Hello everyone – staff has reviewed much of the historical documentation around the New gTLD Program (e.g. the various versions of the Applicant Guidebook) to try to trace the evolution
of the category of “mark protected by statute or treaty” and the inclusion of GIs within that category.
As far as we can tell, the first appearance of the “mark protected by statute or treaty” category was in AGB version 4, dating from May 2010:
https://archive.icann.org/en/topics/new-gtlds/trademark-clearinghouse-redline-28may10-en.pdf. Previous versions of the AGB had not contained references to this category of marks, having been largely focused on the question of what to do with the STI recommendation
concerning marks from jurisdictions that do not conduct substantive review (as well as aspects of the TM-PDDRP and the URS). Further, the February 2010 staff summary and analysis of public comments received on the December 2009 STI report had noted that the
question of protection of special statutory trademarks had not been explored by the STI and thus merited further consideration:
https://archive.icann.org/en/topics/new-gtlds/summary-analysis-special-trademarks-issues-report-15feb10-en.pdf.
Subsequently, the May 2010 staff proposal for AVB version 4, based on public comments received concerning AGB version 3 (https://archive.icann.org/en/topics/new-gtlds/trademark-clearinghouse-comments-and-summary-28may10-en.pdf),
noted that:
“Which marks to include and to what extent unregistered marks should be included in the [TMCH] has been the subject of numerous comments. Since the role of the
Clearinghouse is to house data pertaining to trademarks, an attempt to include all trademarks is what has been reflected in the definitions to date. There are marks that are not registered that have been afforded protection by law (i.e., court rulings, statute
or treaty). On balance allowing an unregistered mark that has been adjudicated as a trademark (or as being afforded the same recognition as a registered trademark) meets the requirement of data verification without requiring a registration and does reach those
marks that have been found to serve as a trademark regardless of the registration. Indeed, in response to comment, this version of the Clearinghouse proposal has added inclusion for those marks that are protected by statute or treaty.”
A quick look at the public comments received to AGB version 4 revealed no opposition to the inclusion of the “mark protected by statute or treaty” category, save for one comment that sought
clarification on the type of treaties this was meant to include. This category of marks has been retained in all subsequent versions of the AGB. While we have not had the opportunity to review all comments received on all versions of the AGB, the IRT report
or the STI recommendations, we note that the IRT, without specifying the exact types of marks to be included in the TMCh, had stated in a footnote to their report that:
“Most pre-launch RPMs have focused on registered trademark rights of national or multi-national effect. Whilst it is expected that the IP Clearinghouse will
predominantly feature data on such rights, some registry operators may opt to include as eligible for their pre-launch RPM other types of rights, such as unregistered trademarks, company names, trading names, designations of origin, geographical names, family
and personal names, etc. Therefore, the IRT recommends that the IP Clearinghouse should be structured so that it can accommodate a panoply of such rights even if they are applicable to only a small number of registries.”
The STI did not expressly address the question of marks protected by statute or treaty, or GIs, in their report, although it recommended that the TMCH should be
“required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review)” and that
“no common law rights should be included in the TC Database, except for court validated common law marks”.
We hope the above context is helpful. We note further that these historical documents, in particular the staff summary of public comments to various iterations of the AGB, may be of some
assistance to the Working Group in your deliberations over other topics as well - e.g. design/text/word marks, identical match etc. – as these issues were also debated as part of the community consultations over the AGB. We will be happy to provide additional
links and information if that is deemed appropriate.
Cheers
Mary
From:
<gnso-rpm-wg-bounces@icann.org> on behalf of Greg Shatan <gregshatanipc@gmail.com>
Date: Monday, April 24, 2017 at 23:40
To: Jonathan Agmon <jonathan.agmon@ip-law.legal>
Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] Recommendation II for Question #8
I don't think people are saying that GI's should be excluded because they are a unique form of trademarks.
I think they are saying that GI's should be excluded because they are not trademarks at all. (Putting aside those GI's that are also the subject of trademark registrations).
That is not to say that GI's aren't intellectual property. But so are a host of other things -- trade names, fictitious names, copyrights, design rights, rights of publicity, etc.
There are two questions getting entangled here:
-
First, what does "mark protected by statute or treaty" mean?
-
An evidence-based approach to this question should be pursued, looking at the "legislative history" and determining how this got into the TMCH.
-
Personally, it's been my understanding that "marks" refers to those things protected by trademark laws.
-
I think it's likely that the TMCH made an error in including GIs in this category, and doubled down on it when they gave GIs as the example for this category.
-
However, we should get to the facts of what happened then and what was intended the first time those words were put down, and what was the predicate for doing so?
-
The best way to convince anyone what this was meant to cover when it was put into practice is to discover it through research, not try to persuade by opinion.
-
If the facts show that this was meant to cover GIs, then we have a whole different ballgame. But my recollection of what was going on at the time was that this was meant to cover trademarks that were not registered in national
or regional (e.g., EU) trademark databases, but rather were granted trademark protection by a specific statute or treaty (e.g., BIG BROTHERS was originally protected in the US by an Act of Congress, decades before the first trademark registration was acquired).
-
Second, should GI's be entitled to some form of protection, such as Sunrises, Claims and "curative rights" akin to the UDRP and/or URS?
-
This can be advocated for without trying to jam GIs into the "mark" category.
-
Any right that puts TMs and GIs on an equal footing is troublesome, wherever there is a head-to-head issue. Following the INTA "first in time, first in right" approach based on the date legal rights accrued would require a
priority-based system, which would probably require some form of human intervention. This then leads to the question of "why not have priority between trademarks?" This would be a huge change from the current "first to register the domain" system (in everything
but end-date sunrises, where all applicants have an equal opportunity, so it's still not priority based. This would have immense consequences and change every RPM and undo 17 years of practice and precedent.
-
Saying that TMs always trump GIs is tempting, but is there a basis in law?
-
Strategically, we would need a compelling way to avoid bootstrapping to give rights to "geographical terms" (i.e., every term in Google Earth or in Atlas (remember those?)). We are not going to get ready recognition by Argentina,
Brazil and Peru that "Champagne" deserves rights protection but "Amazon" doesn't.
-
Deloitte is allowed to create their own databases of anything, just as long as they are kept separated. .wine/.vin could have had an "appellation controlee" database created by Deloitte and then run a vintage pre-launch program.
But going from there to an ICANN-created policy is a big leap.
-
This can be extrapolated to any type of IP that could be made into a domain name, but that takes us back to the idea of an IPCH, which is a much bigger issue than whether GIs are marks. There's nothing wrong with a big proposal,
but that proposal wasn't made. One could try to bring it to the table now, but not by saying that GIs are trademarks or that "marks protected by statute or treaty" was meant to include GIs.
Greg
Greg Shatan
C: 917-816-6428
S: gsshatan
Phone-to-Skype: 646-845-9428
gregshatanipc@gmail.com
On Mon, Apr 24, 2017 at 11:05 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
I actually think that GIs have a rather consistent treatment and if not treatment then certainly international recognition and protection. In many countries registration is available either in the national trademark registry or a side registry which is most often a part of the trademark office.
WIPO Lex specifies over 1000 piece of national legislation relating to GIs around 120 countries.
My concern is that when we say GI’s should be excluded because they are a unique form of trademarks, this can lead to the exclusion of other types of trademarks, such as collective marks or certification marks.
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
T SG +65 6532 2577
T US +1 212 999 6180
T IL +972 9 950 7000
F IL +972 9 950 5500
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg
Sent: Monday, April 24, 2017 6:38 PM
To: Massimo <Massimo@origin-gi.com>; Kathy Kleiman <kathy@kathykleiman.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Recommendation II for Question #8
Team:
My concern with GI’s is, unlike trademarks, there is no consistent treatment of them in the international arena. In contrast, trademarks are very clearly recognized and treated similarly. Hence, the reason the language is “a mark” protected by statute or treaty.
J. Scott
J. Scott Evans
408.536.5336 (tel)
345 Park Avenue, Mail Stop W11-544
Director, Associate General Counsel
408.709.6162 (cell)
San Jose, CA, 95110, USA
Adobe. Make It an Experience.
From: <gnso-rpm-wg-bounces@icann.org> on behalf of Massimo <Massimo@origin-gi.com>
Date: Monday, April 24, 2017 at 8:59 AM
To: Kathy Kleiman <kathy@kathykleiman.com>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] Recommendation II for Question #8
Dear Kathy, dear all,
I would like all of you to look at question 8 from a different perspective.
The acceptance of “marks protected by statute or treaty” might rather have been an attempt to increase the legal certainty of the gTLDs system. The Working Group would lose an opportunity if it refuses to analyze the issue altogether and simply state that the TMCH is intended only for trademarks and any expansion would deeply harm the Multistakeholder Process.
I think the crucial issue is why the TMCH guidelines explicitly mention Geographical Indications (GIs). One of answer might be that GIs represent today a relevant legal and commercial reality worldwide:
1. GIs are recognized in the WTO TRIPs Agreement (art.22.1);
2. A large majority of countries provide today specific legislation on GIs separated from trademarks: EU, Switzerland: https://www.admin.ch/opc/fr/classified-compilation/19970229/index.html[na01.safelinks.protection.outlook.com] , Brazil: http://www.wipo.int/wipolex/en/text.jsp?file_id=125397[na01.safelinks.protection.outlook.com] (Title IV), Chile: http://www.wipo.int/wipolex/en/details.jsp?id=5325[na01.safelinks.protection.outlook.com], China: http://www.wipo.int/wipolex/en/details.jsp?id=6348[na01.safelinks.protection.outlook.com], OAPI (16 countries in Western and Central Africa): http://www.wipo.int/wipolex/en/other_treaties/text.jsp?file_id=181151[na01.safelinks.protection.outlook.com], Colombia: http://www.wipo.int/wipolex/es/details.jsp?id=9451[na01.safelinks.protection.outlook.com] , Georgia: http://www.wipo.int/wipolex/en/text.jsp?file_id=127543[na01.safelinks.protection.outlook.com] , Indonesia : http://www.wipo.int/wipolex/en/text.jsp?file_id=182324[na01.safelinks.protection.outlook.com] , India (see attached), Japan: http://www.maff.go.jp/e/policies/intel/gi_act/[na01.safelinks.protection.outlook.com], Morocco: http://www.ompic.org.ma/fr/content/indications-geographiques-et-appellations-dorigine[na01.safelinks.protection.outlook.com] ; Mexico: http://www.wipo.int/wipolex/en/details.jsp?id=11711[na01.safelinks.protection.outlook.com] (Titulo V), Malaysia: http://www.wipo.int/wipolex/en/text.jsp?file_id=128846[na01.safelinks.protection.outlook.com], New Zealand: http://www.legislation.govt.nz/bill/government/2015/0086/latest/DLM6641912.html?search=ta_bill_G_bc%40bcur_an%40bn%40rn_25_a&p=1[na01.safelinks.protection.outlook.com] , Russia: http://www.wipo.int/wipolex/en/details.jsp?id=12785[na01.safelinks.protection.outlook.com] , Vietnam: http://www.wipo.int/wipolex/en/text.jsp?file_id=131515[na01.safelinks.protection.outlook.com], … just to name a few.
3. As a result, there are today some 8.000 GIs recognized in the world (oriGIn is preparing an online compilation on this that will be published later in September). Such GIs benefit from legal titles arising from transparent registration processes (often managed by national or regional trademark offices), that can be easily verified.
Not taking into account such a legal and commercial reality in the domain names environment would be unreasonable.
I think the Working Group should look at the question I raise as well as the other information provided on GIs, and rather work on making sure the TMCH guidelines concerning the marks protected under statues and treaties are formulated in a way that makes reference exclusively to IP titles that can easily verifiable (this is the case for GIs). In this way, we will contribute to increase the legal certainty and predictability of the domain names system.
Best,
Massimo
Mr Massimo Vittori
Managing Director – oriGIn
1, rue de Varembé 1202, Geneva, Switzerland
Telephone: +41 (0) 22 755 07 32
E-mail: massimo@origin-gi.com
www.origin-gi.com[na01.safelinks.protection.outlook.com]
[na01.safelinks.protection.outlook.com]
[na01.safelinks.protection.outlook.com]
[na01.safelinks.protection.outlook.com]
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From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman
Sent: 20 April 2017 02:35
To: gnso-rpm-wg@icann.org
Subject: [gnso-rpm-wg] Recommendation II for Question #8
All,
Question #8 has been very much before us in discussions online, questions to Deloitte, and at meetings. I greatly respect Paul McGrady's early submission, and of course, support it. But I think that the requirements of this process require a little more foundation and discussion of harm, and I see a slightly different scope of concern. Accordingly, this longer discussion is set out below (and attached as a PDF). This is a separate recommendation from that of Paul's, hence its title "Recommendation II for Question #8."
As before, I submit this recommendation in my capacity as a member of the Working Group, and not as a co-chair.
Tx you for your review,
Kathy
--------------------------------------------------------------------------------------------------------------------------------------Recommendation for Question #8: Marks Protected by Statue or Treaty
It is with considerable interest that the RPM WG has evaluated the question of Deloitte accepting into the TMCH database marks protected by statute or treaty. In our investigation we have found:
1. The wording that creates this subcategory of protected marks does not come from the recommendations adopted by the GNSO Council or ICANN Board;
2. Everyone who sees these rules interprets them differently:
o Some think it is solely to protect those marks expressly set out in treaty, e.g., “Olympics”
o Others think it is to protect categories of organizations, such as International Governmental Organizations; and
o Still others think it is to protect such as geographical indications.
3. Deloitte will not explain how they interpret this section or what they are accepted into the TMCH database.
4. Acceptance of “marks protected by statute or treaty” appears to be a direct violation of the original intent and instructions of the rules adopted by the GNSO Council and ICANN Board.
Specifically, Item 1.1 of the TMCH rules adopted by the Council and Board provides for only acceptance of trademarks:
“The name of the rights protection mechanism should be the ‘Trademark Clearinghouse’ to signify that only trademarks are to be included in the database.”
Section 1. Name; 1.1 Trademark Clearinghouse; https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf[na01.safelinks.protection.outlook.com]
Second, by these adopted rules, anything that is not a trademark cannot be entered into the main TMCH Database, but may be segregated into another “ancillary database”:
“The TC Service Provider should be required to maintain a separate TC database, and may not store any data in the TC database related to its provision of ancillary services, if any.”
Section 2, Functionality of the Trademark Clearinghouse, 2.3 Segregation of the Trademark Clearinghouse Database.
Finally, the limitations above were passed by “Unanimous consent” of all Stakeholder Groups in the STI, and then adopted unanimously by the GNSO Council and ICANN Board.
Accordingly, the rules adopted by the GNSO Council and ICANN Board are very clear: the Trademark Clearinghouse is for Trademarks.
Origin of Problem:
The Applicant Guidebook appears to be the source of this odd expansion of subcategories for “marks” being accepted into the Trademark Clearinghouse database. In the Applicant Guidebook, Module 5, Trademark Clearinghouse Section, we find:
Section 3, Criteria for Trademark Inclusion in Clearinghouse:
“3.2 The standards for inclusion in the Clearinghouse are:
3.2.1 [Skipped]
3.2.2 [Skipped]
3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion.
3.2.4 Other marks that constitute intellectual property.”
https://newgtlds.icann.org/en/applicants/agb[na01.safelinks.protection.outlook.com]
It is not clear that 3.2.3 is only for trademarks (and clearly Deloitte does not interpret it so) or what 3.2.4 means or includes. In all events, neither of two subcategories were discussed or approved by the GNSO Council and ICANN Board.
Further, under the express rules adopted, any results of 3.2.3 and 3.2.4 that are not trademarks would have to be entered into a different database, not the main Trademark Clearinghouse database used for Community-Approved RPMs (per STI Recommendations, Section 2, Functionality of the Trademark Clearinghouse, 2.3 Segregation of the Trademark Clearinghouse Database above).
Overall, we know that at least 75 terms have been approved by Deloitte under 3.2.3 without regard to their trademark status and are currently in the TMCH Database.
Harm:
The TMCH Database is growing beyond the rules established and set by the GNSO Council, ICANN Board or ICANN Community. This deeply harms the Multistakeholder Process. As discussed extensively on the RPM PDP WG list, the original GNSO committees worked long and hard and carefully balanced the rights of those seeking trademark protection and those seeking to register domain names in New gTLDs. Allowing into the Trademark Clearinghouse new types of entries is a decision for this Working Group, but not for Deloitte or ICANN Staff.
Second, these subsections allow a level of interpretation and discretion never intended for the Trademark Clearinghouse Provider. Through Section 3.2.3 and 3.2.4, Deloitte is engaged in a new function of discretion, interpretation and choice – one without rules, guidance and oversight by ICANN and ICANN Community. Ultimately, we don’t even understand what is being accepted (and Deloitte would not tell us).
Third, these subsections (3.2.2 and 3.2.4) harm all of those seeking to register domain names, in good faith for their new groups, companies, goods, services, hobbies, speech, research and education. Absent a trademark right of precedence, all other domain names should be open and available to the world to register. That was the promise of the New gTLD Program.
Action:
The WG has an oversight obligation to ensure the rules adopted by the Community are followed. We can ensure that subcategories 3.2.3 and 3.2.4 are allowed only to the extent they are registered trademarks. Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and the ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may review and accept these subcategories of marks.
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