[Gnso-igo-ingo-crp] Licensing as an alternative to assignment for IGOs

[George Kirikos]

Hi folks,

Just to followup on today's call, and for the benefit of those not in
attendance, in addition to assignment of rights by IGOs as a
workaround to the "immunity" issue which we've already discussed
before, they could take the route of *licensing* their marks, see:

http://piersonpatentlaw.com/what-is-the-difference-between-assignment-and-a-license/

Then, the licensee of the mark could bring the UDRP as a complainant
(thereby shielding the IGO itself).

The WIPO Overview, question 1.8, blesses that approach:

http://www.wipo.int/amc/en/domains/search/overview2.0/#18

"1.8 Can a trademark licensee or a related company to a trademark
holder have rights in a trademark for the purpose of filing a UDRP
case?

Consensus view: In most circumstances, a licensee of a trademark or a
related company such as a subsidiary or parent to the registered
holder of a trademark is considered to have rights in a trademark
under the UDRP. For the purpose of filing under the UDRP, evidence of
such license and/or authorization of the principal trademark holder to
the bringing of the UDRP complaint would tend to support such a
finding. Panels have in certain cases been prepared to infer the
existence of a license and/or authorization from the particular facts,
but in general, relevant evidence is desirable....."

with several precedents cited (I cited one in the chat room during our call).

Since licensing is simpler than assignment, it might allay and rebut
the concerns that Professor Swaine expressed about assignment on pages
26-27 of his final report. Professor Swaine hadn't contemplated
licensing, as this workgroup hadn't brought up the topic until now
(i.e. we had only looked at how other IGOs had found a workaround
using assignment, but hadn't considered that licensing might be an
even superior workaround, and that licensees have already been granted
standing in other cases not involving IGOs).

Obviously, these workarounds demonstrate that IGOs can successfully
file cases within the existing UDRP rules, and continue to enjoy
"immunity" simply by using some creativity --  greater education might
be all that is needed, to let them be aware of those creative options.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/