[gnso-rpm-wg] Proposed agenda and documents for RPM Working Group call on 14 December

Wed Dec 14 16:57:45 UTC 2016

With apologies, I have a business meeting conflicting with this call, and
won't be able to participate.

Greg Shatan

On Wed, Dec 14, 2016 at 11:14 AM, Greg Shatan <gregshatanipc at gmail.com>
wrote:

> On the last point: It seems to me that the very essence of a Geographic
> Indicator is that the word element is no longer a generic or descriptive
> term.
>
> Greg Shatan
>
> On Wed, Dec 14, 2016 at 8:49 AM, URS - Uniform Rapid Suspension System -
> MFSD <urs at mfsd.it> wrote:
>
>> Just to add a comment to TMCH Charter questions, in particular to Q1 and
>> Q4.
>>
>> In case of a composite mark (word + device) does the
>> validation/verification criteria (guidelines: trademarks accepted where the
>> name of the trademark is reflected in predominant letters and is clearly
>> separable or distinguishable from the device element) provides the TMCH
>> with too wide discretion and subjectivity?
>>
>> The issue of the protection and the protection’s extent for trademarks
>> other than word marks should be clarified regarding all RPMs (TMCH, URS,
>> PDDRP).
>> While TMCH Guidelines contain provisions on “marks that does not
>> exclusively consist of letters, words, numerals, special characters”, PDDRP
>> (para. 9.2.1) and URS (URS Procedure para. 1.2.6.1) contains the wording
>> “word mark”. With no PDDRP case so far the matter has not arose yet.
>> However, in URS this led to interpretations (see sanofi.xin NAF
>> FA1604001672049 http://www.adrforum.com/domaindecisions/1672049A.htm;
>> flossy.shoes MFSD 7B10562D https://urs.mfsd.it/s
>> ystem_data/source_pdf/flossy.shoes.pdf).
>>
>> Hence, I retain that clarity regarding the RPM’s and, in this particular
>> case, TMCH’s field of protection (meant as inclusion in TMCH and
>> participation in sunrise and claims services) is essential.
>>
>> Concerning marks protected under statute or treaty, in particular
>> Geographical Indications and Designations of Origin does the TMCH has a
>> comprehensive list of treaties and statutes protecting GIs or of GIs
>> protected under treaties and statutes?
>>
>> Finally how GIs, which are also registered trademarks, consisting in both
>> word and device elements, where the word element might be regarded as
>> generic or descriptive terms, are evaluated?
>>
>> Kind regards.
>>
>> Ivett Paulovics
>> URS Domain Dispute Case Manager
>> ---
>>
>> MFSD Srl | IP Dispute Resolution Center
>> Viale Beatrice d'Este, 20 | 20122 Milano (Italy)
>> T +39 02 45506624 <+39%2002%204550%206624> | F +39 02 91471087
>> <+39%2002%209147%201087>
>> M +39 329 2596103 <+39%20329%20259%206103>
>> urs at mfsd.it <responsabile at mfsd.it> | urs.mfsd.it <http://ww.mfsd.it/>
>> Skype mfsd.urs
>> P. Iva 04810100968 (Italian VAT)
>> -------------------------------------------------------------------------
>> URS Domain Dispute Resolution Service Provider approved by ICANN
>> .it Domain Dispute Resolution Center accredited by Registry .it
>> IP Mediation Center authorized by Italian Ministry of Justice (no. 903)
>> IP Mediation Training Center authorized by Italian Ministry of Justice
>> (no. 392)
>>
>>
>>
>> Il giorno 13 dic 2016, alle ore 18:32, Mary Wong <mary.wong at icann.org>
>> ha scritto:
>>
>> Dear all,
>>
>> The proposed agenda for our next Working Group call, scheduled for 14
>> December at 1700 UTC, is as follows:
>>
>> 1.       Roll call (via Adobe Connect/phone bridge only) and updates to
>> Statements of Interest
>> 2.       Continue discussion of proposed TMCH Charter questions (see
>> attached document)
>> 3.       [If time permits] Review responses received to TMCH Data
>> Gathering Sub Team list of questions sent to New gTLD Registry Operators
>> (see attached)
>> 4.       Next steps/next meeting
>>
>> *For Agenda Item #2*: the attached document contains updates made by
>> staff based on the Working Group’s discussions on the call last week. It
>> also includes the co-chairs’ proposed compromise language on the “generic
>> terms” issue (Category 3, Question 2) that was circulated to the mailing
>> list earlier today, and a few additional suggestions made to the mailing
>> list since the last call and as of today (13 December).
>>
>> *For Agenda Item #3*: the attached document is a compilation of
>> responses received so far from three registry operators (Public Interest
>> Registry, Donuts, and Afnic) to the list of questions for New gTLD Registry
>> Operators that was prepared by the TMCH Data Gathering Sub Team. Staff will
>> continue to update the document as and when we receive any additional
>> responses from other registries.
>>
>> Thanks and cheers
>> Mary
>>
>>
>> Mary Wong
>> Senior Policy Director
>> Internet Corporation for Assigned Names and Numbers (ICANN)
>> Email: mary.wong at icann.org
>> Telephone: +1-603-5744889 <(603)%20574-4889>
>>
>> <Table of Edited Charter Questions on the TMCH - 13 Dec 2016.docx><Compilation
>> of Registry Responses to TMCH Data Gathering Sub Team.docx>
>> _______________________________________________
>> gnso-rpm-wg mailing list
>> gnso-rpm-wg at icann.org
>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>
>>
>>
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>>
>
>
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