Re: [Discussion-igo-rc] IGO Acronyms / 6ter
Thanks Jonathan – Could someone clarify, then, for this non-Lawyer - If I tried to apply for a trademark on “WHO” in parts of Canada, or New York , this would be rejected? If so, does it matter which industry or context I intend to use the mark (medical / health services, vs. another industry, say diesel engine repair)? I’m curious because there are several real-world examples of non-health uses for this string. Thank you— J. From: <discussion-igo-rc-bounces@icann.org> on behalf of "Jonathan.PASSARO@oecd.org" <Jonathan.PASSARO@oecd.org> Date: Thursday, June 1, 2017 at 7:33 To: "brucemelbit@gmail.com" <brucemelbit@gmail.com> Cc: "discussion-igo-rc@icann.org" <discussion-igo-rc@icann.org> Subject: [Discussion-igo-rc] IGO Acronyms / 6ter Dear Bruce, I had the opportunity to consult with my colleagues at other IGOs on the issue of national laws that protect IGO acronyms. As a basic point, we remain perplexed by the distinction being raised between laws which protect IGOs by disallowing the registration of their acronyms as trademarks and laws which protect IGO acronyms through other means. In any event, there are many examples of laws which protect IGO acronyms through means other than refusal of registration. We have already seen the examples of Switzerland and Australia. Section 9(1) of Canada’s Trade-marks Act <http://laws-lois.justice.gc.ca/eng/acts/t-13/page-2.html#h-3> is another interesting example because it protects both Red Cross and IGO identifiers, therefore providing a strong indication that IGO and Red Cross identifiers should receive similar treatment in the DNS. Some laws go even further; my colleagues at the UN pointed out a New York State law<http://codes.findlaw.com/ny/general-business-law/gbs-sect-141.html> that classifies as a misdemeanour any unauthorised use of the United Nations name or symbol. This of course in addition to the protections already afforded to IGOs by US federal law under the Lanham Act. I trust that this is enough to satisfy the enquiry. In any event, I look forward to hearing about next steps. Kind regards, Jon [ogo_mail_uk]<http://www.oecd.org/> Jonathan Passaro Legal Adviser Directorate for Legal Affairs 2, rue André Pascal - 75775 Paris Cedex 16 jonathan.passaro@oecd.org<mailto:jonathan.passaro@oecd.org> || www.oecd.org/legal<http://www.oecd.org/legal>
Dear James, I am not going to enter into speculation about the ways in which one particular State might analyse a specific case. I do think it is telling that every time we have this discussion everyone circles back to precisely the same string. The IGOs have consistently taken the position that we would stick to reasonable coexistence principles if ever there is a risk of a string using an IGO acronym that creates no risk of confusion. If the GNSO is interested in finding a way forward, perhaps it is time to try to find common ground and propose solutions, rather than trying to continually create the appearance of problems. Kind regards, Jon From: James M. Bladel [mailto:jbladel@godaddy.com] Sent: jeudi 1 juin 2017 19:25 To: PASSARO Jonathan, SGE/LEG; brucemelbit@gmail.com Cc: discussion-igo-rc@icann.org Subject: Re: [Discussion-igo-rc] IGO Acronyms / 6ter Thanks Jonathan – Could someone clarify, then, for this non-Lawyer - If I tried to apply for a trademark on “WHO” in parts of Canada, or New York , this would be rejected? If so, does it matter which industry or context I intend to use the mark (medical / health services, vs. another industry, say diesel engine repair)? I’m curious because there are several real-world examples of non-health uses for this string. Thank you— J. From: <discussion-igo-rc-bounces@icann.org<mailto:discussion-igo-rc-bounces@icann.org>> on behalf of "Jonathan.PASSARO@oecd.org<mailto:Jonathan.PASSARO@oecd.org>" <Jonathan.PASSARO@oecd.org<mailto:Jonathan.PASSARO@oecd.org>> Date: Thursday, June 1, 2017 at 7:33 To: "brucemelbit@gmail.com<mailto:brucemelbit@gmail.com>" <brucemelbit@gmail.com<mailto:brucemelbit@gmail.com>> Cc: "discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>" <discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>> Subject: [Discussion-igo-rc] IGO Acronyms / 6ter Dear Bruce, I had the opportunity to consult with my colleagues at other IGOs on the issue of national laws that protect IGO acronyms. As a basic point, we remain perplexed by the distinction being raised between laws which protect IGOs by disallowing the registration of their acronyms as trademarks and laws which protect IGO acronyms through other means. In any event, there are many examples of laws which protect IGO acronyms through means other than refusal of registration. We have already seen the examples of Switzerland and Australia. Section 9(1) of Canada’s Trade-marks Act <http://laws-lois.justice.gc.ca/eng/acts/t-13/page-2.html#h-3> is another interesting example because it protects both Red Cross and IGO identifiers, therefore providing a strong indication that IGO and Red Cross identifiers should receive similar treatment in the DNS. Some laws go even further; my colleagues at the UN pointed out a New York State law<http://codes.findlaw.com/ny/general-business-law/gbs-sect-141.html> that classifies as a misdemeanour any unauthorised use of the United Nations name or symbol. This of course in addition to the protections already afforded to IGOs by US federal law under the Lanham Act. I trust that this is enough to satisfy the enquiry. In any event, I look forward to hearing about next steps. Kind regards, Jon [ogo_mail_uk]<http://www.oecd.org/> Jonathan Passaro Legal Adviser Directorate for Legal Affairs 2, rue André Pascal - 75775 Paris Cedex 16 jonathan.passaro@oecd.org<mailto:jonathan.passaro@oecd.org> || www.oecd.org/legal<http://www.oecd.org/legal>
Both as a matter of substance, and procedure, I agree with Jon. Even if, for argument’s sake, a national law would take a more restrictive view, we have re-traced this ground on numerous occasions over the years. Again, to be clear, IGOs have not sought (curative) protection that disregards legitimate co-existence. To that end, broadly-speaking, the focus has been on addressing (fraudulent) misrepresentation. Brian From: discussion-igo-rc-bounces@icann.org [mailto:discussion-igo-rc-bounces@icann.org] On Behalf Of Jonathan.PASSARO@oecd.org Sent: Friday, June 02, 2017 4:45 PM To: jbladel@godaddy.com; brucemelbit@gmail.com Cc: discussion-igo-rc@icann.org Subject: Re: [Discussion-igo-rc] IGO Acronyms / 6ter Dear James, I am not going to enter into speculation about the ways in which one particular State might analyse a specific case. I do think it is telling that every time we have this discussion everyone circles back to precisely the same string. The IGOs have consistently taken the position that we would stick to reasonable coexistence principles if ever there is a risk of a string using an IGO acronym that creates no risk of confusion. If the GNSO is interested in finding a way forward, perhaps it is time to try to find common ground and propose solutions, rather than trying to continually create the appearance of problems. Kind regards, Jon From: James M. Bladel [mailto:jbladel@godaddy.com] Sent: jeudi 1 juin 2017 19:25 To: PASSARO Jonathan, SGE/LEG; brucemelbit@gmail.com<mailto:brucemelbit@gmail.com> Cc: discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org> Subject: Re: [Discussion-igo-rc] IGO Acronyms / 6ter Thanks Jonathan – Could someone clarify, then, for this non-Lawyer - If I tried to apply for a trademark on “WHO” in parts of Canada, or New York , this would be rejected? If so, does it matter which industry or context I intend to use the mark (medical / health services, vs. another industry, say diesel engine repair)? I’m curious because there are several real-world examples of non-health uses for this string. Thank you— J. From: <discussion-igo-rc-bounces@icann.org<mailto:discussion-igo-rc-bounces@icann.org>> on behalf of "Jonathan.PASSARO@oecd.org<mailto:Jonathan.PASSARO@oecd.org>" <Jonathan.PASSARO@oecd.org<mailto:Jonathan.PASSARO@oecd.org>> Date: Thursday, June 1, 2017 at 7:33 To: "brucemelbit@gmail.com<mailto:brucemelbit@gmail.com>" <brucemelbit@gmail.com<mailto:brucemelbit@gmail.com>> Cc: "discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>" <discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>> Subject: [Discussion-igo-rc] IGO Acronyms / 6ter Dear Bruce, I had the opportunity to consult with my colleagues at other IGOs on the issue of national laws that protect IGO acronyms. As a basic point, we remain perplexed by the distinction being raised between laws which protect IGOs by disallowing the registration of their acronyms as trademarks and laws which protect IGO acronyms through other means. In any event, there are many examples of laws which protect IGO acronyms through means other than refusal of registration. We have already seen the examples of Switzerland and Australia. Section 9(1) of Canada’s Trade-marks Act <http://laws-lois.justice.gc.ca/eng/acts/t-13/page-2.html#h-3> is another interesting example because it protects both Red Cross and IGO identifiers, therefore providing a strong indication that IGO and Red Cross identifiers should receive similar treatment in the DNS. Some laws go even further; my colleagues at the UN pointed out a New York State law<http://codes.findlaw.com/ny/general-business-law/gbs-sect-141.html> that classifies as a misdemeanour any unauthorised use of the United Nations name or symbol. This of course in addition to the protections already afforded to IGOs by US federal law under the Lanham Act. I trust that this is enough to satisfy the enquiry. In any event, I look forward to hearing about next steps. Kind regards, Jon [ogo_mail_uk]<http://www.oecd.org/> Jonathan Passaro Legal Adviser Directorate for Legal Affairs 2, rue André Pascal - 75775 Paris Cedex 16 jonathan.passaro@oecd.org<mailto:jonathan.passaro@oecd.org> || www.oecd.org/legal<http://www.oecd.org/legal>
participants (3)
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Beckham, Brian -
James M. Bladel -
Jonathan.PASSARO＠oecd.org