Logo

Nathalie Peregrine's Personal Meeting Room - Shared screen with speaker view
Ariel Liang
35:06
https://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20190827/22dccdf1/OpenTMCHCharterQuestions-27Aug2019-0001.pdf
Susan Payne
36:19
design marks aren't accepted as "statute or treaty"
Mary Wong
37:35
The WG discussed (but didn’t conclude as to) whether the scope should be limited to “pure” text marks, text that’s part of a text+visual/graphic/design mark, stylized text marks etc.
Philip Corwin
38:59
@Susan--if I was mistaken I apologize. In any event we will ferret out current TMCH practice
David McAuley (Verisign)
39:10
please mute if not speaking
Paul McGrady
39:24
Zak - What was the case cited and what is its connection to the TMCH/AGB? Sorry that I didn't catch it when Kathy introduced it. Thanks!
Greg Shatan
40:16
Word mark does not mean plain text mark.
Maxim Alzoba
41:41
dacha
Michael R. Graham
42:42
If we accept that Design + and Stylized trademarks are outside the scope of TMCH registration under the AGB, can we then open discussion of whether and how such trademarks should be included in the scope? How can we do so?
Greg Shatan
42:56
There may be an edge case issue here, but this feels like an attempt to disqualify huge portions of the trademark world.
Paul McGrady
43:00
Zak - can you clarify? Kathy says you "handled"the case. Were you counsel for plaintiff, defendant, or were you the judge/panelist?
Martin Silva
43:08
100% exactly right
Martin Silva
43:22
And that’s what I0ve been saying EVERYTIME this thing came up
Greg Shatan
43:28
Michael, I would say that we cannot accept that, because it’s incorrect.
Martin Silva
43:41
Delloite has to asses the real right, it cannot create one
Marie Pattullo
43:53
A word being dictionary word in one language doesn't prevent it from being a TM in another, and for another class/service.
Martin Silva
44:10
I have a logo with a word registered, with no text claimed, Delotte cannot exact and read that text and grant me a sunrise on the string
Martin Silva
44:23
The relation right-tech breaks
Greg Shatan
44:23
@Zak: Strongly disagree.
Greg Shatan
44:59
@Martin, what do you mean “no text claimed”?
Paul McGrady
45:01
Thanks!
Martin Silva
45:30
the argentina case is valid for any continental law system
Martin Silva
45:37
Whole Latin America and a good part of europe
Paul McGrady
45:41
@Zak - thanks!
Martin Silva
45:44
is not a crazy ass example
Kathy Kleiman
45:52
The word in Zak's case was "cabanas"
Kathy Kleiman
45:59
within a stylized mark.
Greg Shatan
46:35
Can we have links to the actual facts please.
Paul McGrady
46:42
@Staff, the document looks really small on my Zoom screen. Is there a way for me to enlarge it?
Kathy Kleiman
46:48
Case D2012-1064
Kathy Kleiman
46:54
WIPO
Ariel Liang
47:09
@Paul - you can open the file using this link: https://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20190827/22dccdf1/OpenTMCHCharterQuestions-27Aug2019-0001.pdf
Greg Shatan
47:15
I may not be able to go on audio at this point. Multitasking....
Paul McGrady
47:46
@Zac, thanks for the clarifications. Trying to capture it all in my head while listening, looking at chat. trying to read the document, and thinking. Never was good at multi-tasking!
Andrea Glandon
47:47
@Paul, go to your tool bar, view options
Susan Payne
47:47
hand
Mary Wong
50:11
@Susan, the staff understanding from the Council leadership is that they were answering the “baseline” question (meaning what is the starting point - STI (2009) or AGB (2012)?). They did not mean to exclude additional implementation steps.
Georges Nahitchevansky
51:33
What about situations where there is a text portion with a design that is protected in one country but perhaps, like in Argentina, might not have protection. Should't the resolution be that the mark could be accepted in the TMCH if if is protected in the country from where th eregistration issues
Brian Beckham
52:01
The reference to “words only within the context of their design or logo” in the adopted rules is illustrative of an entirely reasonable inference that the intent was to exclude from the TMCH only marks where protection at the level of a national registration was only granted for the mark as an inseparable whole.
Greg Shatan
52:07
I will let you know when I can come off mute.
Greg Shatan
52:15
I see Mary’s hand up.
julie.hedlund
52:15
hand up from Mary
Greg Shatan
53:54
I am on call that was supposed to end at 1, and which I can’t leave.
Paul McGrady
54:07
@Phil - I have to drop off. My proposal, submitted before I became Council liaison, is pretty straightforward and while I am in my role as liaison, I don't feel comfortable advocating for it. Perhaps another WG member will take up the baton.
Rebecca Tushnet
54:15
Of course we know that Deloitte isn't following Brian's interpretation, from the questions we asked. They are just extracting text if they see it in the registered mark.
Paul Tattersfield
01:00:54
Greg +1
Paul Tattersfield
01:03:11
6ter narks should be included
Martin Silva
01:04:07
For me it is not that confusing, the TMCH manager HAS to verify the extent of the right someone is claiming, they cannot give further protection than the right gives, nor can the create what is not there.
Greg Shatan
01:04:24
It says “marks protected by statute or treaty” not “words protected by statute or treaty.”
Paul Tattersfield
01:04:38
I don't think that's quite right 6ter marks are different from GI
Mary Wong
01:05:12
@Greg, that seems to indicate (haha) that the thing must, first of all, be a “mark” (though not necessarily a “trademark”).
Susan Payne
01:05:54
@Kathy I think maybe you mis-spoke. Acceptance into TMCH of marks protected by T/S is not a violation, that is what the AGB says. But many consider that the acceptance of GIs under this T/S heading is incorrect.
John McElwaine
01:06:13
I agree with Kathy's memory on the Ancillary Databases
Griffin Barnett
01:06:32
Apologies for joining late, I had another meeting that ran long
Rebecca Tushnet
01:06:57
My question is whether we have GI representatives who want into the TMCH, affirmatively--TM stakeholders may not be best placed to answer this (and I don't know if civil society/public interest groups have agreement on it)
Maxim Alzoba
01:07:55
bye all have to drop
Griffin Barnett
01:08:47
But if the point is preventing consumer confusion or deception, and consumers associate the word portion of a composite mark with the trademark owner, wouldn't it make sense to allow recordation of that text component in the TMCH at least for purposes of Claims Notice?
Brian Beckham
01:09:12
@Rebecca, previously, a representative from oriGIn was in the WG
Kathy Kleiman
01:10:04
@Susan, I think I said it was a violation of the "unanimous consent" of the GNSO and other representatives in the Special Trademarks Initiatives Review Team (chartered by the GNSO much liked an expedited PDP) that created the name "Trademark Clearinghouse" and limited it to "only trademarks."
Rebecca Tushnet
01:10:18
@Griffin: No, because of the overinclusiveness (as clearly demonstrated by the data we have about what's in there)
Martin Silva
01:10:26
it is a right’s protection mechanism, it protects consumer by protecting trademarks
Kathy Kleiman
01:10:29
@Susan, STI is also the source of the "ancillary database" concept that Phil just mentioned...
Mary Wong
01:10:29
Presumably the WG faces 3 questions: (1) what is the correct scope of the current rule; (2) should this be continued/limited/expanded for the next round: and (3) if expanded, should it include GIs (qua GIs), AoCs etc.
Martin Silva
01:10:39
The TMCH cannot create pribilidges beyond trademarks on the excuse of consumers
Brian King
01:10:43
+1 Griffin
Susan Payne
01:10:47
@Kathy - yes, but the acceptance of GIs, not the acceptabnce of marks protected by Treaty/Statute per se
Mary Wong
01:10:54
For (2) & (3), the 2017 poll seemed to indicate little support for expansion to GIs qua GIs.
David McAuley (Verisign)
01:11:34
nice summary Mary, thanks.
Kathy Kleiman
01:12:51
@Susan: aren't GIs coming into the TMCH under the cover of "marks protected by statute or treaty"?
Greg Shatan
01:13:33
That’s my understanding, Kathy, but I would call it an error, rather than jumping to violation.
Kathy Kleiman
01:14:25
Ah, I see -- fair enough.
Ariel Liang
01:14:41
Staff hand up
Susan Payne
01:16:40
@Kathy to go back to what I previously said - I think maybe you mis-spoke. Acceptance into TMCH of "marks protected by T/S" is within the scope of the AGB. You said that this was a "volation", which it is not. But, I think what you really meant to refer to as a violation was the treatment of GIs as "marks protected by Treaty/Statute". I'm not expressing agreement or disagreement with that position, I merely wanted to correct what you said - or to understand if that actually was what you meant
Kathy Kleiman
01:18:44
@Susan, I think I said it was a violation of the "unanimous consent" of the GNSO and other representatives in the Special Trademarks Initiatives Review Team (chartered by the GNSO much liked an expedited PDP) that created the name "Trademark Clearinghouse" and limited it to "only trademarks."
Paul Tattersfield
01:18:45
Could send out a notice to the TM holder only
Susan Payne
01:19:56
@Kathy - what is?
Greg Shatan
01:20:08
@Kathy, what is “it” in your statement to Susan (“I think I said it”)?
Kathy Kleiman
01:20:13
@Susan - I'd like to follow the discussion please
Martin Silva
01:20:19
:-)
Susan Payne
01:20:44
and to be clear, the instructions to staff were to put the STI recommendations out to public comment and work on implementation based on that. So the STI recommendations are not the last word, as Council confirmed
Michael R. Graham
01:21:54
@Rebecca -- Trademark + 50 does not address the issue my proposal to Q10 would and is not generally useful for trademark owners.
Ariel Liang
01:25:19
Yes
Kathy Kleiman
01:27:11
I like the idea of "closing the gaming gap." Amazing that Greg drafted this proposal 2 yaers ago
Kathy Kleiman
01:27:24
before we say many of the gaming examples
Kathy Kleiman
01:27:28
saw
Greg Shatan
01:27:38
I aim to amaze.
Kathy Kleiman
01:27:57
:-)
Greg Shatan
01:28:27
I have to drop.
Rebecca Tushnet
01:28:47
I'm ok with being outvoted
Julie Hedlund
01:29:05
11 No 2 yes
Justine Chew
01:29:09
I have to leave the call too. So no for me.
Kathy Kleiman
01:29:36
Have a good Labor Day Weekend - to all who are celebrating!
Greg Shatan
01:29:39
I wish I could say yes, but I have to say no. :-(
Cyntia King
01:31:05
Bye!
Steve Levy
01:31:05
Thanks, Phil
David McAuley (Verisign)
01:31:10
thanks Phil and all
Julie Hedlund
01:31:12
Nothing further
Zak Muscovitch
01:31:14
Thanks Phil
Mary Wong
01:31:15
Nothing from staff, thanks Phil
Paul Tattersfield
01:31:31
thnaks Phil, all bye