Simplified language to bring together individual TMCH #4 & #5 proposals
Hi All, Here is simplified language which brings TMCH #4 & TMCH #5 together after discussions with Rebecca and Claudio. The thinking is: 3.2.1, 3.2.2 & 3.2.3 flow to 7.1 claims & 7.2 sunrise 3.2.4 flows to any ancillary databases 3.2.5 qualifies 3.2.1 The new 3.2.6 qualifies 3.2.3 in a way that makes it evident that GIs & AOs are implicitly accepted in 3.2.4. Best regards, Paul 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks 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. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin] Notes: This proposal seeks to address the various public comments seeking clarification and tighter wording, by only introducing a small easily understandable change to the existing text. It also recognizes the separate legal status and the global importance of GIs and will help GI’s reside in a shared ancillary database to support voluntary RPMs like the “Limited Registration Period” LRP voluntary RPM for .dot Paris. If the mark holders wished it would even be possible to publish a list of GIs whilst the main trademark database remains confidential.
As promised here is a little further detail on proposals #4# & #5: The Trademark Clearinghouse is a central repository for marks. If it was to be a central repository for IP rights it would have been called the IP Clearinghouse. The purpose of a mark is to distinguish the commercial origin of goods or services not to distinguish those goods according to their geographical origin. In contrast to common law based systems under civil law a sign does not become a ‘mark’ until it is registered as a mark. In #5 Claudio was clear “Geographical Indications or Appellations of Origin shall not be eligible for … Sunrise or Claims …unless… also independently registered as trademarks” and in #4 Rebecca chose to underscore “Geographic indications (that are not also protected as trademarks) are not trademarks” There is clearly great utility to providing a central repository for geographical indications. Therefore the question before the working group should be: Can we reach consensus on including geographical indications in a shared ancillary database which does not flow to either Sunrise or Claims for the final report? *Improved simplified language to bring together individual TMCH #4 & #5 proposals together * 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks 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 and indications that constitute intellectual property. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin] *Background research *The TMCH rules are defined in an appendix of the AGB. Geographical indications are not mentioned anywhere in the AGB. Deloitte were tasked with drawing up the TMCH Guidelines. The TMCH Guidelines 1.0 February 2013 introduces the first single mention of geographical indications in 2.4.1 *2.4.1 For marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to: geographical indications and designations of origin* Section 2.4 is poorly drafted and needs work: for example in 2.4.1 the wording “court-validated marks” should read “marks protected by statute or treaty” And there are various incorrect references to trademark holders, assignment and licensing in 2.4.2 & 2.4.3 etc. In November 2013 Deloitte released TMCH Guidelines 1.2 which introduced a new section 5 “Verification Guidelines”. Section 5.5 expands “word marks” in the title to “Applicable to Marks protected under statute or treaty”. Sub sections 5.5.1 - 5.5.8 use a confused single example of the geographical indication “Scottish Wild Salmon” to illustrate how a word mark protected by statute or treaty may be submitted to the Trademark Clearinghouse! Again the wording for trademark holders, assignment and licensing often seems incorrect throughout these subsections. On Wed, Jul 15, 2020 at 4:22 PM Paul Tattersfield <gpmgroup@gmail.com> wrote:
Hi All,
Here is simplified language which brings TMCH #4 & TMCH #5 together after discussions with Rebecca and Claudio.
The thinking is: 3.2.1, 3.2.2 & 3.2.3 flow to 7.1 claims & 7.2 sunrise 3.2.4 flows to any ancillary databases
3.2.5 qualifies 3.2.1 The new 3.2.6 qualifies 3.2.3 in a way that makes it evident that GIs & AOs are implicitly accepted in 3.2.4.
Best regards,
Paul
3.2 The standards for inclusion in the Clearinghouse are:
3.2.1 Nationally or regionally registered word marks from all jurisdictions.
3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding.
3.2.3 Any Word marks 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.
3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings.
3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin]
Notes:
This proposal seeks to address the various public comments seeking clarification and tighter wording, by only introducing a small easily understandable change to the existing text.
It also recognizes the separate legal status and the global importance of GIs and will help GI’s reside in a shared ancillary database to support voluntary RPMs like the “Limited Registration Period” LRP voluntary RPM for .dot Paris. If the mark holders wished it would even be possible to publish a list of GIs whilst the main trademark database remains confidential.
Thank you Paul for this effort to reconcile TMCH individual proposals #4 and #5. In my view however, the public comments show a substantial opposition to both. Several of them, including the ones from Deloitte, are based on the fact that GIs should not be excluded from the TMCH (in this respect, Deloitte clearly states that so far it has never deviated from the TMCH Guidelines). I do not see how TMCH individual proposals #4 and #5 (nor this attempt to reconcile them) can reach consensus. Happy to discuss it later today. Best, Massimo From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Paul Tattersfield Sent: Monday, July 20, 2020 7:25 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals As promised here is a little further detail on proposals #4# & #5: The Trademark Clearinghouse is a central repository for marks. If it was to be a central repository for IP rights it would have been called the IP Clearinghouse. The purpose of a mark is to distinguish the commercial origin of goods or services not to distinguish those goods according to their geographical origin. In contrast to common law based systems under civil law a sign does not become a ‘mark’ until it is registered as a mark. In #5 Claudio was clear “Geographical Indications or Appellations of Origin shall not be eligible for … Sunrise or Claims …unless… also independently registered as trademarks” and in #4 Rebecca chose to underscore “Geographic indications (that are not also protected as trademarks) are not trademarks” There is clearly great utility to providing a central repository for geographical indications. Therefore the question before the working group should be: Can we reach consensus on including geographical indications in a shared ancillary database which does not flow to either Sunrise or Claims for the final report? Improved simplified language to bring together individual TMCH #4 & #5 proposals together 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks 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 and indications that constitute intellectual property. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin] Background research The TMCH rules are defined in an appendix of the AGB. Geographical indications are not mentioned anywhere in the AGB. Deloitte were tasked with drawing up the TMCH Guidelines. The TMCH Guidelines 1.0 February 2013 introduces the first single mention of geographical indications in 2.4.1 2.4.1 For marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to: geographical indications and designations of origin Section 2.4 is poorly drafted and needs work: for example in 2.4.1 the wording “court-validated marks” should read “marks protected by statute or treaty” And there are various incorrect references to trademark holders, assignment and licensing in 2.4.2 & 2.4.3 etc. In November 2013 Deloitte released TMCH Guidelines 1.2 which introduced a new section 5 “Verification Guidelines”. Section 5.5 expands “word marks” in the title to “Applicable to Marks protected under statute or treaty”. Sub sections 5.5.1 - 5.5.8 use a confused single example of the geographical indication “Scottish Wild Salmon” to illustrate how a word mark protected by statute or treaty may be submitted to the Trademark Clearinghouse! Again the wording for trademark holders, assignment and licensing often seems incorrect throughout these subsections. On Wed, Jul 15, 2020 at 4:22 PM Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> wrote: Hi All, Here is simplified language which brings TMCH #4 & TMCH #5 together after discussions with Rebecca and Claudio. The thinking is: 3.2.1, 3.2.2 & 3.2.3 flow to 7.1 claims & 7.2 sunrise 3.2.4 flows to any ancillary databases 3.2.5 qualifies 3.2.1 The new 3.2.6 qualifies 3.2.3 in a way that makes it evident that GIs & AOs are implicitly accepted in 3.2.4. Best regards, Paul 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks 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. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin] Notes: This proposal seeks to address the various public comments seeking clarification and tighter wording, by only introducing a small easily understandable change to the existing text. It also recognizes the separate legal status and the global importance of GIs and will help GI’s reside in a shared ancillary database to support voluntary RPMs like the “Limited Registration Period” LRP voluntary RPM for .dot Paris. If the mark holders wished it would even be possible to publish a list of GIs whilst the main trademark database remains confidential.
Great to see you here Massimo! I am delighted to make your acquaintance, I have heard great things about you. Two questions if I may? Can you refer me to an authority which classifies geographic indications as a mark please? Do you support Claudio’s proposal? Kind regards, Paul. On Tue, Jul 21, 2020 at 9:18 AM Massimo Vittori <Massimo@origin-gi.com> wrote:
Thank you Paul for this effort to reconcile TMCH individual proposals #4 and #5.
In my view however, the public comments show a substantial opposition to both. Several of them, including the ones from Deloitte, are based on the fact that GIs should not be excluded from the TMCH (in this respect, Deloitte clearly states that so far it has never deviated from the TMCH Guidelines). I do not see how TMCH individual proposals #4 and #5 (nor this attempt to reconcile them) can reach consensus.
Happy to discuss it later today.
Best,
Massimo
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Paul Tattersfield *Sent:* Monday, July 20, 2020 7:25 PM *To:* gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals
As promised here is a little further detail on proposals #4# & #5:
The Trademark Clearinghouse is a central repository for marks. If it was to be a central repository for IP rights it would have been called the IP Clearinghouse.
The purpose of a mark is to distinguish the commercial origin of goods or services not to distinguish those goods according to their geographical origin. In contrast to common law based systems under civil law a sign does not become a ‘mark’ until it is registered as a mark.
In #5 Claudio was clear “Geographical Indications or Appellations of Origin shall not be eligible for … Sunrise or Claims …unless… also independently registered as trademarks” and in #4 Rebecca chose to underscore “Geographic indications (that are not also protected as trademarks) are not trademarks”
There is clearly great utility to providing a central repository for geographical indications. Therefore the question before the working group should be: Can we reach consensus on including geographical indications in a shared ancillary database which does not flow to either Sunrise or Claims for the final report?
*Improved simplified language to bring together individual TMCH #4 & #5 proposals together * 3.2 The standards for inclusion in the Clearinghouse are:
3.2.1 Nationally or regionally registered word marks from all jurisdictions.
3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding.
3.2.3 Any Word marks 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 and indications that constitute intellectual property.
3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings.
3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin]
*Background research *The TMCH rules are defined in an appendix of the AGB. Geographical indications are not mentioned anywhere in the AGB.
Deloitte were tasked with drawing up the TMCH Guidelines. The TMCH Guidelines 1.0 February 2013 introduces the first single mention of geographical indications in 2.4.1
*2.4.1 For marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to: geographical indications and designations of origin*
Section 2.4 is poorly drafted and needs work: for example in 2.4.1 the wording “court-validated marks” should read “marks protected by statute or treaty” And there are various incorrect references to trademark holders, assignment and licensing in 2.4.2 & 2.4.3 etc.
In November 2013 Deloitte released TMCH Guidelines 1.2 which introduced a new section 5 “Verification Guidelines”. Section 5.5 expands “word marks” in the title to “Applicable to Marks protected under statute or treaty”.
Sub sections 5.5.1 - 5.5.8 use a confused single example of the geographical indication “Scottish Wild Salmon” to illustrate how a word mark protected by statute or treaty may be submitted to the Trademark Clearinghouse! Again the wording for trademark holders, assignment and licensing often seems incorrect throughout these subsections.
On Wed, Jul 15, 2020 at 4:22 PM Paul Tattersfield <gpmgroup@gmail.com> wrote:
Hi All,
Here is simplified language which brings TMCH #4 & TMCH #5 together after discussions with Rebecca and Claudio.
The thinking is: 3.2.1, 3.2.2 & 3.2.3 flow to 7.1 claims & 7.2 sunrise 3.2.4 flows to any ancillary databases
3.2.5 qualifies 3.2.1 The new 3.2.6 qualifies 3.2.3 in a way that makes it evident that GIs & AOs are implicitly accepted in 3.2.4.
Best regards,
Paul
3.2 The standards for inclusion in the Clearinghouse are:
3.2.1 Nationally or regionally registered word marks from all jurisdictions.
3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding.
3.2.3 Any Word marks 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.
3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings.
3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin]
Notes:
This proposal seeks to address the various public comments seeking clarification and tighter wording, by only introducing a small easily understandable change to the existing text.
It also recognizes the separate legal status and the global importance of GIs and will help GI’s reside in a shared ancillary database to support voluntary RPMs like the “Limited Registration Period” LRP voluntary RPM for .dot Paris. If the mark holders wished it would even be possible to publish a list of GIs whilst the main trademark database remains confidential.
Paul: Just happen to see this and was working on something that touches on the question you raised. It is from the USPTO and concerns the US view. https://www.uspto.gov/sites/default/files/web/offices/dcom/olia/globalip/pdf... From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Paul Tattersfield Sent: Tuesday, July 21, 2020 6:29 AM To: Massimo Vittori <Massimo@origin-gi.com> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals Great to see you here Massimo! I am delighted to make your acquaintance, I have heard great things about you. Two questions if I may? Can you refer me to an authority which classifies geographic indications as a mark please? Do you support Claudio’s proposal? Kind regards, Paul. On Tue, Jul 21, 2020 at 9:18 AM Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Thank you Paul for this effort to reconcile TMCH individual proposals #4 and #5. In my view however, the public comments show a substantial opposition to both. Several of them, including the ones from Deloitte, are based on the fact that GIs should not be excluded from the TMCH (in this respect, Deloitte clearly states that so far it has never deviated from the TMCH Guidelines). I do not see how TMCH individual proposals #4 and #5 (nor this attempt to reconcile them) can reach consensus. Happy to discuss it later today. Best, Massimo From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Paul Tattersfield Sent: Monday, July 20, 2020 7:25 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals As promised here is a little further detail on proposals #4# & #5: The Trademark Clearinghouse is a central repository for marks. If it was to be a central repository for IP rights it would have been called the IP Clearinghouse. The purpose of a mark is to distinguish the commercial origin of goods or services not to distinguish those goods according to their geographical origin. In contrast to common law based systems under civil law a sign does not become a ‘mark’ until it is registered as a mark. In #5 Claudio was clear “Geographical Indications or Appellations of Origin shall not be eligible for … Sunrise or Claims …unless… also independently registered as trademarks” and in #4 Rebecca chose to underscore “Geographic indications (that are not also protected as trademarks) are not trademarks” There is clearly great utility to providing a central repository for geographical indications. Therefore the question before the working group should be: Can we reach consensus on including geographical indications in a shared ancillary database which does not flow to either Sunrise or Claims for the final report? Improved simplified language to bring together individual TMCH #4 & #5 proposals together 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks 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 and indications that constitute intellectual property. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin] Background research The TMCH rules are defined in an appendix of the AGB. Geographical indications are not mentioned anywhere in the AGB. Deloitte were tasked with drawing up the TMCH Guidelines. The TMCH Guidelines 1.0 February 2013 introduces the first single mention of geographical indications in 2.4.1 2.4.1 For marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to: geographical indications and designations of origin Section 2.4 is poorly drafted and needs work: for example in 2.4.1 the wording “court-validated marks” should read “marks protected by statute or treaty” And there are various incorrect references to trademark holders, assignment and licensing in 2.4.2 & 2.4.3 etc. In November 2013 Deloitte released TMCH Guidelines 1.2 which introduced a new section 5 “Verification Guidelines”. Section 5.5 expands “word marks” in the title to “Applicable to Marks protected under statute or treaty”. Sub sections 5.5.1 - 5.5.8 use a confused single example of the geographical indication “Scottish Wild Salmon” to illustrate how a word mark protected by statute or treaty may be submitted to the Trademark Clearinghouse! Again the wording for trademark holders, assignment and licensing often seems incorrect throughout these subsections. On Wed, Jul 15, 2020 at 4:22 PM Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> wrote: Hi All, Here is simplified language which brings TMCH #4 & TMCH #5 together after discussions with Rebecca and Claudio. The thinking is: 3.2.1, 3.2.2 & 3.2.3 flow to 7.1 claims & 7.2 sunrise 3.2.4 flows to any ancillary databases 3.2.5 qualifies 3.2.1 The new 3.2.6 qualifies 3.2.3 in a way that makes it evident that GIs & AOs are implicitly accepted in 3.2.4. Best regards, Paul 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks 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. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin] Notes: This proposal seeks to address the various public comments seeking clarification and tighter wording, by only introducing a small easily understandable change to the existing text. It also recognizes the separate legal status and the global importance of GIs and will help GI’s reside in a shared ancillary database to support voluntary RPMs like the “Limited Registration Period” LRP voluntary RPM for .dot Paris. If the mark holders wished it would even be possible to publish a list of GIs whilst the main trademark database remains confidential. ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. 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Thank you Paul, I will respond during the call, I might be a few minutes late though Envoyé depuis mon smartphone Samsung Galaxy. -------- Message d'origine -------- De : Paul Tattersfield <gpmgroup@gmail.com> Date : 21.07.20 12:31 (GMT+01:00) À : Massimo Vittori <Massimo@origin-gi.com> Cc : gnso-rpm-wg <gnso-rpm-wg@icann.org> Objet : Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals Great to see you here Massimo! I am delighted to make your acquaintance, I have heard great things about you. Two questions if I may? Can you refer me to an authority which classifies geographic indications as a mark please? Do you support Claudio’s proposal? Kind regards, Paul. On Tue, Jul 21, 2020 at 9:18 AM Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Thank you Paul for this effort to reconcile TMCH individual proposals #4 and #5. In my view however, the public comments show a substantial opposition to both. Several of them, including the ones from Deloitte, are based on the fact that GIs should not be excluded from the TMCH (in this respect, Deloitte clearly states that so far it has never deviated from the TMCH Guidelines). I do not see how TMCH individual proposals #4 and #5 (nor this attempt to reconcile them) can reach consensus. Happy to discuss it later today. Best, Massimo From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Paul Tattersfield Sent: Monday, July 20, 2020 7:25 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals As promised here is a little further detail on proposals #4# & #5: The Trademark Clearinghouse is a central repository for marks. If it was to be a central repository for IP rights it would have been called the IP Clearinghouse. The purpose of a mark is to distinguish the commercial origin of goods or services not to distinguish those goods according to their geographical origin. In contrast to common law based systems under civil law a sign does not become a ‘mark’ until it is registered as a mark. In #5 Claudio was clear “Geographical Indications or Appellations of Origin shall not be eligible for … Sunrise or Claims …unless… also independently registered as trademarks” and in #4 Rebecca chose to underscore “Geographic indications (that are not also protected as trademarks) are not trademarks” There is clearly great utility to providing a central repository for geographical indications. Therefore the question before the working group should be: Can we reach consensus on including geographical indications in a shared ancillary database which does not flow to either Sunrise or Claims for the final report? Improved simplified language to bring together individual TMCH #4 & #5 proposals together 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks 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 and indications that constitute intellectual property. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin] Background research The TMCH rules are defined in an appendix of the AGB. Geographical indications are not mentioned anywhere in the AGB. Deloitte were tasked with drawing up the TMCH Guidelines. The TMCH Guidelines 1.0 February 2013 introduces the first single mention of geographical indications in 2.4.1 2.4.1 For marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to: geographical indications and designations of origin Section 2.4 is poorly drafted and needs work: for example in 2.4.1 the wording “court-validated marks” should read “marks protected by statute or treaty” And there are various incorrect references to trademark holders, assignment and licensing in 2.4.2 & 2.4.3 etc. In November 2013 Deloitte released TMCH Guidelines 1.2 which introduced a new section 5 “Verification Guidelines”. Section 5.5 expands “word marks” in the title to “Applicable to Marks protected under statute or treaty”. Sub sections 5.5.1 - 5.5.8 use a confused single example of the geographical indication “Scottish Wild Salmon” to illustrate how a word mark protected by statute or treaty may be submitted to the Trademark Clearinghouse! Again the wording for trademark holders, assignment and licensing often seems incorrect throughout these subsections. On Wed, Jul 15, 2020 at 4:22 PM Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> wrote: Hi All, Here is simplified language which brings TMCH #4 & TMCH #5 together after discussions with Rebecca and Claudio. The thinking is: 3.2.1, 3.2.2 & 3.2.3 flow to 7.1 claims & 7.2 sunrise 3.2.4 flows to any ancillary databases 3.2.5 qualifies 3.2.1 The new 3.2.6 qualifies 3.2.3 in a way that makes it evident that GIs & AOs are implicitly accepted in 3.2.4. Best regards, Paul 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks 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. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin] Notes: This proposal seeks to address the various public comments seeking clarification and tighter wording, by only introducing a small easily understandable change to the existing text. It also recognizes the separate legal status and the global importance of GIs and will help GI’s reside in a shared ancillary database to support voluntary RPMs like the “Limited Registration Period” LRP voluntary RPM for .dot Paris. If the mark holders wished it would even be possible to publish a list of GIs whilst the main trademark database remains confidential.
Hi All, Please see below improved wording to 3.2 to address concerns WG members raised and help reach consensus and background references to aid discussion. There are no substantive changes at this late stage. Best regards, Paul. 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks 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 and indications that constitute intellectual property. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty do not extend to geographical indications and other quality schemes unless they also satisfy 3.2.1 or 3.2.2 3.2.7 Word marks here include service marks, collective marks and certification marks *Opposition*I believe Massimo remains opposed and would wish GIs to be on an equal footing in the main TMCH database, and Greg doesn’t like the words ‘and indications’ in 3.2.4 *Original implementation *Special Trademark Issues (STI) Review Team Recommendations (Pg. 4) * “* *The name of the rights protection mechanism should be the “Trademark Clearinghouse” to signify that only trademarks are to be included in the database.” **Quality Schemes* https://ec.europa.eu/info/food-farming-fisheries/food-safety-and-quality/cer... Regulation (EU) No 1151/2012 <https://urldefense.proofpoint.com/v2/url?u=https-3A__eur-2Dlex.europa.eu_leg...> of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs. https://eur-lex.europa.eu/legal-content/en/LSU/?uri=CELEX%3A32012R1151 <https://urldefense.proofpoint.com/v2/url?u=https-3A__eur-2Dlex.europa.eu_leg...> On Tue, Jul 21, 2020 at 1:34 PM Massimo Vittori <Massimo@origin-gi.com> wrote:
Thank you Paul, I will respond during the call, I might be a few minutes late though
Envoyé depuis mon smartphone Samsung Galaxy.
-------- Message d'origine -------- De : Paul Tattersfield <gpmgroup@gmail.com> Date : 21.07.20 12:31 (GMT+01:00) À : Massimo Vittori <Massimo@origin-gi.com> Cc : gnso-rpm-wg <gnso-rpm-wg@icann.org> Objet : Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals
Great to see you here Massimo! I am delighted to make your acquaintance, I have heard great things about you.
Two questions if I may? Can you refer me to an authority which classifies geographic indications as a mark please? Do you support Claudio’s proposal?
Kind regards, Paul.
On Tue, Jul 21, 2020 at 9:18 AM Massimo Vittori <Massimo@origin-gi.com> wrote:
Thank you Paul for this effort to reconcile TMCH individual proposals #4 and #5.
In my view however, the public comments show a substantial opposition to both. Several of them, including the ones from Deloitte, are based on the fact that GIs should not be excluded from the TMCH (in this respect, Deloitte clearly states that so far it has never deviated from the TMCH Guidelines). I do not see how TMCH individual proposals #4 and #5 (nor this attempt to reconcile them) can reach consensus.
Happy to discuss it later today.
Best,
Massimo
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Paul Tattersfield *Sent:* Monday, July 20, 2020 7:25 PM *To:* gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals
As promised here is a little further detail on proposals #4# & #5:
The Trademark Clearinghouse is a central repository for marks. If it was to be a central repository for IP rights it would have been called the IP Clearinghouse.
The purpose of a mark is to distinguish the commercial origin of goods or services not to distinguish those goods according to their geographical origin. In contrast to common law based systems under civil law a sign does not become a ‘mark’ until it is registered as a mark.
In #5 Claudio was clear “Geographical Indications or Appellations of Origin shall not be eligible for … Sunrise or Claims …unless… also independently registered as trademarks” and in #4 Rebecca chose to underscore “Geographic indications (that are not also protected as trademarks) are not trademarks”
There is clearly great utility to providing a central repository for geographical indications. Therefore the question before the working group should be: Can we reach consensus on including geographical indications in a shared ancillary database which does not flow to either Sunrise or Claims for the final report?
*Improved simplified language to bring together individual TMCH #4 & #5 proposals together * 3.2 The standards for inclusion in the Clearinghouse are:
3.2.1 Nationally or regionally registered word marks from all jurisdictions.
3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding.
3.2.3 Any Word marks 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 and indications that constitute intellectual property.
3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings.
3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin]
*Background research *The TMCH rules are defined in an appendix of the AGB. Geographical indications are not mentioned anywhere in the AGB.
Deloitte were tasked with drawing up the TMCH Guidelines. The TMCH Guidelines 1.0 February 2013 introduces the first single mention of geographical indications in 2.4.1
*2.4.1 For marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to: geographical indications and designations of origin*
Section 2.4 is poorly drafted and needs work: for example in 2.4.1 the wording “court-validated marks” should read “marks protected by statute or treaty” And there are various incorrect references to trademark holders, assignment and licensing in 2.4.2 & 2.4.3 etc.
In November 2013 Deloitte released TMCH Guidelines 1.2 which introduced a new section 5 “Verification Guidelines”. Section 5.5 expands “word marks” in the title to “Applicable to Marks protected under statute or treaty”.
Sub sections 5.5.1 - 5.5.8 use a confused single example of the geographical indication “Scottish Wild Salmon” to illustrate how a word mark protected by statute or treaty may be submitted to the Trademark Clearinghouse! Again the wording for trademark holders, assignment and licensing often seems incorrect throughout these subsections.
On Wed, Jul 15, 2020 at 4:22 PM Paul Tattersfield <gpmgroup@gmail.com> wrote:
Hi All,
Here is simplified language which brings TMCH #4 & TMCH #5 together after discussions with Rebecca and Claudio.
The thinking is: 3.2.1, 3.2.2 & 3.2.3 flow to 7.1 claims & 7.2 sunrise 3.2.4 flows to any ancillary databases
3.2.5 qualifies 3.2.1 The new 3.2.6 qualifies 3.2.3 in a way that makes it evident that GIs & AOs are implicitly accepted in 3.2.4.
Best regards,
Paul
3.2 The standards for inclusion in the Clearinghouse are:
3.2.1 Nationally or regionally registered word marks from all jurisdictions.
3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding.
3.2.3 Any Word marks 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.
3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings.
3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin]
Notes:
This proposal seeks to address the various public comments seeking clarification and tighter wording, by only introducing a small easily understandable change to the existing text.
It also recognizes the separate legal status and the global importance of GIs and will help GI’s reside in a shared ancillary database to support voluntary RPMs like the “Limited Registration Period” LRP voluntary RPM for .dot Paris. If the mark holders wished it would even be possible to publish a list of GIs whilst the main trademark database remains confidential.
Thank you Paul, great summary! An interesting article concerning GIs in China, which provides for both a sui generis system and a trademark GIs system: https://www.linkedin.com/pulse/cnipa-published-major-work-statistics-first-h... Best, Massimo De : Paul Tattersfield <gpmgroup@gmail.com> Envoyé : Tuesday, July 28, 2020 11:21 AM À : Massimo Vittori <Massimo@origin-gi.com> Cc : gnso-rpm-wg <gnso-rpm-wg@icann.org> Objet : Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals Hi All, Please see below improved wording to 3.2 to address concerns WG members raised and help reach consensus and background references to aid discussion. There are no substantive changes at this late stage. Best regards, Paul. 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks 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 and indications that constitute intellectual property. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty do not extend to geographical indications and other quality schemes unless they also satisfy 3.2.1 or 3.2.2 3.2.7 Word marks here include service marks, collective marks and certification marks Opposition I believe Massimo remains opposed and would wish GIs to be on an equal footing in the main TMCH database, and Greg doesn’t like the words ‘and indications’ in 3.2.4 Original implementation Special Trademark Issues (STI) Review Team Recommendations (Pg. 4) “The name of the rights protection mechanism should be the “Trademark Clearinghouse” to signify that only trademarks are to be included in the database.” Quality Schemes https://ec.europa.eu/info/food-farming-fisheries/food-safety-and-quality/cer... Regulation (EU) No 1151/2012<https://urldefense.proofpoint.com/v2/url?u=https-3A__eur-2Dlex.europa.eu_leg...> of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs. https://eur-lex.europa.eu/legal-content/en/LSU/?uri=CELEX%3A32012R1151<https://urldefense.proofpoint.com/v2/url?u=https-3A__eur-2Dlex.europa.eu_legal-2Dcontent_en_LSU_-3Furi-3DCELEX-253A32012R1151&d=DwMFAg&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=kP3WsbZqFF3oBrUWXeuERxb03nmeMHP1YNI2m79_u4c&s=sT0_HLdFRYSvXOs5p_m9EpTmtd7gwyKgkf95kdZjxE0&e=> On Tue, Jul 21, 2020 at 1:34 PM Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Thank you Paul, I will respond during the call, I might be a few minutes late though Envoyé depuis mon smartphone Samsung Galaxy. -------- Message d'origine -------- De : Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> Date : 21.07.20 12:31 (GMT+01:00) À : Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Cc : gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Objet : Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals Great to see you here Massimo! I am delighted to make your acquaintance, I have heard great things about you. Two questions if I may? Can you refer me to an authority which classifies geographic indications as a mark please? Do you support Claudio’s proposal? Kind regards, Paul. On Tue, Jul 21, 2020 at 9:18 AM Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Thank you Paul for this effort to reconcile TMCH individual proposals #4 and #5. In my view however, the public comments show a substantial opposition to both. Several of them, including the ones from Deloitte, are based on the fact that GIs should not be excluded from the TMCH (in this respect, Deloitte clearly states that so far it has never deviated from the TMCH Guidelines). I do not see how TMCH individual proposals #4 and #5 (nor this attempt to reconcile them) can reach consensus. Happy to discuss it later today. Best, Massimo From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Paul Tattersfield Sent: Monday, July 20, 2020 7:25 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals As promised here is a little further detail on proposals #4# & #5: The Trademark Clearinghouse is a central repository for marks. If it was to be a central repository for IP rights it would have been called the IP Clearinghouse. The purpose of a mark is to distinguish the commercial origin of goods or services not to distinguish those goods according to their geographical origin. In contrast to common law based systems under civil law a sign does not become a ‘mark’ until it is registered as a mark. In #5 Claudio was clear “Geographical Indications or Appellations of Origin shall not be eligible for … Sunrise or Claims …unless… also independently registered as trademarks” and in #4 Rebecca chose to underscore “Geographic indications (that are not also protected as trademarks) are not trademarks” There is clearly great utility to providing a central repository for geographical indications. Therefore the question before the working group should be: Can we reach consensus on including geographical indications in a shared ancillary database which does not flow to either Sunrise or Claims for the final report? Improved simplified language to bring together individual TMCH #4 & #5 proposals together 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks 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 and indications that constitute intellectual property. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin] Background research The TMCH rules are defined in an appendix of the AGB. Geographical indications are not mentioned anywhere in the AGB. Deloitte were tasked with drawing up the TMCH Guidelines. The TMCH Guidelines 1.0 February 2013 introduces the first single mention of geographical indications in 2.4.1 2.4.1 For marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to: geographical indications and designations of origin Section 2.4 is poorly drafted and needs work: for example in 2.4.1 the wording “court-validated marks” should read “marks protected by statute or treaty” And there are various incorrect references to trademark holders, assignment and licensing in 2.4.2 & 2.4.3 etc. In November 2013 Deloitte released TMCH Guidelines 1.2 which introduced a new section 5 “Verification Guidelines”. Section 5.5 expands “word marks” in the title to “Applicable to Marks protected under statute or treaty”. Sub sections 5.5.1 - 5.5.8 use a confused single example of the geographical indication “Scottish Wild Salmon” to illustrate how a word mark protected by statute or treaty may be submitted to the Trademark Clearinghouse! Again the wording for trademark holders, assignment and licensing often seems incorrect throughout these subsections. On Wed, Jul 15, 2020 at 4:22 PM Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> wrote: Hi All, Here is simplified language which brings TMCH #4 & TMCH #5 together after discussions with Rebecca and Claudio. The thinking is: 3.2.1, 3.2.2 & 3.2.3 flow to 7.1 claims & 7.2 sunrise 3.2.4 flows to any ancillary databases 3.2.5 qualifies 3.2.1 The new 3.2.6 qualifies 3.2.3 in a way that makes it evident that GIs & AOs are implicitly accepted in 3.2.4. Best regards, Paul 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks 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. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin] Notes: This proposal seeks to address the various public comments seeking clarification and tighter wording, by only introducing a small easily understandable change to the existing text. It also recognizes the separate legal status and the global importance of GIs and will help GI’s reside in a shared ancillary database to support voluntary RPMs like the “Limited Registration Period” LRP voluntary RPM for .dot Paris. If the mark holders wished it would even be possible to publish a list of GIs whilst the main trademark database remains confidential.
Can someone please explain what is meant by this? “3.2.4 Other marks and indications that constitute intellectual property.” 3.2.1 - 3.2.3 do a good job including marks that meet a clear and objective standard for protection regulated by a governmental or judicial authority. To the contrary, 3.2.4 seems to present a hole through which one could drive the 7th Calvary. I can easily see attempts to use 3.2.4 to push through inclusion of any number of claims that, even if considered to be “intellectual property” are simply not protectable. Please remember that not Intellectual Property warrants protection. Everyone has what THEY consider to be intellectual property. Not all of it is protectable. I ask that someone please provide me with an example of how 3.2.4 could be properly used. Moreover, even if it were otherwise appropriate to have a 4th classification for entry here, there is a complete absence of any objective third party standard having been met. What could or could not be “IP” and what could or cound not be an “indication of IP” places the Clearinghouse in the position of becoming an arbiter with the only arguments originating from the applicant’s counsel. Given the opposition that the Clearinghouse not be transparent, this presents a situation ripe for unchecked abuse. I cannot see how 3.2.4 should be included under any stretch. Sincerely, Paul Raynor Keating, Esq. Law.es<http://law.es/> Tel. +34 93 368 0247 (Spain) Tel. +1.415.937.0846 (US) Fax. (Europe) +34 93 396 0810 Fax. (US)(415) 358.4450 Skype: Prk-Spain email: Paul@law.es<mailto:Paul@law.es> THE INFORMATION CONTAINED IN THIS E-MAIL IS CONFIDENTIAL AND MAY CONTAIN INFORMATION SUBJECT TO THE ATTORNEY/CLIENT OR WORK-PRODUCT PRIVILEGE. THE INFORMATION IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHOM IT IS ADDRESSED. IF YOU ARE NOT THE INTENDED RECIPIENT, NO WAIVER OF PRIVILEGE IS MADE OR INTENDED AND YOU ARE REQUESTED TO PLEASE DELETE THE EMAIL AND ANY ATTACHMENTS. Circular 230 Disclosure: To assure compliance with Treasury Department rules governing tax practice, we hereby inform you that any advice contained herein (including in any attachment) (1) was not written or intended to be used, and cannot be used, by you or any taxpayer for the purpose of avoiding any penalties that may be imposed on you or any taxpayer and (2) may not be used or referred to by you or any other person in connection with promoting, marketing or recommending to another person any transaction or matter addressed herein. NOTHING CONTAINED IN THIS EMAIL SHALL CONSTITUTE THE FORMATION OF AN ATTORNEY/CLIENT RELATIONSHIP; SUCH A RELATIONSHIP MAY BE FORMED WITH THIS FIRM AND ATTORNEY ONLY BY SEPARATE FORMAL WRITTEN ENGAGEMENT AGREEMENT, WHICH THIS IS NOT. IN THE ABSENCE OF SUCH AN AGREEMENT, NOTHING CONTAINED HEREIN SHALL CONSTITUTE LEGAL ADVICE From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Massimo Vittori <Massimo@origin-gi.com> Date: Tuesday, July 28, 2020 at 12:41 PM To: Paul Tattersfield <gpmgroup@gmail.com> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals Thank you Paul, great summary! An interesting article concerning GIs in China, which provides for both a sui generis system and a trademark GIs system: https://www.linkedin.com/pulse/cnipa-published-major-work-statistics-first-h... Best, Massimo De : Paul Tattersfield <gpmgroup@gmail.com> Envoyé : Tuesday, July 28, 2020 11:21 AM À : Massimo Vittori <Massimo@origin-gi.com> Cc : gnso-rpm-wg <gnso-rpm-wg@icann.org> Objet : Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals Hi All, Please see below improved wording to 3.2 to address concerns WG members raised and help reach consensus and background references to aid discussion. There are no substantive changes at this late stage. Best regards, Paul. 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks 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 and indications that constitute intellectual property. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty do not extend to geographical indications and other quality schemes unless they also satisfy 3.2.1 or 3.2.2 3.2.7 Word marks here include service marks, collective marks and certification marks Opposition I believe Massimo remains opposed and would wish GIs to be on an equal footing in the main TMCH database, and Greg doesn’t like the words ‘and indications’ in 3.2.4 Original implementation Special Trademark Issues (STI) Review Team Recommendations (Pg. 4) “The name of the rights protection mechanism should be the “Trademark Clearinghouse” to signify that only trademarks are to be included in the database.” Quality Schemes https://ec.europa.eu/info/food-farming-fisheries/food-safety-and-quality/cer... Regulation (EU) No 1151/2012<https://urldefense.proofpoint.com/v2/url?u=https-3A__eur-2Dlex.europa.eu_leg...> of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs. https://eur-lex.europa.eu/legal-content/en/LSU/?uri=CELEX%3A32012R1151<https://urldefense.proofpoint.com/v2/url?u=https-3A__eur-2Dlex.europa.eu_legal-2Dcontent_en_LSU_-3Furi-3DCELEX-253A32012R1151&d=DwMFAg&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=kP3WsbZqFF3oBrUWXeuERxb03nmeMHP1YNI2m79_u4c&s=sT0_HLdFRYSvXOs5p_m9EpTmtd7gwyKgkf95kdZjxE0&e=> On Tue, Jul 21, 2020 at 1:34 PM Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Thank you Paul, I will respond during the call, I might be a few minutes late though Envoyé depuis mon smartphone Samsung Galaxy. -------- Message d'origine -------- De : Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> Date : 21.07.20 12:31 (GMT+01:00) À : Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Cc : gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Objet : Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals Great to see you here Massimo! I am delighted to make your acquaintance, I have heard great things about you. Two questions if I may? Can you refer me to an authority which classifies geographic indications as a mark please? Do you support Claudio’s proposal? Kind regards, Paul. On Tue, Jul 21, 2020 at 9:18 AM Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Thank you Paul for this effort to reconcile TMCH individual proposals #4 and #5. In my view however, the public comments show a substantial opposition to both. Several of them, including the ones from Deloitte, are based on the fact that GIs should not be excluded from the TMCH (in this respect, Deloitte clearly states that so far it has never deviated from the TMCH Guidelines). I do not see how TMCH individual proposals #4 and #5 (nor this attempt to reconcile them) can reach consensus. Happy to discuss it later today. Best, Massimo From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Paul Tattersfield Sent: Monday, July 20, 2020 7:25 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals As promised here is a little further detail on proposals #4# & #5: The Trademark Clearinghouse is a central repository for marks. If it was to be a central repository for IP rights it would have been called the IP Clearinghouse. The purpose of a mark is to distinguish the commercial origin of goods or services not to distinguish those goods according to their geographical origin. In contrast to common law based systems under civil law a sign does not become a ‘mark’ until it is registered as a mark. In #5 Claudio was clear “Geographical Indications or Appellations of Origin shall not be eligible for … Sunrise or Claims …unless… also independently registered as trademarks” and in #4 Rebecca chose to underscore “Geographic indications (that are not also protected as trademarks) are not trademarks” There is clearly great utility to providing a central repository for geographical indications. Therefore the question before the working group should be: Can we reach consensus on including geographical indications in a shared ancillary database which does not flow to either Sunrise or Claims for the final report? Improved simplified language to bring together individual TMCH #4 & #5 proposals together 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks 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 and indications that constitute intellectual property. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin] Background research The TMCH rules are defined in an appendix of the AGB. Geographical indications are not mentioned anywhere in the AGB. Deloitte were tasked with drawing up the TMCH Guidelines. The TMCH Guidelines 1.0 February 2013 introduces the first single mention of geographical indications in 2.4.1 2.4.1 For marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to: geographical indications and designations of origin Section 2.4 is poorly drafted and needs work: for example in 2.4.1 the wording “court-validated marks” should read “marks protected by statute or treaty” And there are various incorrect references to trademark holders, assignment and licensing in 2.4.2 & 2.4.3 etc. In November 2013 Deloitte released TMCH Guidelines 1.2 which introduced a new section 5 “Verification Guidelines”. Section 5.5 expands “word marks” in the title to “Applicable to Marks protected under statute or treaty”. Sub sections 5.5.1 - 5.5.8 use a confused single example of the geographical indication “Scottish Wild Salmon” to illustrate how a word mark protected by statute or treaty may be submitted to the Trademark Clearinghouse! Again the wording for trademark holders, assignment and licensing often seems incorrect throughout these subsections. On Wed, Jul 15, 2020 at 4:22 PM Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> wrote: Hi All, Here is simplified language which brings TMCH #4 & TMCH #5 together after discussions with Rebecca and Claudio. The thinking is: 3.2.1, 3.2.2 & 3.2.3 flow to 7.1 claims & 7.2 sunrise 3.2.4 flows to any ancillary databases 3.2.5 qualifies 3.2.1 The new 3.2.6 qualifies 3.2.3 in a way that makes it evident that GIs & AOs are implicitly accepted in 3.2.4. Best regards, Paul 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks 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. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin] Notes: This proposal seeks to address the various public comments seeking clarification and tighter wording, by only introducing a small easily understandable change to the existing text. It also recognizes the separate legal status and the global importance of GIs and will help GI’s reside in a shared ancillary database to support voluntary RPMs like the “Limited Registration Period” LRP voluntary RPM for .dot Paris. If the mark holders wished it would even be possible to publish a list of GIs whilst the main trademark database remains confidential.
Perhaps the problem at this point is "marks" in 3.2.4; "indications" does point more clearly at GIs. The question at this point is whether ancillary databases, including run by the TMCH provider, can include GIs, because they are currently going into the TMCH and getting Sunrise/Notice given Deloitte's interpretation. So if Paul K's objection prevails and no change is made to 3, we have the worst of both worlds. I definitely understand Paul K's point. I do think lack of transparency is a big problem and would happily support requirements of openness for ancillary databases (as well as auditing the TMCH to make sure that only 3.2.1-.3 matter is going in for Notice/Sunrise). I would have preferred being more specific that 3.2.4 matter is not eligible for Notice & Sunrise (and would certainly be happy to include that as a crossreference), but the rules overall are pretty clear on that if read as a whole. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Paul Keating <paul@law.es> Sent: Tuesday, July 28, 2020 7:17 AM To: Massimo Vittori <Massimo@origin-gi.com>; Paul Tattersfield <gpmgroup@gmail.com> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals Can someone please explain what is meant by this? “3.2.4 Other marks and indications that constitute intellectual property.” 3.2.1 - 3.2.3 do a good job including marks that meet a clear and objective standard for protection regulated by a governmental or judicial authority. To the contrary, 3.2.4 seems to present a hole through which one could drive the 7th Calvary. I can easily see attempts to use 3.2.4 to push through inclusion of any number of claims that, even if considered to be “intellectual property” are simply not protectable. Please remember that not Intellectual Property warrants protection. Everyone has what THEY consider to be intellectual property. Not all of it is protectable. I ask that someone please provide me with an example of how 3.2.4 could be properly used. Moreover, even if it were otherwise appropriate to have a 4th classification for entry here, there is a complete absence of any objective third party standard having been met. What could or could not be “IP” and what could or cound not be an “indication of IP” places the Clearinghouse in the position of becoming an arbiter with the only arguments originating from the applicant’s counsel. Given the opposition that the Clearinghouse not be transparent, this presents a situation ripe for unchecked abuse. I cannot see how 3.2.4 should be included under any stretch. Sincerely, Paul Raynor Keating, Esq. Law.es<https://urldefense.proofpoint.com/v2/url?u=http-3A__law.es_&d=DwMGaQ&c=WO-RG...> Tel. +34 93 368 0247 (Spain) Tel. +1.415.937.0846 (US) Fax. (Europe) +34 93 396 0810 Fax. (US)(415) 358.4450 Skype: Prk-Spain email: Paul@law.es<mailto:Paul@law.es> THE INFORMATION CONTAINED IN THIS E-MAIL IS CONFIDENTIAL AND MAY CONTAIN INFORMATION SUBJECT TO THE ATTORNEY/CLIENT OR WORK-PRODUCT PRIVILEGE. THE INFORMATION IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHOM IT IS ADDRESSED. IF YOU ARE NOT THE INTENDED RECIPIENT, NO WAIVER OF PRIVILEGE IS MADE OR INTENDED AND YOU ARE REQUESTED TO PLEASE DELETE THE EMAIL AND ANY ATTACHMENTS. 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IN THE ABSENCE OF SUCH AN AGREEMENT, NOTHING CONTAINED HEREIN SHALL CONSTITUTE LEGAL ADVICE From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Massimo Vittori <Massimo@origin-gi.com> Date: Tuesday, July 28, 2020 at 12:41 PM To: Paul Tattersfield <gpmgroup@gmail.com> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals Thank you Paul, great summary! An interesting article concerning GIs in China, which provides for both a sui generis system and a trademark GIs system: https://www.linkedin.com/pulse/cnipa-published-major-work-statistics-first-half-2020-amy-gong<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.linkedin.com_pulse_cnipa-2Dpublished-2Dmajor-2Dwork-2Dstatistics-2Dfirst-2Dhalf-2D2020-2Damy-2Dgong&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=b7j9fKoK36uMpm6FPxTG_ZE76hi12UbG8wvf8c5Mk4c&s=RakfMbpCwhAV15-IS0AlqMSrZD8JUfg6hMo4-STcxtk&e=> Best, Massimo De : Paul Tattersfield <gpmgroup@gmail.com> Envoyé : Tuesday, July 28, 2020 11:21 AM À : Massimo Vittori <Massimo@origin-gi.com> Cc : gnso-rpm-wg <gnso-rpm-wg@icann.org> Objet : Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals Hi All, Please see below improved wording to 3.2 to address concerns WG members raised and help reach consensus and background references to aid discussion. There are no substantive changes at this late stage. Best regards, Paul. 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks 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 and indications that constitute intellectual property. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty do not extend to geographical indications and other quality schemes unless they also satisfy 3.2.1 or 3.2.2 3.2.7 Word marks here include service marks, collective marks and certification marks Opposition I believe Massimo remains opposed and would wish GIs to be on an equal footing in the main TMCH database, and Greg doesn’t like the words ‘and indications’ in 3.2.4 Original implementation Special Trademark Issues (STI) Review Team Recommendations (Pg. 4) “The name of the rights protection mechanism should be the “Trademark Clearinghouse” to signify that only trademarks are to be included in the database.” Quality Schemes https://ec.europa.eu/info/food-farming-fisheries/food-safety-and-quality/certification/quality-labels/quality-schemes-explained_en<https://urldefense.proofpoint.com/v2/url?u=https-3A__ec.europa.eu_info_food-2Dfarming-2Dfisheries_food-2Dsafety-2Dand-2Dquality_certification_quality-2Dlabels_quality-2Dschemes-2Dexplained-5Fen&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=b7j9fKoK36uMpm6FPxTG_ZE76hi12UbG8wvf8c5Mk4c&s=8LQ5psYvMXiVPPyRd_yZHQx3-w6ZrkbwGS4bIWC7XQ0&e=> Regulation (EU) No 1151/2012<https://urldefense.proofpoint.com/v2/url?u=https-3A__eur-2Dlex.europa.eu_leg...> of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs. https://eur-lex.europa.eu/legal-content/en/LSU/?uri=CELEX%3A32012R1151<https://urldefense.proofpoint.com/v2/url?u=https-3A__eur-2Dlex.europa.eu_legal-2Dcontent_en_LSU_-3Furi-3DCELEX-253A32012R1151&d=DwMFAg&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=kP3WsbZqFF3oBrUWXeuERxb03nmeMHP1YNI2m79_u4c&s=sT0_HLdFRYSvXOs5p_m9EpTmtd7gwyKgkf95kdZjxE0&e=> On Tue, Jul 21, 2020 at 1:34 PM Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Thank you Paul, I will respond during the call, I might be a few minutes late though Envoyé depuis mon smartphone Samsung Galaxy. -------- Message d'origine -------- De : Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> Date : 21.07.20 12:31 (GMT+01:00) À : Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Cc : gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Objet : Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals Great to see you here Massimo! I am delighted to make your acquaintance, I have heard great things about you. Two questions if I may? Can you refer me to an authority which classifies geographic indications as a mark please? Do you support Claudio’s proposal? Kind regards, Paul. On Tue, Jul 21, 2020 at 9:18 AM Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Thank you Paul for this effort to reconcile TMCH individual proposals #4 and #5. In my view however, the public comments show a substantial opposition to both. Several of them, including the ones from Deloitte, are based on the fact that GIs should not be excluded from the TMCH (in this respect, Deloitte clearly states that so far it has never deviated from the TMCH Guidelines). I do not see how TMCH individual proposals #4 and #5 (nor this attempt to reconcile them) can reach consensus. Happy to discuss it later today. Best, Massimo From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Paul Tattersfield Sent: Monday, July 20, 2020 7:25 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals As promised here is a little further detail on proposals #4# & #5: The Trademark Clearinghouse is a central repository for marks. If it was to be a central repository for IP rights it would have been called the IP Clearinghouse. The purpose of a mark is to distinguish the commercial origin of goods or services not to distinguish those goods according to their geographical origin. In contrast to common law based systems under civil law a sign does not become a ‘mark’ until it is registered as a mark. In #5 Claudio was clear “Geographical Indications or Appellations of Origin shall not be eligible for … Sunrise or Claims …unless… also independently registered as trademarks” and in #4 Rebecca chose to underscore “Geographic indications (that are not also protected as trademarks) are not trademarks” There is clearly great utility to providing a central repository for geographical indications. Therefore the question before the working group should be: Can we reach consensus on including geographical indications in a shared ancillary database which does not flow to either Sunrise or Claims for the final report? Improved simplified language to bring together individual TMCH #4 & #5 proposals together 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks 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 and indications that constitute intellectual property. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin] Background research The TMCH rules are defined in an appendix of the AGB. Geographical indications are not mentioned anywhere in the AGB. Deloitte were tasked with drawing up the TMCH Guidelines. The TMCH Guidelines 1.0 February 2013 introduces the first single mention of geographical indications in 2.4.1 2.4.1 For marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to: geographical indications and designations of origin Section 2.4 is poorly drafted and needs work: for example in 2.4.1 the wording “court-validated marks” should read “marks protected by statute or treaty” And there are various incorrect references to trademark holders, assignment and licensing in 2.4.2 & 2.4.3 etc. In November 2013 Deloitte released TMCH Guidelines 1.2 which introduced a new section 5 “Verification Guidelines”. Section 5.5 expands “word marks” in the title to “Applicable to Marks protected under statute or treaty”. Sub sections 5.5.1 - 5.5.8 use a confused single example of the geographical indication “Scottish Wild Salmon” to illustrate how a word mark protected by statute or treaty may be submitted to the Trademark Clearinghouse! Again the wording for trademark holders, assignment and licensing often seems incorrect throughout these subsections. On Wed, Jul 15, 2020 at 4:22 PM Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> wrote: Hi All, Here is simplified language which brings TMCH #4 & TMCH #5 together after discussions with Rebecca and Claudio. The thinking is: 3.2.1, 3.2.2 & 3.2.3 flow to 7.1 claims & 7.2 sunrise 3.2.4 flows to any ancillary databases 3.2.5 qualifies 3.2.1 The new 3.2.6 qualifies 3.2.3 in a way that makes it evident that GIs & AOs are implicitly accepted in 3.2.4. Best regards, Paul 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks 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. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty, do not extend to [geographical] indications and designations [of origin] Notes: This proposal seeks to address the various public comments seeking clarification and tighter wording, by only introducing a small easily understandable change to the existing text. It also recognizes the separate legal status and the global importance of GIs and will help GI’s reside in a shared ancillary database to support voluntary RPMs like the “Limited Registration Period” LRP voluntary RPM for .dot Paris. If the mark holders wished it would even be possible to publish a list of GIs whilst the main trademark database remains confidential.
participants (5)
-
Massimo Vittori -
Nahitchevansky, Georges -
Paul Keating -
Paul Tattersfield -
Tushnet, Rebecca