On the last point: It seems to me that the very essence of a Geographic Indicator is that the word element is no longer a generic or descriptive term.

Greg Shatan

On Wed, Dec 14, 2016 at 8:49 AM, URS - Uniform Rapid Suspension System - MFSD <urs@mfsd.it> wrote:

Just to add a comment to TMCH Charter questions, in particular to Q1 and Q4.

In case of a composite mark (word + device) does the validation/verification criteria (guidelines: trademarks accepted where the name of the trademark is reflected in predominant letters and is clearly separable or distinguishable from the device element) provides the TMCH with too wide discretion and subjectivity?

The issue of the protection and the protection’s extent for trademarks other than word marks should be clarified regarding all RPMs (TMCH, URS, PDDRP). 

While TMCH Guidelines contain provisions on “marks that does not exclusively consist of letters, words, numerals, special characters”, PDDRP (para. 9.2.1) and URS (URS Procedure para. 1.2.6.1) contains the wording “word mark”. With no PDDRP case so far the matter has not arose yet. However, in URS this led to interpretations (see sanofi.xin NAF FA1604001672049 http://www.adrforum.com/domaindecisions/1672049A.htm; flossy.shoes MFSD 7B10562D https://urs.mfsd.it/system_data/source_pdf/flossy.shoes.pdf).

Hence, I retain that clarity regarding the RPM’s and, in this particular case, TMCH’s field of protection (meant as inclusion in TMCH and participation in sunrise and claims services) is essential.

Concerning marks protected under statute or treaty, in particular Geographical Indications and Designations of Origin does the TMCH has a comprehensive list of treaties and statutes protecting GIs or of GIs protected under treaties and statutes? 

Finally how GIs, which are also registered trademarks, consisting in both word and device elements, where the word element might be regarded as generic or descriptive terms, are evaluated? 

Kind regards.

 

Ivett Paulovics

URS Domain Dispute Case Manager

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Il giorno 13 dic 2016, alle ore 18:32, Mary Wong <mary.wong@icann.org> ha scritto:

Dear all,

 

The proposed agenda for our next Working Group call, scheduled for 14 December at 1700 UTC, is as follows:

 

1.       Roll call (via Adobe Connect/phone bridge only) and updates to Statements of Interest

2.       Continue discussion of proposed TMCH Charter questions (see attached document)

3.       [If time permits] Review responses received to TMCH Data Gathering Sub Team list of questions sent to New gTLD Registry Operators (see attached)

4.       Next steps/next meeting

 

For Agenda Item #2: the attached document contains updates made by staff based on the Working Group’s discussions on the call last week. It also includes the co-chairs’ proposed compromise language on the “generic terms” issue (Category 3, Question 2) that was circulated to the mailing list earlier today, and a few additional suggestions made to the mailing list since the last call and as of today (13 December).

 

For Agenda Item #3: the attached document is a compilation of responses received so far from three registry operators (Public Interest Registry, Donuts, and Afnic) to the list of questions for New gTLD Registry Operators that was prepared by the TMCH Data Gathering Sub Team. Staff will continue to update the document as and when we receive any additional responses from other registries.

 

Thanks and cheers

Mary

 

 

Mary Wong

Senior Policy Director

Internet Corporation for Assigned Names and Numbers (ICANN)

Email: mary.wong@icann.org

Telephone: +1-603-5744889

 

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