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

Tue Jul 28 12:52:20 UTC 2020

Perhaps the problem at this point is "marks" in 3.2.4; "indications" does point more clearly at GIs. The question at this point is whether ancillary databases, including run by the TMCH provider, can include GIs, because they are currently going into the TMCH and getting Sunrise/Notice given Deloitte's interpretation. So if Paul K's objection prevails and no change is made to 3, we have the worst of both worlds.

I definitely understand Paul K's point. I do think lack of transparency is a big problem and would happily support requirements of openness for ancillary databases (as well as auditing the TMCH to make sure that only 3.2.1-.3 matter is going in for Notice/Sunrise).   I would have preferred being more specific that 3.2.4 matter is not eligible for Notice & Sunrise (and would certainly be happy to include that as a crossreference), but the rules overall are pretty clear on that if read as a whole.

Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School
703 593 6759
________________________________
From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> on behalf of Paul Keating <paul at law.es>
Sent: Tuesday, July 28, 2020 7:17 AM
To: Massimo Vittori <Massimo at origin-gi.com>; Paul Tattersfield <gpmgroup at gmail.com>
Cc: gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals

Can someone please explain what is meant by this?

“3.2.4    Other marks and indications that constitute intellectual property.”

3.2.1 - 3.2.3 do a good job including marks that meet a clear and objective standard for protection regulated by a governmental or judicial authority.

To the contrary, 3.2.4 seems to present a hole through which one could drive  the 7th Calvary.   I can easily see attempts to use 3.2.4 to push through inclusion of any number of claims that, even if considered to be “intellectual property” are simply not protectable.  Please remember that not Intellectual Property warrants protection.   Everyone has what THEY consider to be intellectual property.  Not all of it is protectable.

I ask that someone please provide me with an example of how 3.2.4 could be properly used.

Moreover, even if it were otherwise appropriate to have a 4th classification for entry here, there is a complete absence of any objective third party standard having been met.  What could or could not be “IP” and what could or cound not be an “indication of IP” places the Clearinghouse in the position of becoming an arbiter with the only arguments originating from the applicant’s counsel.  Given the opposition that the Clearinghouse not be transparent, this presents a situation ripe for unchecked abuse.

I cannot see how 3.2.4 should be included under any stretch.

Sincerely,

Paul Raynor Keating, Esq.

Law.es<https://urldefense.proofpoint.com/v2/url?u=http-3A__law.es_&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=b7j9fKoK36uMpm6FPxTG_ZE76hi12UbG8wvf8c5Mk4c&s=-jtcHl8_s7wGX-J14QW_wZGOFtHpn9y3giTR7q0fz9o&e=>

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From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> on behalf of Massimo Vittori <Massimo at origin-gi.com>
Date: Tuesday, July 28, 2020 at 12:41 PM
To: Paul Tattersfield <gpmgroup at gmail.com>
Cc: gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals

Thank you Paul, great summary!

An interesting article concerning GIs in China, which provides for both a sui generis system and a trademark GIs system: https://www.linkedin.com/pulse/cnipa-published-major-work-statistics-first-half-2020-amy-gong<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.linkedin.com_pulse_cnipa-2Dpublished-2Dmajor-2Dwork-2Dstatistics-2Dfirst-2Dhalf-2D2020-2Damy-2Dgong&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=b7j9fKoK36uMpm6FPxTG_ZE76hi12UbG8wvf8c5Mk4c&s=RakfMbpCwhAV15-IS0AlqMSrZD8JUfg6hMo4-STcxtk&e=>

Best,

Massimo

De : Paul Tattersfield <gpmgroup at gmail.com>
Envoyé : Tuesday, July 28, 2020 11:21 AM
À : Massimo Vittori <Massimo at origin-gi.com>
Cc : gnso-rpm-wg <gnso-rpm-wg at icann.org>
Objet : Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals

Hi All, Please see below improved wording to 3.2 to address concerns WG members raised and help reach consensus and background references to aid discussion. There are no substantive changes at this late stage. 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 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 other quality schemes unless they also satisfy 3.2.1 or 3.2.2

3.2.7      Word marks here include service marks, collective marks and certification marks

Opposition
I believe Massimo remains opposed and would wish GIs to be on an equal footing in the main TMCH database, and Greg doesn’t like the words ‘and indications’ in 3.2.4

Original implementation
Special Trademark Issues (STI) Review Team Recommendations (Pg. 4)
“The name of the rights protection mechanism should be the “Trademark Clearinghouse” to signify that only trademarks are to be included in the database.”

Quality Schemes
https://ec.europa.eu/info/food-farming-fisheries/food-safety-and-quality/certification/quality-labels/quality-schemes-explained_en<https://urldefense.proofpoint.com/v2/url?u=https-3A__ec.europa.eu_info_food-2Dfarming-2Dfisheries_food-2Dsafety-2Dand-2Dquality_certification_quality-2Dlabels_quality-2Dschemes-2Dexplained-5Fen&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=b7j9fKoK36uMpm6FPxTG_ZE76hi12UbG8wvf8c5Mk4c&s=8LQ5psYvMXiVPPyRd_yZHQx3-w6ZrkbwGS4bIWC7XQ0&e=>

Regulation (EU) No 1151/2012<https://urldefense.proofpoint.com/v2/url?u=https-3A__eur-2Dlex.europa.eu_legal-2Dcontent_EN_AUTO_-3Furi-3Dcelex-3A32012R1151&d=DwMFAg&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=kP3WsbZqFF3oBrUWXeuERxb03nmeMHP1YNI2m79_u4c&s=U0D2kDUfhJHbva6fnq_8iCejMtlBUgRvfPFkMLxuIyg&e=> of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs. https://eur-lex.europa.eu/legal-content/en/LSU/?uri=CELEX%3A32012R1151<https://urldefense.proofpoint.com/v2/url?u=https-3A__eur-2Dlex.europa.eu_legal-2Dcontent_en_LSU_-3Furi-3DCELEX-253A32012R1151&d=DwMFAg&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=kP3WsbZqFF3oBrUWXeuERxb03nmeMHP1YNI2m79_u4c&s=sT0_HLdFRYSvXOs5p_m9EpTmtd7gwyKgkf95kdZjxE0&e=>

On Tue, Jul 21, 2020 at 1:34 PM Massimo Vittori <Massimo at origin-gi.com<mailto:Massimo at origin-gi.com>> wrote:

Thank you Paul, I will respond during the call, I might be a few minutes late though

Envoyé depuis mon smartphone Samsung Galaxy.

-------- Message d'origine --------

De : Paul Tattersfield <gpmgroup at gmail.com<mailto:gpmgroup at gmail.com>>

Date : 21.07.20 12:31 (GMT+01:00)

À : Massimo Vittori <Massimo at origin-gi.com<mailto:Massimo at origin-gi.com>>

Cc : gnso-rpm-wg <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>

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

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<mailto: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<mailto: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<mailto: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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