[Gnso-igo-ingo-crp] MP3 IGO WG - Wednesday, 7 january 2015 at 1700 UTC

[Nathalie Peregrine]

Dear All,


Please find the MP3 recording for IGO-INGO Access to Curative Rights Protection Mechanisms Working Group call on Wednesday, 07 January 2015  at 1700 UTC at:

http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-20150107-en.mp3
 On page:
<http://gnso.icann.org/en/group-activities/calendar#dec>http://gnso.icann.org/en/group-activities/calendar#j<http://gnso.icann.org/en/group-activities/calendar#jan>an<http://gnso.icann.org/en/group-activities/calendar#jan>

The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page:
http://gnso.icann.org/calendar/

Attendees:
George Kirikos - Individual
Petter Rindforth – IPC
Phil Corwin – BC
Kristine Dorrain- Individual
Mason Cole – RySG
David Maher – RySG
Val Sherman - IPC
Gary Campbell - GAC
Paul Tattersfiled – Individual
Jay Chapman – Individual
Kathy Kleiman - NCUC
 Lori Schulman - NPOC

Apologies:none


ICANN staff:
Mary Wong
Steve Chan
Berry Cobb
Nathalie Peregrine

** Please let me know if your name has been left off the list **

Mailing list archives:http://mm.icann.org/pipermail/gnso-igo-ingo-crp/

Wiki page:
https://community.icann.org/x/97rhAg


Thank you.
Kind regards,
Nathalie

-------------------------------


 Adobe Connect chat transcript for Wednesday, 07 January 2015:

The chat history has been cleared

Nathalie  Peregrine: Dear all, welcome to the  IGO-INGO Curative Rights Protection PDP WG Meeting on the 07 January 2015

George Kirikos: Hi everyone! I hope you had great holidays.

Nathalie  Peregrine: Welcome George and best wishes to you!

Mary Wong: 1 a.m. here in Singapore :)

Lori Schulman: I don't have audio.

Lori Schulman: I will dial in.

George Kirikos: 1-866-692-5726, code = IGO

George Kirikos: (in the USA/Canada)

Nathalie  Peregrine: Phil Corwin is on the audio bridge

Nathalie  Peregrine: Val Sherman has joined the call

Nathalie  Peregrine: @ Lori, there is audio in the AC room, maybe a reboot would help?

Philip Corwin: Good day and Happy New Year to all!

Lori Schulman: I am connected via phone.  Thanks, George.

Gary Campbell: Hi all

George Kirikos: Did we have any comments/feedback yet from the constituencies?

George Kirikos: (I think they were due on Friday)

Mary Wong: @George, not yet (as expected). We (staff) are due to send reminders to all by the end of this week :)

Steve Chan: @George, the due date is actually 23 January

George Kirikos: Oh, sorry. I thought something was due earlier. Did we hear back from the IGOs (within the GAC observers?).

Philip Corwin: Yes, we gave them more time on the tehory that asking for feedback just after the end of the holidays was not realistic.

George Kirikos: Or, ICANN legal, who was going to get back with some searches of legal precedent.

Philip Corwin: theory that is

K: @Mary, are you sure it is an exact match standard??

K: BTW, this is Kathy Kleiman

George Kirikos: They wou;dn't refuse the mark.

George Kirikos: Only if it's CONFUSING.

George Kirikos: i.e. wouldn't refuse automatically.

Mary Wong: @Kathy, sorry - you're right, not necessarily an exact match (sorry for sloppy language!)

Lori Schulman: the individual PTO's would apply whatever their national standards are.  In the U.S. and other commonlaw jurisdictions, the standard is "confusingly similar"

Mary Wong: It would be whatever standard/test/language in that particular jurisdiction that is equivalent to the 6ter language of "as trademarks or as elements of trademarks".

Mary Wong: (per Lori - thank you!)

George Kirikos: Note *full* text of Article 6ter at: http://www.wipo.int/article6ter/en/legal_texts/article_6ter.html (in particular, paragraph (c) shows it's not absolute)

Mary Wong: @George, yes

Kathy Kleiman: Sorry, I am on hold

Kathy Kleiman: waiting to get onto the bridge

Kathy Kleiman: please don't wait...

Mary Wong: Essentially, the type of protection mandated by 6ter is prohibitive (subject to limitations of that national law) and does not specifically require an IGO to first obtain a national TM (unless, perhaps, that is the national law in any country).

Nathalie  Peregrine: the operator is keeping an eye out for your call Kathy

Kathy Kleiman: here now

Nathalie  Peregrine: great!

George Kirikos: I think most UDRP panelists would see Article 6ter registration as evidence of "common law" marks.

George Kirikos: So, I don't see that as a controversial issue per se.

Mary Wong: And per @George, the prohibition is not absolute - the third party has to be trying to use the mark as a trademark, and limited to suggesting a connection between the IGO and the third party.

George Kirikos: I think Kathy's on to something, that there could be appeals to the legal system in each nation.

George Kirikos: e.g. in the USA, first at the TTAB http://en.wikipedia.org/wiki/Trademark_Trial_and_Appeal_Board

George Kirikos: So, there's some interaction with the immunity issue. I'm guessing the IGO would need to appeal/challenge a decision in that jurisdiction.

Lori Schulman: If I recall from my examining days, there is no special consideration.

Lori Schulman: The marks are compared as any other marks.

Lori Schulman: I would have to confirm through the TMEP

Kathy Kleiman: @ Mary, tx you.

Kathy Kleiman: It is my understanding that the marks are compared as any othe rprior (already rgistered) marks - as Lori states

Lori Schulman: You have to evaluate on 2 bases: confusingly similar and false association

Lori Schulman: 2 different parts of the Act.  TM Act Section 2(d) and 2(a)

Mary Wong: And 6ter reflects this - the prohibited use must be as a TM or element(s) thereof, such as to suggest a connection etc. etc.

Lori Schulman: as well as all other considerations

Lori Schulman: descriptiveness, etc.

Kathy Kleiman: I think this issue is huge - how individual national trademark offices treat the "registered" 6ter IGOs in their evaluations -  because this is the essence of what we might be asking a UDRP or UDRP-type panel to do.

George Kirikos: I believe Canada is moving to a system of TM registrations without reviews, more like the European systems.

George Kirikos: I've already posted my views of the 2007 report. I didn't think it was a very good draft, for the reasons at: http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000217.html

George Kirikos: report = proposal

Kathy Kleiman:   Does anyone know if the 6ter list (those IGOs seeking the 6ter treaty protections) is a public list?

George Kirikos: Yes, it is, Kathy.

George Kirikos: http://www.wipo.int/article6ter/en/

George Kirikos: "Article 6ter Express database" or you can download the database.

Kathy Kleiman: @tx Mary for the USPTO TMEP!

Mary Wong: Note that the 6ter database doesn't just contain IGO names and acroyms; it includes all 6ter protected marks (armorial bearings, flags etc.)

George Kirikos: 4(a) in that report was very flawed, as it changed everything from "and" to "or", for example.

George Kirikos: (compared with the UDRP)

Jay Chapman: while small, that is a monumental "change" from the UDRP, George

Philip Corwin: Yes, going from "and' to "or' would be a very fundamental change in UDRP and URS practice and is a path I would not support this group going down.

Paul Tattersfield: agree George - Too much thinking is based around the issuance of a trademark, I think more thought needs to be given to whether or not the underlying goods / services are being infringed.

Kathy Kleiman: +1 George: this may be an education issues - for both IGOs and UDRP Panelists

Kathy Kleiman: ... and the protection is common law + statutory (e.g., showing that the IGO has invoked the treaty rights and is on the "6ter" list)

George Kirikos: If we were able to engage with the IGOs, to educate them more, this WG might be able to dissolve.

George Kirikos: Albeit, with the immunity issue being a point of contention. But, even that can be worked around, as per the World Bank, UNITAID examples.

George Kirikos: (where the law firms, for example, held the marks)

George Kirikos: Kristine is here from NAF. Perhaps she might want to speak to the education aspect.

George Kirikos: (not sure if we have that WIPO person here today)

George Kirikos: Whether IGOs are aware that "common law' marks are sufficient to file.

Mary Wong: @George, observers to the WG don't participate on calls :)

George Kirikos: (and that panelists have found for IGOs in the past, e.g. World Bank, UNITAID, etc.

George Kirikos: Do any of the law firms here have IGOs as clients? How do they do their "brand protection" these days? (offline or online, for that matter)

Kathy Kleiman: @Kristine: is education of Panelists an issue here too?

Kathy Kleiman: I think you answsered this, Kristine, tx you!

Kristine Dorrain-NAF: Yes, thanks.

George Kirikos: Something = "outreach" & "education"?

George Kirikos: Perhaps adding to section 1 of http://www.wipo.int/amc/en/domains/search/overview2.0/

Paul Tattersfield: The emphasis should be that standing should come from usage not registration

Kristine Dorrain-NAF: Good point on an affirmative step, Phil.

George Kirikos: 1.12 Are IGO "marks" eligible for the first UDRP element? Answer: Yes. LOL

Kristine Dorrain-NAF: All good, but that still doesn't reach them with UDRP as an option.  You're relying on an IGO finding the UDRP and saying "oh geez, we can't use this"...  Maybe I'm wrong, but I think the point is to say "you have options, people!"  (Push vs Pull dynamic)

George Kirikos: The terms of reference of this WG is even narrower, as it was limited to the subset of marks on that "reserved list" for new gTLDs.

George Kirikos: So, reserved list only had around 100 marks, Article 6ter DB has 3000. Of course, under common law, any IGO could qualify.for a UDRP filing.

Philip Corwin: Was such a reserve list ever created for new gTLD program, other than Red Cross/Crescent and IOC?

George Kirikos: Yes, Philip. I had made up the spreadsheet, etc.

George Kirikos: See: https://www.icann.org/sites/default/files/packages/reserved-names/ReservedNames.xml

George Kirikos: (scroll down to IGO names)

Kristine Dorrain-NAF: Thanks for the really great discussion, all, I have to sign off a few minutes early for my next appointment.  :)

George Kirikos: No, it doesn't require a trademark registration, Phil.

George Kirikos: Common law marks are recognized.

Paul Tattersfield: @ Phil I don’t think it does – the registration is just a public declaration of in intent

Philip Corwin: Ok, I stand corrected. But does lack of registration and therefore notice to DN registrants become an element in finding bad faith?

Kathy Kleiman: Re: education - educating registrants/consumers might also be something we would consider

Philip Corwin: Bad faith of course requires some intent

Mary Wong: @Phil, yes - that would be one distinction

George Kirikos: What's the plan for next week?

George Kirikos: (before we go?)

Mary Wong: @George, we'll caucus with the co-chairs

George Kirikos: i.e. "next steps" in the Agenda.

Philip Corwin: Haven't discussed yet. Suggestions are welcome

Kathy Kleiman: Note all: Bad faith was largely  new when we worked on the UDRP (only used a bit before that) so it would not be part of the treaty language, but would it encompass it?

George Kirikos: Great meeting. Bye everyone.

Lori Schulman: Thank you

Philip Corwin: Bye all

Jay Chapman: good bye

Kathy Kleiman: by all!

Paul Tattersfield: thanks, bye



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