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Nathalie Peregrine's Personal Meeting Room - Shared screen with speaker view
Julie Bisland
37:07
Welcome to the Review of All Rights Protection Mechanisms, RPMs and all gTLD PDP Working Group call on Wednesday, 11 September 2019
Michael R. Graham
39:21
Minor change to my SOI -- I will be serving as IPC representative on the Nominating Committee beginning in Montreal.
Ariel Liang
41:11
https://community.icann.org/download/attachments/117604906/Open%20TMCH%20Charter%20Questions%20-%2027%20Aug%202019.pdf?version=1&modificationDate=1567802672000&api=v2
Rebecca Tushnet
43:49
We actually have heard from Deloitte
Rebecca Tushnet
44:05
in 2017 we asked
Rebecca Tushnet
44:16
and they said they accepted GIs under the "statute or treaty"
Mary Wong
44:17
The TMCH Guidelines essentially set out Deloitte’s practice.
Rebecca Tushnet
44:30
provision, excuse the shorthand
Mary Wong
45:38
In January 2017, Deloitte answered the WG’s question about what they do with design marks as follows: “10. How many design marks have been submitted and validated? What is your criteria for validating these? How are you differentiating between design marks in the practical application of the TMCH guidelines?Please define what is exactly understood under “design marks” as there is no globally consistently accepted definition of this mark type.However, we refer to Section 5 of the Trademark Clearinghouse Guidelines in order to better understand our verification process."
Mary Wong
45:59
(oops sorry for lousy formatting)
Rebecca Tushnet
47:05
Unless we ask Deloitte for a list of GIs they've accepted (which I don't think we will get) it's not clear to me what additional information would give us.
Mary Wong
47:14
And as Rebecca noted, they provided info on the “statute or treaty” category - including numbers.
Rebecca Tushnet
47:52
See q 7, pp 5-6
Mary Wong
48:13
@Rebecca, all - Deloitte also told the WG when they met with us that they do not distinguish between GIs and non-GIs under the statute or treaty category, so it will be difficult/impossible for them to provide a list of what are the GIs that are in the TMCH.
Paul Tattersfield
49:57
6ter marks
Julie Bisland
53:01
To all: does anyone know who has the phone number ending in …513?
Rebecca Tushnet
54:17
The Trademark Clearinghouse is for trademarks. The current categories in the AGB of "Marks protected by statute or treaty" and "other IP" (3.2.3 and 3.2.4) should both be replaced by the single concept of "word marks protected as trademarks by statute or treaty specifying the marks at issue." The three categories of eligible trademarks for the TMCH would then be marks protected by a national registration, marks confirmed by a court decision, and marks recognized as trademarks by statute or treaty (e.g., the Olympic marks, 36 U.S.C. §380, Use of Olympic symbols, emblems, trademarks and names).
Julie Hedlund
54:43
@Rebecca: Have you sent your email. We haven’t seen it on the list, or maybe it was from earlier?
Paul Tattersfield
54:50
I don't think that's quite right - they are not always trademarks they are marks listed under the Paris Convention
Mary Wong
55:26
3.2.4 relates to marks that ROs may have specific requirements for.
Rebecca Tushnet
55:30
It is in my outbox and marked as sent--I can try again.
Julie Hedlund
55:40
Thanks @Rebecca.
Justine Chew
55:54
@Paul T, so what would you exclude?
Paul Tattersfield
57:16
they are not trademarks Justine
Rebecca Tushnet
57:18
That's wonderful to say, Mary, but I see no evidence that it is a good idea or makes any sense. If there's something that is a TM that isn't covered by the three categories I enumerated, what is it?
Paul Tattersfield
57:30
they are are 6ter marks
Rebecca Tushnet
57:35
@Paul: The current procedures don't seem to allow marks listed under the Paris Convention--can you say more about that?
Mary Wong
57:42
@Paul, 6ter doesn’t include a list of marks (armorial bearings, flags, IGO names etc.), although organizations that opt to use its protections will submit the relevant signs to WIPO.
Rebecca Tushnet
58:17
https://www.trademark-clearinghouse.com/content/registered-trademarks
Paul Tattersfield
58:21
they are the marks that are protected by statute and treaty
Rebecca Tushnet
58:37
For an idea of what they are telling people trying to use the system.
Paul Tattersfield
01:00:22
3.2.3.4 is very poor
Paul Tattersfield
01:01:03
Greg +1 on 3.2.3.4 but not 3.2.3.3
Mary Wong
01:02:26
QUESTION from staff: it likely makes a difference in scope whether the WG agrees to use “mark” or “trademark” for what is within scope of 3.2.3.
Mary Wong
01:02:58
i.e. all “trademarks” are likely “marks”, but not all marks are trademarks.
Greg Shatan
01:04:02
wine steward?
Philip Corwin
01:05:25
If a TLD like .wine wants to give soecial protection to a GI like "champagne" can't it do that on its own regardless of the TMCH rules?
Rebecca Tushnet
01:05:58
Agreed, Phil. And I think that also answers Staff's question: as was just said, it is the *T*MCH not the MCH.
Paul Tattersfield
01:06:45
the whole of 3.2 is poorly drafted intemrs or mark/trademark
Mary Wong
01:06:47
@Phil - that is what 3.2.4 is supposed to do (though perhaps somewhat obliquely phrased).
Paul Tattersfield
01:11:25
3.2 is different from 7.0. 7.0 is The scope of registered marks that must be honored by the RPMs
Mary Wong
01:11:47
Again, on 3.2.4 - it is supposed to cover other intellectual property protected by arrangement with a registry, under that registry’s rules and requirments.
Paul Tattersfield
01:12:41
this is so wrong they do have legal defintion in International law
Scott Austin
01:13:09
At Claudio, excellent point on titles TM limitations for a single title but not a series title, copyright has the same limitation.
Michael R. Graham
01:13:50
Agree generally that "mark" should be changed to "trademark" -- @Greg -- "Trademark" is generally defined as including "Service mark", etc.
Rebecca Tushnet
01:15:46
Greg, that proposal goes back to GIs.
Paul Tattersfield
01:15:59
just mark
Rebecca Tushnet
01:16:02
That's the rationale for including GIs currently--that they are protected by statute/treaty
Rebecca Tushnet
01:16:53
I'm not sure that works given the statutes in existence--some do list GIs.
Mary Wong
01:17:18
Staff comment: It seems to us that basically the WG is converging on the concept that “word marks protected by statute or treaty” should be limited to those marks that are protected as the functional & substantive equivalent of trademarks.
Mary Wong
01:18:21
Staff comment #2: But we are concerned about specifying that the actual statute/treaty must either name the mark(s) and/or contain an actual list of the marks, as that may exclude a lot of “marks” that have that function and protection.
Rebecca Tushnet
01:18:43
leaving keyboard; still on call
Greg Shatan
01:19:07
Rather defining what the word “mark” means.
Mary Wong
01:20:54
Please note that staff is not taking a position - we are just trying to ascertain the WG’s view. Listing or specifying marks will likely exclude Paul Tattersfield’s suggestion of Article 6ter, some Red Cross names, etc.
Greg Shatan
01:20:54
Can staff give examples of “marks” that would be excluded? I agree with Rebecca’s response on that topic, subject to understanding what marks would be disenfranchised.
Mary Wong
01:22:29
@Greg, just did :)
Greg Shatan
01:22:32
We are not in the business of second guessing trademark laws, as to what they consider in scope.
Mary Wong
01:22:51
Per @Claudio, treaties use words like “signs” or “emblems”, yes.
Greg Shatan
01:23:41
@Mary, I would not include those in the TMCH.
Paul Tattersfield
01:23:42
but 7.0 didn't extend the RPMs to all groups of introduced marks
Mary Wong
01:24:06
@Greg, understood - as noted, staff is not advocating any position, just trying to clarify.
Mary Wong
01:26:18
@Greg and all - as follow up, the staff comments above really went to our earlier point about “mark” vs “trademark”. The examples we gave could arguably be “marks” but perhaps not “trademarks”.
Paul Tattersfield
01:27:11
3.2.3.3 can not be tied to trademarks
Paul Tattersfield
01:27:35
3.2.3.4 does not map to 7.0
Paul Tattersfield
01:28:50
7. PROTECTION FOR MARKS IN CLEARINGHOUSE - The scope of registered marks that must be honored by registries in providing Trademarks Claims services is broader than those that must be honored by registries in Sunrise services.
Paul Tattersfield
01:30:40
7.1 and 7.2 map what is mandatory
Paul Tattersfield
01:31:48
which is why the working group should be looking at 7 rather than 3.2
Greg Shatan
01:31:54
Ancillary databases are not part of the TMCH.
Greg Shatan
01:32:30
Although they are service offerings of TMCH Inc.
Paul Tattersfield
01:34:20
Sorry I'm only in the Zoom room
John McElwaine
01:34:45
@Mary Thank you
Justine Chew
01:35:16
TMCH should have different categories of entries / recordals
Greg Shatan
01:36:10
Paris Convention uses the term “marks”
John McElwaine
01:36:10
Just because a mark is in the Trademark Clearinghouse (i.e., ,a mark under 3.2.4) I do not believe means that mark is entitled to a sunrise or claims notice.
Paul Tattersfield
01:37:31
thats why we need to look at 7, 7.1, & 7.2
Greg Shatan
01:38:33
And specifically says that emblems etc. can’t be registered as marks (subject to some grandfathering and caveats).
Paul Tattersfield
01:39:56
no it doesn't
Mary Wong
01:39:56
@Rebecca, that is not correct for 3.2.4.
Paul Tattersfield
01:40:26
@rebecca - no it doesn't RPMs flow from 7.0 not 3.2
Greg Shatan
01:40:52
I’m reading 6ter now Paul. Is there something I’m missing?
Paul Tattersfield
01:42:02
@greg 6ter marks are reflected at the USPTO in the 89 series
Julie Hedlund
01:43:00
No need to transcript what John said — Zoom will do it for us :-)
Mary Wong
01:43:19
On 6ter, the statute itself does not specify the state emblems, flags, names, armorial bearings etc. These are listed in the database maintained by WIPO (where a state or IGO elects to use the 6ter Communication Procedure).
Julie Hedlund
01:43:22
Suggest everyone should look at the zoom recording and transcript, which will be posted on the wiki.
Mary Wong
01:44:03
(oops I mean “treaty” (Paris Convention), not statute, obviously)
Paul McGrady
01:44:36
Hi all. Jumping in late
Greg Shatan
01:44:57
Paul, the 89 series are “non-registrations” intended to assist examiners in refusing applications that would violate 6ter by seeking to register an emblem, etc.
Greg Shatan
01:45:40
So much for quickly disposing of low hanging fruit...
Lori Schulman
01:46:26
Agree with Zak, there was an ernest effort here.
Paul Tattersfield
01:47:18
Greg, exactly non-registartions - marks protected by statue or treaty
Lori Schulman
01:50:44
Appreciate the attempt at bifucating the process via 3.
Ariel Liang
01:52:47
That was an auto conversion on the mailing list archive - the format got messed up
Scott Austin
01:52:53
The fouth number 1 means . . .
Greg Shatan
01:53:03
Paul — they are non-marks protected from being used as marks.
Lori Schulman
01:58:44
You can also challange names purchased during Sunrise. The presumption is with the TM owner in Sunrise.
Jay Chapman
01:59:02
+1 Rebecca
Michael R. Graham
01:59:09
@Rebecca -- Agree with explanation of divergent rights of Claims and Sunrise, and with considering different status of Design/Logo marks.
Scott Austin
02:01:02
@Rebecca Agree with dominant text in design mark accepted into TMCH.
Paul Tattersfield
02:01:18
Greg –yes "non-marks" and as such not trademarks but rather marks protected by statute and treaty.
Michael R. Graham
02:01:48
Problem with "dominant text" is Who and How to determine weight of textual element in relation to design or stylization?
Paul Tattersfield
02:02:47
Demonstration of use for notices would mitigate the concerns perhaps?
Mary Wong
02:04:16
If it’s helpful, the final requirement for Sunrise and Claims was also based on GAC advice to the Board.
Paul McGrady
02:04:17
Interesting conversation everyone. Thank you all!
Lori Schulman
02:04:26
In theory, if diverging claims and sunrise in 3 could be clearly explained and memorialized, it would be worth considering.
Lori Schulman
02:04:47
Bye. I will not be on next week's call. I am out of pocket until September 23rd.
Scott Austin
02:04:57
@ Michael Beats the alternative of penalizing rightsholder for creating words plus design that may produce a more distinctive mark than words only but those words are left vulnerable to DNS infringement by closing access to TMCH