[Discussion-igo-rc] External legal advice on 6ter

[Bruce Tonkin]

Hello Jonathan,

>>>  My apologies for the delay since my last email, as it took me a few days to consult with the other members of the "core group" of IGOs (UN, UPU, WHO, WIPO). 

Thanks for taking the time to consult with other IGOs.

>>  First, allow me to take the opportunity to correct a point in your last email, sent on 30 April at 02:14 CEST. You stated that "Where IGOs have a trademark, they can take advantage of the existing UDRP." As we have discussed at length, the mutual jurisdiction provision of the UDRP in fact prevents IGOs from using the UDRP. For more in-depth explanations regarding why the mutual jurisdiction provision is incompatible with the immunities we enjoy as intergovernmental organisations, I invite you to consult the comments numerous IGOs provided on this point in the context of the ongoing PDP (including e.g. OECD, UN, World Bank).

Does that also mean that IGOs don't use trademark law through the courts to defend their trademarks, where they have them?   ie I assume that is the same issue with being subject to a court of national jurisdiction, hence why there would be no value in having a trademark if there is never any intention to use trademark law to protect the rights in the name.



>>  Second, regarding the consultation of a legal expert, my IGO colleagues share the OECD's concern that such an exercise will significantly prolong what has already been an extensive and resource-intensive process. In addition, our past experiences within ICANN make us deeply concerned that such an exercise risks being manipulated against IGOs' interests, from the formulation of the research question, the selection of the expert and the choice of jurisdictions to the potential cherry-picking of language from the expert's conclusions once her report is released. We are grateful that you are trying to start a new, less contentious chapter in this saga but hope that you understand why we are reticent to embark down this path.

Sorry to hear that the past experiences haven't been good.

>>  In that regard, if you do decide to proceed, we would naturally expect that the IGOs would be involved in (1) the formulation of the research question(s); (2) the selection of the expert (3) the terms of reference guiding the expert's work; and (4) the choice of jurisdictions 

Naturally.   I think that is consistent with what I suggested in that this group including IGOs would need to be consulted in the decisions above.

>>  (please note already that a survey of five jurisdictions out of the 177 States Parties to the Paris Convention seems unlikely to give any kind of accurate idea about the scope of mechanisms States use to protect IGO acronyms).

At this point just some examples that may have some common elements could be helpful.   Ie there may be many mechanisms available but I would hope that there are a few that are more commonly used.

Basically it would be great to have some actual public cases where the mechanisms have been used  to protect IGOs rather than just theoretical mechanisms that have never been used.

For example if we wanted to look at how 200 ccTLDs handle trademark issues, there are many possible solutions - but a sample of 5 different ccTLDs would likely turn up some common elements as many of them have been developed based on trademark law and UDRP (e.g. see https://www.auda.org.au/policies/audrp/, which is different to UDRP but based on UDRP).   It would also be possible to find cases where the ccTLDs have actually used their processes.

Note though that this is only a suggestion.

So far the IGOs and the GNSO PDP working group member on this list have not been supportive.

Regards,
Bruce Tonkin