Welcome to the Review of All Rights Protection Mechanisms, RPMs and all gTLD PDP Working Group call on Wednesday, 11 September 2019

Minor change to my SOI -- I will be serving as IPC representative on the Nominating Committee beginning in Montreal.

https://community.icann.org/download/attachments/117604906/Open%20TMCH%20Charter%20Questions%20-%2027%20Aug%202019.pdf?version=1&modificationDate=1567802672000&api=v2

We actually have heard from Deloitte

in 2017 we asked

and they said they accepted GIs under the "statute or treaty"

The TMCH Guidelines essentially set out Deloitte’s practice.

provision, excuse the shorthand

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."

(oops sorry for lousy formatting)

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.

And as Rebecca noted, they provided info on the “statute or treaty” category - including numbers.

See q 7, pp 5-6

@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.

6ter marks

To all: does anyone know who has the phone number ending in …513?

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).

@Rebecca: Have you sent your email. We haven’t seen it on the list, or maybe it was from earlier?

I don't think that's quite right - they are not always trademarks they are marks listed under the Paris Convention

3.2.4 relates to marks that ROs may have specific requirements for.

It is in my outbox and marked as sent--I can try again.

Thanks @Rebecca.

@Paul T, so what would you exclude?

they are not trademarks Justine

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?

they are are 6ter marks

@Paul: The current procedures don't seem to allow marks listed under the Paris Convention--can you say more about that?

@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.

https://www.trademark-clearinghouse.com/content/registered-trademarks

they are the marks that are protected by statute and treaty

For an idea of what they are telling people trying to use the system.

3.2.3.4 is very poor

Greg +1 on 3.2.3.4 but not 3.2.3.3

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.

i.e. all “trademarks” are likely “marks”, but not all marks are trademarks.

wine steward?

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?

Agreed, Phil. And I think that also answers Staff's question: as was just said, it is the *T*MCH not the MCH.

the whole of 3.2 is poorly drafted intemrs or mark/trademark

@Phil - that is what 3.2.4 is supposed to do (though perhaps somewhat obliquely phrased).

3.2 is different from 7.0. 7.0 is The scope of registered marks that must be honored by the RPMs

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.

this is so wrong they do have legal defintion in International law

At Claudio, excellent point on titles TM limitations for a single title but not a series title, copyright has the same limitation.

Agree generally that "mark" should be changed to "trademark" -- @Greg -- "Trademark" is generally defined as including "Service mark", etc.

Greg, that proposal goes back to GIs.

just mark

That's the rationale for including GIs currently--that they are protected by statute/treaty

I'm not sure that works given the statutes in existence--some do list GIs.

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.

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.

leaving keyboard; still on call

Rather defining what the word “mark” means.

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.

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.

@Greg, just did :)

We are not in the business of second guessing trademark laws, as to what they consider in scope.

Per @Claudio, treaties use words like “signs” or “emblems”, yes.

@Mary, I would not include those in the TMCH.

but 7.0 didn't extend the RPMs to all groups of introduced marks

@Greg, understood - as noted, staff is not advocating any position, just trying to clarify.

@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”.

3.2.3.3 can not be tied to trademarks

3.2.3.4 does not map to 7.0

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.

7.1 and 7.2 map what is mandatory

which is why the working group should be looking at 7 rather than 3.2

Ancillary databases are not part of the TMCH.

Although they are service offerings of TMCH Inc.

Sorry I'm only in the Zoom room

@Mary Thank you

TMCH should have different categories of entries / recordals

Paris Convention uses the term “marks”

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.

thats why we need to look at 7, 7.1, & 7.2

And specifically says that emblems etc. can’t be registered as marks (subject to some grandfathering and caveats).

no it doesn't

@Rebecca, that is not correct for 3.2.4.

@rebecca - no it doesn't RPMs flow from 7.0 not 3.2

I’m reading 6ter now Paul. Is there something I’m missing?

@greg 6ter marks are reflected at the USPTO in the 89 series

No need to transcript what John said — Zoom will do it for us :-)

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).

Suggest everyone should look at the zoom recording and transcript, which will be posted on the wiki.

(oops I mean “treaty” (Paris Convention), not statute, obviously)

Hi all. Jumping in late

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.

So much for quickly disposing of low hanging fruit...

Agree with Zak, there was an ernest effort here.

Greg, exactly non-registartions - marks protected by statue or treaty

Appreciate the attempt at bifucating the process via 3.

That was an auto conversion on the mailing list archive - the format got messed up

The fouth number 1 means . . .

Paul — they are non-marks protected from being used as marks.

You can also challange names purchased during Sunrise. The presumption is with the TM owner in Sunrise.

+1 Rebecca

@Rebecca -- Agree with explanation of divergent rights of Claims and Sunrise, and with considering different status of Design/Logo marks.

@Rebecca Agree with dominant text in design mark accepted into TMCH.

Greg –yes "non-marks" and as such not trademarks but rather marks protected by statute and treaty.

Problem with "dominant text" is Who and How to determine weight of textual element in relation to design or stylization?

Demonstration of use for notices would mitigate the concerns perhaps?

If it’s helpful, the final requirement for Sunrise and Claims was also based on GAC advice to the Board.

Interesting conversation everyone. Thank you all!

In theory, if diverging claims and sunrise in 3 could be clearly explained and memorialized, it would be worth considering.

Bye. I will not be on next week's call. I am out of pocket until September 23rd.

@ 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