[GNSO-RPM-WG] Proposed policy principles and proposed draft language for consolidating individual TMCH proposals #4 & #5

[Paul Tattersfield]

*Proposed policy principles *GIs are not eligible for Claims and Sunrise
RPMs unless independently registered as an eligible trademark.

GIs and other quality schemes protected by statute may be held in
centralized ancillary databases.

Treaty organizations and organizations protected by statute are not always
able to register their word marks at a national trademark office. In some
jurisdictions their marks are reflected as a “non registration” (e.g. #89
series in USPTO) which ensures no one can subsequently register an
infringing trademark. Once such word marks are listed with a National or
Regional Trademark Office they must be treated within the Clearinghouse in
the same way as a registered word mark or a court validated word mark and
must be eligible for Claims and Sunrise.

There is no bar on the Clearinghouse Provider and other third party service
providers providing other additional ancillary services.


*Proposed draft language*

3.2          The standards for inclusion in the Clearinghouse are:


‘3.2.1     Nothing in section 3.2 shall exclude the Clearinghouse provider
and registry
                operators from offering additional voluntary services to
mark holders.

‘3.2.2     In this section “word mark” includes service marks, collective
marks,
                certification marks and word marks protected by statute or
treaty.

‘3.2.3     The standards for inclusion to be eligible for Claims and
Sunrise are:

(1)  Nationally or regionally registered word marks from all jurisdictions.
(2)  Any word mark that has been validated through a court of law or other
       judicial proceeding.
(3)  Word marks protected by a statute or treaty in effect at the time the
mark
       is submitted to the Clearinghouse for inclusion and is listed at a
national or
       regional trademark office.
(4)  Subsection (3) does not apply to geographical indications and other
quality
       schemes unless they also satisfy subsections (1) or (2).


‘3.2.4     The standards for inclusion in ancillary databases only and not
eligible for
                Claims or Sunrise are:

(1)  Other marks that constitute intellectual property.
(2)  Geographical indications and other quality schemes protected by
statute.


‘3.2.5     Protections afforded to trademark registrations do not extend to
applications
                for registrations, marks within any opposition period or
registered marks that
                were the subject of successful invalidation, cancellation
or rectification
                proceedings.
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