[GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals

[Massimo Vittori]

Thank you Paul for this effort to reconcile TMCH individual proposals #4 and #5.

In my view however, the public comments show a substantial opposition to both. Several of them, including the ones from Deloitte, are based on the fact that GIs should not be excluded from the TMCH (in this respect, Deloitte clearly states that so far it has never deviated from the TMCH Guidelines). I do not see how TMCH individual proposals #4 and #5 (nor this attempt to reconcile them) can reach consensus.

Happy to discuss it later today.

Best,

Massimo

From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of Paul Tattersfield
Sent: Monday, July 20, 2020 7:25 PM
To: gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals

As promised here is a little further detail on proposals #4# & #5:

The Trademark Clearinghouse is a central repository for marks. If it was to be a central repository for IP rights it would have been called the IP Clearinghouse.

The purpose of a mark is to distinguish the commercial origin of goods or services not to distinguish those goods according to their geographical origin. In contrast to common law based systems under civil law a sign does not become a ‘mark’ until it is registered as a mark.

In #5 Claudio was clear “Geographical Indications or Appellations of Origin shall not be eligible for … Sunrise or Claims …unless… also independently registered as trademarks” and in #4 Rebecca chose to underscore “Geographic indications (that are not also protected as trademarks) are not trademarks”

There is clearly great utility to providing a central repository for geographical indications. Therefore the question before the working group should be: Can we reach consensus on including geographical indications in a shared ancillary database which does not flow to either Sunrise or Claims for the final report?


Improved simplified language to bring together individual TMCH #4 & #5 proposals together

3.2 The standards for inclusion in the Clearinghouse are:

3.2.1      Nationally or regionally registered word marks from all jurisdictions.

3.2.2      Any word mark that has been validated through a court of law or other judicial proceeding.

3.2.3      Any Word marks protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion.

3.2.4      Other marks and indications that constitute intellectual property.

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.

3.2.6      Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin]

Background research

The TMCH rules are defined in an appendix of the AGB. Geographical indications are not mentioned anywhere in the AGB.

Deloitte were tasked with drawing up the TMCH Guidelines. The TMCH Guidelines 1.0 February 2013 introduces the first single mention of geographical indications in 2.4.1

2.4.1 For marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to: geographical indications and designations of origin

Section 2.4 is poorly drafted and needs work: for example in 2.4.1 the wording “court-validated marks” should read “marks protected by statute or treaty” And there are various incorrect references to trademark holders, assignment and licensing in 2.4.2 & 2.4.3 etc.

In November 2013 Deloitte released TMCH Guidelines 1.2 which introduced a new section 5 “Verification Guidelines”. Section 5.5 expands “word marks” in the title to “Applicable to Marks protected under statute or treaty”.

Sub sections 5.5.1 - 5.5.8 use a confused single example of the geographical indication “Scottish Wild Salmon” to illustrate how a word mark protected by statute or treaty may be submitted to the Trademark Clearinghouse! Again the wording for trademark holders, assignment and licensing often seems incorrect throughout these subsections.


On Wed, Jul 15, 2020 at 4:22 PM Paul Tattersfield <gpmgroup at gmail.com<mailto:gpmgroup at gmail.com>> wrote:
Hi All,

Here is simplified language which brings TMCH #4 & TMCH #5 together after discussions with Rebecca and Claudio.

The thinking is:
3.2.1, 3.2.2 & 3.2.3 flow to 7.1 claims & 7.2 sunrise
3.2.4 flows to any ancillary databases

3.2.5 qualifies 3.2.1
The new 3.2.6 qualifies 3.2.3 in a way that makes it evident that GIs & AOs are implicitly accepted in 3.2.4.

Best regards,

Paul


3.2 The standards for inclusion in the Clearinghouse are:

3.2.1      Nationally or regionally registered word marks from all jurisdictions.

3.2.2      Any word mark that has been validated through a court of law or other judicial proceeding.

3.2.3      Any Word marks protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion.

3.2.4      Other marks that constitute intellectual property.

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.

3.2.6      Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin]

Notes:

This proposal seeks to address the various public comments seeking clarification and tighter wording, by only introducing a small easily understandable change to the existing text.

It also recognizes the separate legal status and the global importance of GIs and will help GI’s reside in a shared ancillary database to support voluntary RPMs like the “Limited Registration Period” LRP voluntary RPM for .dot Paris.  If the mark holders wished it would even be possible to publish a list of GIs whilst the main trademark database remains confidential.
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