[gnso-rpm-wg] Action Items and Notes from Review of All RPMs for all gTLDs PDP Working Group Call - 27 April 2017

[Amr Elsadr]

Dear Working Group Members,

Apologies for the delay in circulating the action items and notes from last Thursday’s Working Group call. They are listed below. The call ended with two action items for staff, which have already been addressed by Mary as indicated alongside each of the action items. The action items and notes are also posted on the meeting’s wiki page here: https://community.icann.org/x/NtHRAw, along with the call and AC Room recordings and transcript.

Thanks.

Amr


Action Items:


1.       Staff to prepare a glossary of relevant terms preparatory to a survey on whether, if and how the Working Group may distinguish between various types of Design Marks – survey to be reviewed by the co-chairs prior to circulating to the full Working Group
Refer to email from staff containing a glossary of terms related to Design Marks and Geographic Indications: http://mm.icann.org/pipermail/gnso-rpm-wg/2017-April/001814.html
2.       Staff to provide historical context on how category of marks protected by statutes/treaties came to be.
Refer to email from staff containing a briefing on the historic evolution of the category of marks protected by statutes or treaty: http://mm.icann.org/pipermail/gnso-rpm-wg/2017-April/001700.html

Notes:

1.       Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams:
o    Update from the Trademarks Claims Sub Team (https://community.icann.org/x/psrRAw):
·         Sub Team making progress on bundling Charter questions, as well as what questions should be referred to other Sub Teams or full Working Group
·         Sub Team identifying data that may be helpful in answering Charter questions from both internal and external sources
·         Sub Team has until end of day to propose how/if Charter questions being considered need to be reworded or refined – objective is to make Charter questions more neutral/less suggestive of any specific answers
o    Update from the Sunrise Registrations Sub Team (https://community.icann.org/x/msrRAw):
·         From the AC Chat: I was on the Sunrise call with Lori.  We had a good discussion there as well.  Those questions have been substantially "bundled" and we're also suggesting language changes as I recall.  (If I may be so bold as to speak up for that group).
·         Both Sub Teams have made good progress on their tasks, and have additional meetings scheduled on Friday, 28 April to wrap up work on refining/bundling of Charter questions, as well as propose workplans for how and how long it will take full Working Group to address the Charter questions

Proposed recommendations for outstanding TMCH Charter questions (Remaining Open TMCH Charter Questions - 24 April 2017<https://community.icann.org/download/attachments/64082230/Remaining%20Open%20TMCH%20Charter%20Questions%20-%2024%20April%202017.pdf?version=1&modificationDate=1493146600000&api=v2>)


2.       Proposals on Charter question 7 (How are design marks currently handled by the TMCH provider?):
o    Proposal Submitted by Kathy Kleiman
·         Recommendations designed to answer both Charter questions 7 (design marks) and 16 (balance of the TMCH)
·         Working Group should review the answers from Deloitte on questions regarding design marks
·         Recommendations meant to address Deloitte, counter to rules/recommendations, expanding on rules/recommendations of the STI on Design Marks adopted by the GNSO Council and ICANN Board to protect text marks, but not anything in a design or logo
·         Amendments to STI recommendations occurred during iterations of the new gTLD Applicant Guidebook in response to community consultation
·         Suggestion to clarify what specific categories of marks the Working Group is talking about in Charter Question 7 (e.g.: Design Marks called Figurative Marks in the EU)
·         Is Deloitte exceeding the intent of the recommendations, or is it following instructions as per the final version of the new gTLD Applicant Guidebook?
o    Proposal submitted by Greg Shatan:
·         STI recommendations adopted by the GNSO Council in 2009 made reference to nationally or mutinationally registered Text Marks without further defining what that meant
·         TMCH Guidelines do not distinguish between Design Marks with no textual elements, and other mark types such as Stylized Marks/Figurative Marks/Design Marks with textual elements
·         Recommendations in proposal meant to modify TMCH Guidelines to permit protection of Stylized Marks (Marks with text + a design element), and exclude Marks from the TMCH where there is no disclaimer on protection of text component in its entirety
·         TMCH may be over-inclusive, when accepting Marks in which text component is disclaimed in its entirety
·         Instead of pointing out how the STI recommendations were implemented following adoption of the STI Final Report by the GNSO Council/ICANN Board, more productive for the Working Group to clarify how Deloitte handles Design Marks going forward
·         The lack of distinction between Design/Stylized/Composite Marks is not helpful, and should be clarified – they should not be referred to, or dealt with collectively
·         How should Design/Stylized Marks from countries where there are no disclaimers be handled?
·         Continue discussion on proposal for this Charter question until next Working Group call, when members not present have had an opportunity to review the discussion held on this call
·         ACTION ITEM: Staff to prepare a glossary of relevant terms preparatory to a survey on whether, if and how the Working Group may distinguish between various types of Design Marks – survey to be reviewed by the co-chairs prior to circulating to the full Working Group
·         Survey should not suggest language that collectively refers to Text/Stylized/Composite Marks as Design Marks – existing applicable definitions for each type of Mark should be used
3.       Proposals on Charter question 8 (How are geographical indications, protected designations of origin, and protected appellations of origin currently handled by the TMCH provider?)
o    Proposal submitted by Paul McGrady:
·         Geographic Indications (GIs) should not be in the TMCH, if they are not registered trademarks
·         European perspective does not exclude GIs, and should be treated like other Marks in that context - discussion on this proposal should continue
·         Working Group recommendations should not be restricted to a single jurisdiction, but should reflect the global nature of the DNS
·         Deloitte's acceptance of GIs in the TMCH may fall under the category on the TMCH Guidelines concerning marks protected by statutes/treaties as a result of amendments to policies adopted following public comments submitted during community consultation
o    Proposal submitted by Kathy Kleiman:
·         Meaning of marks protected by statutes/treaties needs to be clarified - different interpretations
·         Adopted recommendation was to place non-Trademarks in an ancillary database, not in the TMCH database
·         Would it be helpful for the Working Group to agree on what a "Mark" means (something that denotes source or origin) - distinction from "Trademark"?
·         From AC chat: trademarks are probably a specific type of mark, but not all marks are TMs (to the extent that marks designate source, for instance)
·         Should distinctions be made on what marks prompt a Claims notice based on location of the registrant, possibly regarding GIs only?
·         “Is there a basis for including GIs in the TMCH category of marks protected by statutes/treaties” is the question that needs answering, as opposed to trying to determine whether GIs are trademarks (caveat of GIs that are actually registered trademarks)?
·         ACTION ITEM: Staff to provide historical context on how category of Marks protected by statutes/treaties came to be, and what it is meant to denote
·         There are laws in different countries that assign protections to GIs as a form of Trademark, when they are registered as GIs – this might provide cause to include GIs in the TMCH
4.       Notice of deadline for further follow up questions to the Analysis Group:
o    To the extent that the Analysis Group can provide answers to follow-up questions based on the data/statement of work, they are happy to do so – more difficult to ask them to do more work that requires expansion of their statement of work, which may require a new contract with ICANN as well as allocation of a budget
o    If the Working Group has further questions, these should be submitted before mid-May, assuming that they fall within the existing scope of work
o    Questions already asked during previous calls have already been sent to the Analysis Group, and answers are forthcoming
5.       Next steps/next meeting:
o    Next Working Group call is on 3 May at 16:00 UTC, but not the following week (10 May) due to conflict with GDD summit

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