[GNSO-RPM-WG] Proposal re Q8.

Thu Oct 3 17:51:19 UTC 2019

Claudio's proposal would then read
3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion, and which is identified within the Statute or Treaty as a mark that functions as a trademark

I'm fine with that.  For comparison purposes, my proposed language (with bold indicating additions to current language) is:

Any word marks specified in and protected by a statute or treaty as trademarks in effect at the time the mark is submitted to the Clearinghouse for inclusion.

Relatedly, I got further information from Dev Gangjee (who studies GIs) and Robert Burrell (an expert on the Australian registration system), both of whom reported that GIs are listed with the TM offices with which they are familiar (in Australia wine GIs get special treatment), so unless Paul's proposal is also coupled with a "Notwithstanding the foregoing, no GIs," I don't think it would do the job that the consensus appears to want done.  For the reasons discussed on the call, I'm uncomfortable with a rule that appears to single out GIs for exclusion while allowing non-TM, non-GIs.

Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School
703 593 6759
________________________________
From: claudio di gangi <ipcdigangi at gmail.com>
Sent: Thursday, October 3, 2019 1:15 PM
To: Michael Graham (ELCA) <migraham at expediagroup.com>
Cc: Tushnet, Rebecca <rtushnet at law.harvard.edu>; Paul Tattersfield <gpmgroup at gmail.com>; gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: [GNSO-RPM-WG] Proposal re Q8.

Michael,

I agree with the points that Rebecca here, just noting that I believe the closest analogy is GIs function in a similar manner as certification or collective trademarks in the U.S.

In fact, this is how I believe the USPTO sets forth that GIs are protected in the U.S as per the obligations the U.S has undertaken as a signatory of the international TRIPS agreement.

Whereas, collective and certification marks are examined on absolute and relative grounds, GIs are protected through sui generis legislation (in believe in most cases, it’s possible they may be protected under common law in some jurisdictions but I’m not sure) - as certain trademarks like those protected by statue or treaty are sui generis in form.

This is why I always felt that the TMCH Operator in good faith interpreted 3.2.3 to potentially allow GIs in the Clearinghouse, with all the qualifying language they added (such as “may be eligible” - I don’t think they ever stated “are eligible”), and we did not know if or any GIs are still recorded in the TMCH.

In my personal view, (albeit, I am not an expert on GIs), I believe the number of countries that protect GIs has substantially increased since the First WIPO Process, providing more universality across the spectrum, compared to when this issue was initially considered by the international community under WIPO’s inclusive consultation on IP and DNS policy.

In addition, I believe in most countries that protect GIs through sui generis legislation, a senior GI has priority over a later registered trademark for the same class of goods/services.

But since trademarks are protected in every country worldwide through a combination of common law, statutory law, or constitutional law, I understand/support the perspective that Sunrise should take place first, based on that correspondence of global protection.

The only incongruence that I can potentially see arising is if a junior trademark holder in a certain country uses Sunrise to register a domain during Sunrise when actually the GI rights holder in that country has senior or superior rights. For example, there is often litigation where a national (or district) court in a country will hold that the GI has priority over the junior mark in that country, even if the trademark was registered in good faith.

Perhaps this can be addressed by having a provision in the SDRP policy for this very scenario (which registries may voluntarily choose to adopt), or we could consider adding it to the mandatory SDRP (but I defer to the Co-chairs and the WG).

In other words, the objective is to match offline IP law with the DNS and the associated rules for allocating domain names, e.g. if the GI rights holder can provide a court decision to the TMCH Operator that demonstrates it has priority under the national law of its country against the junior mark holder in its country.

Although, what may occur in practice is the court will require cancellation of the junior trademark, so I’m not sure it’s necessary. I defer to others who have substantive experience practicing law in this space, like Jonathan Agmon to help inform us with their perspective.

Rebecca,

We can remove source identifier from my definition if that makes you more comfortable; I don’t think it’s necessary to have it included in my 3.2.3. Is that satisfactory for you then to accept my definition?

Best regards,
Claudio

On Tuesday, October 1, 2019, Michael Graham (ELCA) <migraham at expediagroup.com<mailto:migraham at expediagroup.com>> wrote:

Wondering out loud whether GIs are necessarily “source identifiers”.  My understanding is that they are identifiers of particular geographic locations, whereas trademarks are source identifiers.  GIs may be source identifiers, but to the extent they are then they would be considered trademarks.  So . . . am I missing something in the terminology?

Michael R.

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Michael R. Graham

Senior Counsel and Global Director,

Intellectual Property, Expedia Group

T +1 425 679 4330 | M +1 425 241 1459

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Email: migraham at expediagroup.com<mailto:migraham at expediagroup.com>

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From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org>> On Behalf Of Tushnet, Rebecca
Sent: Tuesday, October 1, 2019 1:50 PM
To: claudio di gangi <ipcdigangi at gmail.com<mailto:ipcdigangi at gmail.com>>; Paul Tattersfield <gpmgroup at gmail.com<mailto:gpmgroup at gmail.com>>
Cc: gnso-rpm-wg <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Re: [GNSO-RPM-WG] Proposal re Q8.

From my perspective, the key problem is that "source identifier" describes, among other things, GIs.  We can engage in special pleading against GIs and just carve them out, but I admit that leaves me a bit sour.  I also would note that the relevant statutes I've seen don't use the words "source identifier" either, so we are still shuffling off the interpretive weight to Deloitte.  (E.g., although the Red Cross also has TM registrations, the Red Cross US statute that has been mentioned in this discussion uses the word "use" to define one prohibited act, and "wears or displays ... for the fraudulent purpose of inducing the belief that he is a member of or an agent for the American National Red Cross" to define the other prohibited act.)

For these reasons, I have come around to not wanting to add "source identifier" to the definition--I don't think it actually solves the problem and it might make things even less clear.  Other than that, I do think we have gotten a lot closer.

Rebecca Tushnet

Frank Stanton Professor of First Amendment Law, Harvard Law School
703 593 6759

________________________________

From: claudio di gangi <ipcdigangi at gmail.com<mailto:ipcdigangi at gmail.com>>
Sent: Tuesday, October 1, 2019 4:11 PM
To: Paul Tattersfield <gpmgroup at gmail.com<mailto:gpmgroup at gmail.com>>
Cc: Tushnet, Rebecca <rtushnet at law.harvard.edu<mailto:rtushnet at law.harvard.edu>>; gnso-rpm-wg <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Re: [GNSO-RPM-WG] Proposal re Q8.

Paul,

I agree with you; and you have spotted one of the areas of divergence between my proposal and Rebecca's.

My proposal includes alternative language on this provision - that I believe addresses your point, but I am interested in your perspective.

Best regards,
Claudio

On Tue, Oct 1, 2019 at 4:00 PM Paul Tattersfield <gpmgroup at gmail.com<mailto:gpmgroup at gmail.com>> wrote:

Rebecca, I believe in 3.2.3 you should not add the words "as trademarks" as the marks concerned are not trademarks. For example once such 6ter marks are communicated to the USPTO and are accepted it is not possible for any organization to register a trademark containing the mark and importantly that includes the originating entity itself. Instead an 89 serial is created so the mark turns up in an examining attorney’s search etc.

Best regards, Paul

On Tue, Oct 1, 2019 at 8:04 PM Tushnet, Rebecca <rtushnet at law.harvard.edu<mailto:rtushnet at law.harvard.edu>> wrote:

This is the same text but with the subject line proper.

Rebecca Tushnet

Frank Stanton Professor of First Amendment Law, Harvard Law School
703 593 6759

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