I’ve spent the afternoon back reading the threads here and I have to hold my hands up and admit I’m confused. We all know that ICANN isn’t a legislative body, and we all know that it can’t (and I very much doubt it would want to!) make law. Various laws in the various jurisdictions around the world include various TM laws, which in turn include rules and practises for how and why TMs are granted. That’s what the TMCH is - a repository of TMs that have been legally granted. No?
And unless and until a TM lapses, or is cancelled, it’s as much a legal property right as any other. It can’t be OK for an independent administrative repository of TMs to decide to ignore some legal property rights, surely? If the TMCH were just a private list with no function then we’d be on different ground, but given that it’s the gatekeeper for accessing certain RPMs I can’t see under what basis this administrative repository could be allowed to choose which property rights are allowed through the gate and which aren’t.
I’m sorry if this is naïve, but I honestly don’t understand how the TMCH can be the court of appeal for the legality of TM rights. Isn’t that why we have actual courts? And holding it out to be some form of appeal body is surely only going to confuse non-TM people, like most registrants, as to its “powers”.
Following that, and John’s questions, what are we trying to do? Limit any DN containing a TM to uses that the TM has in the offline world? But not limiting any other word to uses it may have offline? So isn’t that actually discriminating against words that are in TMs against words that aren’t - dictionary, arbitrary, proper or just plain made up? What are we actually trying to do?
I’m sorry for the TLDR post and sorry also for my confusion. I plead fuzziness of brain brought on by sociable Belgian cold viruses.
Thanks
Marie
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Marie Pattullo
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-----Original Message-----
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine
Sent: mardi 13 décembre 2016 16:06
To: Phil Corwin; J. Scott Evans; Paul Keating; Jonathan Agmon; Beckham, Brian; George Kirikos; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Phil,
Thanks for this. I'm just seeking some clarification: Does this question seek whether the TMCH should be limited in its application to Trademark Claims Notices and Sunrise Processes in which the domain name being registered is going to be used in a manner that relates to the goods and services contained in the registration, if the registration consists of a word found in a dictionary?
Kind regards,
John
-----Original Message-----
Sent: Tuesday, December 13, 2016 8:58 AM
To: J. Scott Evans; Paul Keating; Jonathan Agmon; Beckham, Brian; George Kirikos;
gnso-rpm-wg@icann.orgSubject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Good day to all. I have been tied up this morning on the call of the WS2 Jurisdiction subgroup.
The proposed compromise language agreed upon by the co-chairs and suggested for your consideration as a path forward so we can get the questions out and get on to the work of reviewing and understanding the answers is as follows:
Should the scope of the TMCH be limited to apply only to the categories of goods and services in which the dictionary term(s) within a trademark are protected? If so, how? In responding to this question, you should note that the original submitters of the related charter questions seem to be been particularly concerned about "generic terms" representing the common or class name for the goods and services.
We hope this proposed formulation will prove acceptable to members of this WG. Thanks for your consideration.
Best to all, Philip
Philip S. Corwin, Founding Principal
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-----Original Message-----
Sent: Tuesday, December 13, 2016 7:24 AM
To: Paul Keating; Jonathan Agmon; Beckham, Brian; George Kirikos;
gnso-rpm-wg@icann.orgSubject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Importance: High
Phil?
J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe
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On 12/13/16, 4:18 AM, "Paul Keating" <
Paul@law.es> wrote:
>Please circulate it prior to the call.
>
>On 12/13/16, 1:10 PM, "J. Scott Evans" <
jsevans@adobe.com> wrote:
>
>>The Co-Chairs have a proposed compromise revision drafted by Phil that
>>we will propose to the group.
>>
>>J. Scott