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

Tue Jul 21 10:29:29 UTC 2020

Great to see you here Massimo! I am delighted to make your acquaintance, I
have heard great things about you.

Two questions if I may?
Can you refer me to an authority which classifies geographic indications as
a mark please?
Do you support Claudio’s proposal?

Kind regards, Paul.

On Tue, Jul 21, 2020 at 9:18 AM Massimo Vittori <Massimo at origin-gi.com>
wrote:

> 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>
> 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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