[GNSO-RPM-WG] Q#15 Transparency for the TMCH

Fri Oct 11 19:17:53 UTC 2019

Hi Marie and All,

First, thanks Marie for clarifying your concern.   I understand your position and recall your concern subject to some discussion and debate on the first call.  My recollection was, similar to Michael’s sentiment below, that if one wanted to engineer what is in the TMCH it can be done and is happening under the current system.   Moreover, as an additional rebuttal it’s a seemingly weak argument to block transparency on the chance that one might divine a brand holder’s strategy by seeing what is in the TMCH.   No one would argue that a brand owner is giving up their TM rights if they chose not to register in the TMCH.

Second, my scenario below was specifically raised and discussed during the first call.   I believe John McElwaine (perhaps someone else as well) might have introduced the concept, but I’m certain this was an argument that was set forth in the chat and the discussion thus my desire to clarify and understand the motivation.   I hope someone can shed light on the concept I’ve outlined below (seeking to protect TMs and have secret priority dates).    This was set forth as a concern and reason to oppose transparency and it would help to have clarity from the group.

The absence of transparency and access to the data has created excessive work by the WG.    To my recollection, the TMCH was never intended to be secret and somehow became secret during implementation.   Access to data is not a trivial request and the public interest in having access to this information and allowing for oversight should be strongly considered.   Oversight is particularly important where you are expanding rights and when we have already determined that implementation is fraught with issues.

I appreciate Marie's specific concerns that have been articulated, but what about the scenario outlined below?

Thanks,

Jason

-----Original Message-----
From: Michael Karanicolas <mkaranicolas at gmail.com> 
Sent: Friday, October 11, 2019 3:15 PM
To: Marie Pattullo <marie.pattullo at aim.be>
Cc: Jason Schaeffer <jason at esqwire.com>; gnso-rpm-wg at icann.org
Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH

Because while it's very easy to find out whether a particular word (or a dataset of 50 or 100 words) is in the TMCH, it's impossible to see the totality of words included in the TMCH. This prevents effective oversight - as we've run into time and again in discussing the extent of registrations of GIs, the extent of registrations of design marks, etc. It's only easy to search when you know specifically what you're looking for.

And while I understand your perspective is different... I feel like at some point you need to make a defensible and realistic argument for the harm that would result from transparency, since the brand strategy information you mention is already, essentially, publicly available.

On Fri, Oct 11, 2019 at 3:01 PM Marie Pattullo <marie.pattullo at aim.be> wrote:
>
> Thanks, Michael.
> If it is as easy as you say, then what purpose would a public TMCH serve?
> As for your suspicion, while of course I cannot speak for you, I can for me: that it absolutely not the case.
> And Paul, at the risk of simply quoting you: nothing in your comments moves the needle of the opposition for us either. That's the joy of a debate between people with different perspectives.
> Best to all,
> Marie
>
> -----Original Message-----
> From: Michael Karanicolas <mkaranicolas at gmail.com>
> Sent: Friday, October 11, 2019 8:49 PM
> To: Marie Pattullo <marie.pattullo at aim.be>
> Cc: Jason Schaeffer <jason at esqwire.com>; gnso-rpm-wg at icann.org
> Subject: Re: [GNSO-RPM-WG] Q#15 Transparency for the TMCH
>
> Hi Marie,
>
> The problem with the claim of commercial harm as you frame it here is that it is trivially easy to find out which marks from a particular portfolio are registered in the TMCH through trial and error. As you mention - the totality of the portfolio is publicly available. So if you have that dataset, it's pretty simple to just search for each word and see when a trademark claim notification pops up (indeed - this is how journalists found all those generic words). So any interested party who wanted to find out about a company's "commercial/enforcement strategy" could just spend an hour or two searching for each registered mark, and get the complete picture.
>
> I think that's the reason why Jason painted the elaborate scenario he did, is because many of us are wracking our brains trying to find out how there's a legitimate confidentiality interest when this information is available to anyone who cares to look. It's good to know that the scenario he mentioned hasn't come up... but if that's the case it begs the question as to what the basis of your opposition is, given that the strategic information you refer to is already available to anyone who spends a couple of hours looking?
>
> Because I have to admit, I'm growing increasingly suspicious that the argument to keep it secret is not rooted in any actual need for confidentiality, but rather in a desire to avoid the kind of public oversight which we are advocating.
>
> Best,
>
> Michael
>
> On Fri, Oct 11, 2019 at 2:25 PM Marie Pattullo <marie.pattullo at aim.be> wrote:
> >
> > Thanks Jason,
> >
> >
> >
> > I can only speak for myself but no, this isn’t our main concern and I apologise if I was unclear.
> >
> >
> >
> > A branded goods company may own many trade marks – some, 100s (e.g. in the FMCG sector), some, one or a handful (SMEs, start-ups). In the EU, it’s pretty straightforward to find out what TMs are registered and by whom – indeed, it’s basic IP strategy to conduct a search of TM Registers to find out whether the TM you want to have is available, as no-one wants to face needless oppositions, a wasted marketing budget etc. So, as many in the WG have noted, if you want to find out which marks a right holder owns, you can.
> >
> >
> >
> > The TMCH is a totally different thing. A brand that chooses to (pay to) put a TM into the TMCH does so for either commercial reasons (it may apply for a registration in a new gTLD) or enforcement reasons (to have notice if someone else is trying to register such a name). Brands with multiple TMs are unlikely to put all of them into the TMCH, so disclosing which ones it has chosen to put there also discloses its commercial/enforcement strategy – i.e. the TMs about which it is most concerned in the new gTLD space of the DNS.
> >
> >
> >
> > It may not want to announce that to the market for a variety of reasons, either to its competitors (who will then know which of its 100s of TMs it considers most important in the new gTLD space) or to registries/registrars (we all remember some of the “premium pricing” concerns in the new round).
> >
> >
> >
> > As for enforcement, I stress that the TMCH only gives the brand the possibility to be told if someone wants a DN including their TM: it clearly does not result in an automatic block on such a registration, for which there could of course be multiple valid reasons – not least different class and/or no confusion. However in the case of a malicious/bad faith (etc.) registration then yes, the brand would be on notice and could then choose to (pay to) take appropriate enforcement action, including (if appropriate) following the URS route. The brands that I know are not in the business of launching enforcement actions they know are unfounded; they’re in the business of making products that consumers trust and choose to buy.
> >
> >
> >
> > I can’t comment on your scenario below as that has never been brought to me as a concern; the above has. And we fail to see any benefit in the TMCH being public.
> >
> >
> >
> > I hope this is clear, and again apologise if I was not before.
> >
> >
> >
> > Marie
> >
> >
> >
> >
> >
> > From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of Jason 
> > Schaeffer
> > Sent: Friday, October 11, 2019 6:52 PM
> > To: gnso-rpm-wg at icann.org
> > Subject: [GNSO-RPM-WG] Q#15 Transparency for the TMCH
> >
> >
> >
> > Hi All,
> >
> >
> >
> > Sorry for not being able to address this on yesterday’s call – I was bounced from the Zoom and couldn’t reconnect from my mobile.  After much consideration of the chat comments and statements during the past two calls I’ve parsed together the following strategy concerns that might be at issue.   It seems the opposition to an open/transparent TMCH have set forth the following rationale:
> >
> >
> >
> > Large brand owners like the ability to file in “remote” jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention.   For example, Party A could “secretly” register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to “go public.”   In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its “secret” brand plans or strategy.   Alternatively, there may also be a similar use case with a registration in the EU.  This is what I understand the opposition was presenting in the comments last week and again yesterday.
> >
> >
> >
> > This use of the “secret TM priority” filing method is one thing, and I understand the ostensible business intelligence concerns to require such a tactic.   However, we are discussing this in the context of the TMCH.  How can these parties obtain Sunrise protection without proof of use?   This is even more challenging in the case of an EU registration that might not be based on actual use.
> >
> >
> >
> > If the project is top secret and subject to heightened secrecy, how can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy?  What is the POU and what is the declarant stating to the TMCH?  Is this the position that the opposition is proffering to block transparency of the TMCH?
> >
> >
> >
> > In addition, if I am correctly capturing how the method is employed in practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I’m not yet seeing an important justification that outweighs the important benefits of an open TMCH.
> >
> >
> >
> > Thanks,
> >
> >
> >
> > Jason
> >
> >
> >
> > _______________________________________________
> > 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.