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

[Petter Rindforth]

Dear Jon,
Thank you for your input and comments, and good to know that they can be read as comments from the "core group" (OECD, UN, UPU, WHO and WIPO).
As to your trademark point:
As I see it, that is one of several possibilities. A traditional trademark, especially if it is registered by the local or regional PTO, is in fact from the start handled by national or regional trademark legislation. A traditional trademark application will not be treated in any different way if the applicant is an IGO, INGO or commercial company. The question is how it is dealt with if a local/national trademark registration hold by an IGO is taken to a court action.
So, in this respect, I agree with you that a UDRP case that is submitted to a court will raise the immunity issue (UDRP §4(k)). As we know, that will be dealt with in different ways, depending on the nationality of the court.
As to the consultation of a legal expert:
I definitely agree with you that this work has already "been an extensive and resource-intensive process". However, I also positively note that IGO's now are open for a direct communication and co-operation with our WG, something we have asked for since we started, meaning more practical and specific inputs rather than general comments. I hope that we all together can find a practical solution that can be generally accepted, without adding too much additional time before we solve this topic. In this respect, consulting another external legal expert will likely mean that we have to add at least another 6 months...

Best regards,
Petter

-- 
Petter Rindforth, LL M

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Thank you

3 maj 2017 10:49:17 +02:00, skrev Jonathan.PASSARO at oecd.org:

> Dear Bruce,
> 
> 
> 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).
> 
> 
> 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 <https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/pdfQMY4Efq7Aa.pdf>, UN <https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/pdf28tKc4pChA.pdf>, World Bank <https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/pdfzzHOSpXFGP.pdf>).
> 
> 
> 
> 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.
> 
> 
> 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 (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).
> 
> 
> Kind regards,
> 
> 
> Jon
> 
> logo_mail_uk <http://www.oecd.org/>  Jonathan PassaroLegal AdviserDirectorate for Legal Affairs
> 
> 2, rue AndréPascal- 75775 Paris Cedex 16
> Tel: +33 1 45 24 14 73
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