[GNSO-RPM-WG] Proposal re Q8.
Paul Keating
paul at law.es
Fri Oct 11 07:57:19 UTC 2019
Thank you Mary
However, to clarify, the treaty allows any member to list an acronym. There is no requirement that it be otherwise registered or treated as a trademark/service mark (even in the “sponsoring member state). It also allows members to object to any specified acronym.
The USPTO’s position is that such acronyms are merely common law claims which require proof or a formal registration as a trademark.
For these (and other) reasons the WG on this issue (of which I was a part) declined to grant them any special rights under the UDRP other than to the extent the holder could satisfy the requirements for a common law trademark.
I see no reason for GIs to be treated any differently.
And of course these same issues should preclude the holder from participating in the TMCH process.
Sent from my iPhone
> On 10 Oct 2019, at 23:58, Mary Wong <mary.wong at icann.org> wrote:
>
>
> Dear all,
>
> I hope it’s appropriate for staff to comment here, as a relatively similar discussion took place in the IGO-INGO Curative Rights PDP. As with RPMs, the fundamental principle was that any domain name policy protections should reflect, and not expand, existing legal rights. The issue was the existence of substantive legal rights (if any) in the names, acronyms, signs and emblems of international organizations (both governmental and non-governmental), e.g. the Red Cross, other NGOs, agencies of the United Nations, other international organizations established by treaty, etc. The question was whether the sort of legal protections offered by Article 6ter of the Paris Convention for the Protection of Industrial Property are equivalent to, or confer, substantive legal rights (Article 6ter obligates member states to, in part, “refuse or to invalidate the registration, and to prohibit by appropriate measures the use… either as trademarks or as elements of trademarks … emblems, abbreviations and names of international intergovernmental organizations”).
>
> Legal commentators have noted that this treaty provision does not itself create an industrial property right; rather, it creates an obligation for states to prevent third party registrations of the protected names, abbreviations and so on as trademarks. In addition, as the treaty is not self-executing, it does not confer a right of action in member states unless those states enact legislation that allow the protected organizations such a means of enforcement. Finally, it may also not be enough to rely on a notification procedure, since that may simply indicate the existence of a form of protection, and not necessarily a substantive right.
>
> Therefore, and in line with what Rebecca has noted, a treaty provision that does not clearly indicate that a mark is a trademark could place it into a similar type of “protected” category as geographical indicators, unless there exists specific national legislation that actually specifies it to be a trademark. This could be the case, for instance, for an NGO such as the Red Cross or the International Olympic Committee, where the applicable international treaties may not explicitly state that they are trademarks, but one or more national statutes may do.
>
> Cheers
> Julie, Ariel & Mary
>
> From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> on behalf of Paul Tattersfield <gpmgroup at gmail.com>
> Date: Thursday, October 10, 2019 at 17:46
> To: "Tushnet, Rebecca" <rtushnet at law.harvard.edu>
> Cc: gnso-rpm-wg <gnso-rpm-wg at icann.org>
> Subject: Re: [GNSO-RPM-WG] Proposal re Q8.
>
> “I don't see how that's different conceptually from "the marks that the national GI Registry accepts," - It’s different because it’s the marks of the specific [treaty] organization, rather than a registry full of third party marks / GIs etc.
>
> What compounds the problem is the Paris Convention requires that a state refuse to register designations that have been notified (deposited) pursuant to Article 6ter and to which the state has notified (transmitted) no objections.
>
> eg. the UNHCR 89 serial 89000825 which effectively blocks everyone; even their own organizations’ trademark applications e.g. 77663317 for “UNHCR BLUE KEY” which was refused / had to be withdrawn.
>
> On Thu, Oct 10, 2019 at 9:20 PM Tushnet, Rebecca <rtushnet at law.harvard.edu> wrote:
> But then the acronym is only "protected by" the treaty/statute in the same way that unregistered marks are "protected by" Lanham Act 43(a) in the US--I'd be willing to say that a statute that says "the United Nations Human Rights Commission and its acronym" specifies UNHRC, but not that "the marks of the United Nations Human Rights Commission" specifies what's to be protected. I don't see how that's different conceptually from "the marks that the national GI Registry accepts," which I think there is consensus should not count as protected by statute. Those GIs are, as far as I can tell, often sent to national TM registries so it seems to me that your proposal puts them right back in.
>
>
> Rebecca Tushnet
> Frank Stanton Professor of First Amendment Law, Harvard Law School
> 703 593 6759
> From: Paul Tattersfield <gpmgroup at gmail.com>
> Sent: Thursday, October 10, 2019 3:52 PM
> To: claudio di gangi <ipcdigangi at gmail.com>
> Cc: Tushnet, Rebecca <rtushnet at law.harvard.edu>; Michael Graham (ELCA) <migraham at expediagroup.com>; gnso-rpm-wg <gnso-rpm-wg at icann.org>
> Subject: Re: [GNSO-RPM-WG] Proposal re Q8.
>
> Rebecca, The danger of posting on the fly during the WG call, sorry ‘specified in’ would have too limited scope, for example an organization’s acronym may not be actually spelt out in the body of the treaty text.
>
> Claudio, The scope needs to be defined sufficiently precisely for it not to matter, because it is impossible to second guess future statutes.
>
>
> On Thu, Oct 10, 2019 at 6:27 PM claudio di gangi <ipcdigangi at gmail.com> wrote:
> Paul,
>
> I didn't catch/understand your earlier response on the uniformity of this approach by every trademark office in the world.
>
> Have you confirmed whether every TMO is notified and keeps a separate record of the marks protected by statute/treaty under their national laws, in the same approach as the U.S. or EU?
>
> Thanks,
> Claudio
>
> On Thu, Oct 10, 2019 at 1:16 PM Paul Tattersfield <gpmgroup at gmail.com> wrote:
> ‘specified in’ would be ok.Personally I wouldn't define trademark here.
>
> On Thu, Oct 10, 2019 at 6:04 PM Tushnet, Rebecca <rtushnet at law.harvard.edu> wrote:
> I could get comfortable with "specified in" but "established" seems wiggly to me--how would you feel about "specified in" instead? Relatedly, would you propose to not define trademark? Given its use through the AGB, I'd still be in favor of a definition for greater certainty (understanding that we have a separate issue about the meaning of "word mark").
>
>
> Rebecca Tushnet
> Frank Stanton Professor of First Amendment Law, Harvard Law School
> 703 593 6759
> From: Paul Tattersfield <gpmgroup at gmail.com>
> Sent: Thursday, October 10, 2019 12:41 PM
> To: Tushnet, Rebecca <rtushnet at law.harvard.edu>
> Cc: claudio di gangi <ipcdigangi at gmail.com>; Michael Graham (ELCA) <migraham at expediagroup.com>; gnso-rpm-wg <gnso-rpm-wg at icann.org>
> Subject: Re: [GNSO-RPM-WG] Proposal re Q8.
>
> We need a way to include marks like UNHCR because they are established under their own specific treaty (or convention). What we don’t want is for the language to be too loosely drawn so it inadvertently protects GIs etc. simply because they are protected collectively under the Paris Convention or TRIPS etc. Hence the words “established in”
>
> 3.2.3 Any word mark notified to a national trademark office established in and protected by statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion
>
> On Thu, Oct 10, 2019 at 5:13 PM Tushnet, Rebecca <rtushnet at law.harvard.edu> wrote:
> I don't think I understand what your proposal is now. Can you provide the language you think would exclude GIs but allow other non-trademarks?
>
>
> Rebecca Tushnet
> Frank Stanton Professor of First Amendment Law, Harvard Law School
> 703 593 6759
> From: Paul Tattersfield <gpmgroup at gmail.com>
> Sent: Thursday, October 10, 2019 11:58 AM
> To: Tushnet, Rebecca <rtushnet at law.harvard.edu>
> Cc: claudio di gangi <ipcdigangi at gmail.com>; Michael Graham (ELCA) <migraham at expediagroup.com>; gnso-rpm-wg <gnso-rpm-wg at icann.org>
> Subject: Re: [GNSO-RPM-WG] Proposal re Q8.
>
> I was under the impression they are established by register (DOOR etc) rather than by established specifically [with]in a statute. If this is not the case then we probably need to split 3.2.3 into 3.2.3 (a) statute & 3.2.3 (b) treaty (We can tidy the numbers later of course).
>
> On Thu, Oct 10, 2019 at 4:42 PM Tushnet, Rebecca <rtushnet at law.harvard.edu> wrote:
> No, because GIs appear to be formally submitted to a number of TM offices worldwide. As I’ve said, to do this would either admit a bunch of GIs or require “notwithstanding” language.
>
> Rebecca Tushnet
> Frank Stanton Professor of First Amendment Law, Harvard Law School
>
> Sent from my phone. Apologies for terseness/typos.
>
>
> On Oct 10, 2019, at 9:36 AM, Paul Tattersfield <gpmgroup at gmail.com> wrote:
>
> Hi All. Sorry for the delayed response, would this solve the problem? Best regards, Paul.
>
> 3.2.3 Any word mark notified to a national trademark office established in and protected by statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion
>
> On Tue, Oct 8, 2019 at 5:54 PM claudio di gangi <ipcdigangi at gmail.com> wrote:
> Rebecca,
>
> That's great, I am happy that you support this revised language (personally, I am fine with removing 'service mark' as I do not see that causing a problem, as it has not been an issue to date). Since I feel this is the most precise text developed to date, let's stay with this going forward (see below).
>
> 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; the word mark protected by statute or treaty must be a trademark.
>
> On your other feedback, I did not mean to imply your agreement on 3.2.3 impacts the other elements in your proposal; but simply that we combine the areas where we agree, e.g. there should be no bar on ancillary services, etc., and then parse out the other areas for consideration.
>
> I believe that is exactly how the consensus-building process is intended to function.
>
> From my point of view, an exception to this general rule is the specific case of when the aspects of a particular proposal are so inter-related that they form a package of policy recommendations that can not be untethered, e.g. a "unitary proposal".
>
> Or if someone compromises on an issue they believe is critical, I don't think it's fair to then turn around and say "OK you compromised on this important area, so we'll count you in on the compromise but discard the rest of your ideas."
>
> I'm glad we were able to make further progress before our call on Thursday.
>
> Best regards,
> Claudio
>
>
> On Tue, Oct 8, 2019 at 11:21 AM Tushnet, Rebecca <rtushnet at law.harvard.edu> wrote:
> To be clear, my proposal, which is still my proposal, defines trademark to include service marks, collective marks, and certification marks. I believe it makes more sense to do so in a footnote that covers the entire section 3 than in this subsection. I am happy to use the language you proposed several days ago for 3.2.3, or this (I’d remove service mark given the overall definition) but I am not withdrawing the overall proposal.
>
> Rebecca Tushnet
> Frank Stanton Professor of First Amendment Law, Harvard Law School
>
> Sent from my phone. Apologies for terseness/typos.
>
>
> On Oct 8, 2019, at 10:52 AM, claudio di gangi <ipcdigangi at gmail.com> wrote:
>
> Rebecca,
>
> Thanks for the feedback; I have removed "referenced by" and "legally recognized as" because 1) by removing, it makes the provision more concise (which I tend to favor) and precise; and 2) I don't think it changes the meaning of what we are attempting to clarify here.
>
> Please see below, hope this is satisfactory. I added-in "service mark" because I recall Greg mentioning that on our call two weeks ago for extra clarity, but if we just want to say "trademark" I think its OK (as services aren't referenced in 3.1.1 or 3.1.2..
>
> 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; the word mark protected by statute or treaty must be a trademark/service mark.
>
> On Mon, Oct 7, 2019 at 1:29 PM claudio di gangi <ipcdigangi at gmail.com> wrote:
> Rebecca, all,
>
> I am making a final attempt below on 3.2.3; I think this version is more specific, condense, and in alignment with the original spirit of 3.2.3.
>
> I hope you find this language acceptable.
>
> If the WG isn't able to each consensus on the exact language on 3.2.3 for inclusion in the Initial Report, then I recommend we defer to staff and/or the IRT that will follow this PDP for developing more exact language.
>
> We have the option to simply put forward a general rule for public comment in the Initial Report, i.e. "GIs and Appellations of Origin do not qualify for TM Claims and Sunrise, unless those signs are independently registered as trademarks," in addition to the other set of provisions which we are generally aligned on w/r/t/ this subject matter, e.g. "there shall be no prohibition on using the same ancillary database for GIs across multiple new gTLDs, etc."
>
> ------
>
> 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; the word mark protected by statute or treaty must function as, or be legally recognized as, a trademark or service mark.
>
> ------
>
> Of course, I remain open to your thoughts and any additional input WG members may have. Thanks!
>
> Best regards,
> Claudio
>
>
>
>
> On Thu, Oct 3, 2019 at 3:26 PM claudio di gangi <ipcdigangi at gmail.com> wrote:
> Sorry, but this made me think about the Boy Scouts legislation under U.S. law, see: https://www.law.cornell.edu/uscode/text/36/30905
>
> The corporation has the exclusive right to use emblems, badges, descriptive or designating marks, and words or phrases the corporation adopts. This section does not affect any vested rights.
>
> .....
>
> So I think we just need to change “identified” with “referenced” because identified is too specific. If the Boy Scout corporation adopts a new mark, it will be protected as a trademark under U.S law, but that trademark is not “identified” within the statue (depending on how strictly one interprets “identified”), but it is “referenced” in the statute.
>
> 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 referenced within the Statute or Treaty as a mark that functions as a trademark.
>
> Hope you are still OK with this Rebecca? Thanks!
>
> On Thursday, October 3, 2019, Tushnet, Rebecca <rtushnet at law.harvard.edu> wrote:
> 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> 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.
>
>
>
>
>
>
>
>
>
> Michael R. Graham
>
> Senior Counsel and Global Director,
>
> Intellectual Property, Expedia Group
>
> T +1 425 679 4330 | M +1 425 241 1459
>
> 333 108th Ave. NE | Bellevue | WA 98004
>
> Email: migraham at expediagroup.com
>
>
>
>
>
>
>
>
>
> From: GNSO-RPM-WG <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>; Paul Tattersfield <gpmgroup at gmail.com>
> Cc: gnso-rpm-wg <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>
> Sent: Tuesday, October 1, 2019 4:11 PM
> To: Paul Tattersfield <gpmgroup at gmail.com>
> Cc: Tushnet, Rebecca <rtushnet at law.harvard.edu>; gnso-rpm-wg <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> 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> 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
>
> _______________________________________________
> GNSO-RPM-WG mailing list
> GNSO-RPM-WG at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
> _______________________________________________
> By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
>
> _______________________________________________
> GNSO-RPM-WG mailing list
> GNSO-RPM-WG at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
> _______________________________________________
> By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20191011/e2685b45/attachment-0001.html>
More information about the GNSO-RPM-WG
mailing list