Claudio, Thank you for the archive link. Under Rebecca’s and your proposal, including these latest thoughts on section 3.2.4, which section do you feel a mark like UNHCR would be entered in under the proposal/recommendation? On 10/16/19, claudio di gangi <ipcdigangi@gmail.com> wrote:
All,
I am very happy that ICANN is transparent and transcribes is meetings, which is particularly essential in this fluid and complex environment.
Since I was involved in the ICANN committee that developed the proposal for the Trademark Clearinghouse, which was called the IP Clearinghouse, I have known from the start that the concept of allowing other forms of IP in the Clearinghouse was always part of the concept, because there was always broad agreement that the ICANN-imposed Mandatory RPMs, were the ceiling and not the floor.
The new gTLD Registry controls the allocation of all domain names within its TLD, and can therefore establish voluntary mechanisms, consistent with local laws, to protect consumers from confusion and harm from malicious actors.
Since the Clearinghouse database is just an administrative tool to support the implementation of these mechanisms, both mandatory and voluntary, there was never a reason to exclude certain forms of IP in the Clearinghouse for the sole purpose of supporting the voluntary RPMS that a specific Registry may adopt.
We have reached consensus on this point, in particular through the ancillary database concept, but have gotten snagged on the wording of particular provisions, including 3.2.3 and 3.2.4
Section 3.2.4 currently states: "Other marks that constitute intellectual property" - and this category: 3.2.4 - is NOT for the mandatory Sunrise or Claims period, but for voluntary registry-specific RPMs.
I located the transcript from the ICANN meeting when the Applicant Guidebook was essentially completed; it had reach the near final stage.
3.2.4 was specifically discussing during this meeting; the confusion with the language was identified (and it was even predicted that it was going to cause confusion) and ICANN staff and General Counsel agreed that 3.2.4 extended to other forms of IP beyond trademarks. In other words, we have been confused on this clause simply because of imprecise drafting of this provision.
Please see the transcript here: https://archive.icann.org/en/ meetings/singapore2011/bitcache/Trademark%20Clearinghouse%20Implementation%20Plan-vid=26005&disposition=attachment&op=download.txt
I am quoting the relevant section:
"J. Scott Evans: Another comment to Amy. Amy, I think that the guidebook's use of "other marks" confusing, and that needs to be changed to "other indicia," because we're already talking about marks in trademarks, and if you just make that one change, because I think the idea is there are other indicia other than trademarks that might be protected by the local registry, and we just need to make that clear. Because I think there's some confusion, well, if trademarks are here, what are other marks.
AMY STATHOS: Right. And with respect to the assignment issue, sometimes the database that has the assignment documents may be different than the actual database that has the actual registration, so looks like it's something that --
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So 3.2.4. was always intended to allow other forms of IP to be recorded in the main TMCH database for implementation of voluntary Registry-specific voluntary RPMs. I hope this closes the debate on 3.2.4. and here is my proposed modification to bring clarity to its meaning:
"3.2.4 Other Signs or Indicia that constitute intellectual property"
Best regards, Claudio