Again, to be clear, IGOs have not sought (curative) protection that disregards legitimate co-existence.  To that end, broadly-speaking, the focus has been on addressing (fraudulent) misrepresentation.

Brian

From: discussion-igo-rc-bounces at icann.org [mailto:discussion-igo-rc-bounces at icann.org] On Behalf Of Jonathan.PASSARO at oecd.org
Sent: Friday, June 02, 2017 4:45 PM
To: jbladel at godaddy.com; brucemelbit at gmail.com
Cc: discussion-igo-rc at icann.org
Subject: Re: [Discussion-igo-rc] IGO Acronyms / 6ter

Dear James,

I am not going to enter into speculation about the ways in which one particular State might analyse a specific case. I do think it is telling that every time we have this discussion everyone circles back to precisely the same string. The IGOs have consistently taken the position that we would stick to reasonable coexistence principles if ever there is a risk of a string using an IGO acronym that creates no risk of confusion.

If the GNSO is interested in finding a way forward, perhaps it is time to try to find common ground and propose solutions, rather than trying to continually create the appearance of problems.

Kind regards,

Jon

From: James M. Bladel [mailto:jbladel at godaddy.com]
Sent: jeudi 1 juin 2017 19:25
To: PASSARO Jonathan, SGE/LEG; brucemelbit at gmail.com<mailto:brucemelbit at gmail.com>
Cc: discussion-igo-rc at icann.org<mailto:discussion-igo-rc at icann.org>
Subject: Re: [Discussion-igo-rc] IGO Acronyms / 6ter

Thanks Jonathan –

Could someone clarify, then, for this non-Lawyer -  If I tried to apply for a trademark on “WHO” in parts of Canada, or New York , this would be rejected?  If so, does it matter which industry or context I intend to use the mark (medical / health services, vs. another industry, say diesel engine repair)?

I’m curious because there are several real-world examples of non-health uses for this string.

Thank you—

J.

From: <discussion-igo-rc-bounces at icann.org<mailto:discussion-igo-rc-bounces at icann.org>> on behalf of "Jonathan.PASSARO at oecd.org<mailto:Jonathan.PASSARO at oecd.org>" <Jonathan.PASSARO at oecd.org<mailto:Jonathan.PASSARO at oecd.org>>
Date: Thursday, June 1, 2017 at 7:33
To: "brucemelbit at gmail.com<mailto:brucemelbit at gmail.com>" <brucemelbit at gmail.com<mailto:brucemelbit at gmail.com>>
Cc: "discussion-igo-rc at icann.org<mailto:discussion-igo-rc at icann.org>" <discussion-igo-rc at icann.org<mailto:discussion-igo-rc at icann.org>>
Subject: [Discussion-igo-rc] IGO Acronyms / 6ter

Dear Bruce,

I had the opportunity to consult with my colleagues at other IGOs on the issue of national laws that protect IGO acronyms. As a basic point, we remain perplexed by the distinction being raised between laws which protect IGOs by disallowing the registration of their acronyms as trademarks and laws which protect IGO acronyms through other means.

In any event, there are many examples of laws which protect IGO acronyms through means other than refusal of registration. We have already seen the examples of Switzerland and Australia. Section 9(1) of Canada’s Trade-marks Act <http://laws-lois.justice.gc.ca/eng/acts/t-13/page-2.html#h-3>  is another interesting example because it protects both Red Cross and IGO identifiers, therefore providing a strong indication that IGO and Red Cross identifiers should receive similar treatment in the DNS. Some laws go even further; my colleagues at the UN pointed out a New York State law<http://codes.findlaw.com/ny/general-business-law/gbs-sect-141.html> that classifies as a misdemeanour any unauthorised use of the United Nations name or symbol. This of course in addition to the protections already afforded to IGOs by US federal law under the Lanham Act.

I trust that this is enough to satisfy the enquiry. In any event, I look forward to hearing about next steps.

Kind regards,

Jon

[ogo_mail_uk]<http://www.oecd.org/>

Jonathan Passaro
Legal Adviser
Directorate for Legal Affairs

2, rue André Pascal - 75775 Paris Cedex 16
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