Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 18 September 2019 at 17:00 UTC. Staff have posted these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-18+Review+of+all+Ri.... Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Staff to circulate the glossary of terms developed in 2017 – DONE: See the attached document: “List of Terms and Descriptions Relating to Design Marks and GIs.” Notes: 1. Updates to Statements of Interest: No updates provided 2. Finalize Discussion of Open Charter Questions and Proposals: Charter Question 7: Kleiman/Muscovitch Proposal -- See: https://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20190918/e9fbcd9d/Kle... -- Compromise proposal was withdrawn. -- Trying to clearly define what can and cannot go into the TMCH, what can get Sunrise and Notice. -- Continue the dialog to see if further compromise can be found. -- Question: on suggest number 2 re: “national registry about its classifications” – meaning? -- Agree WIPO 3.0 at Section 1.10 states is that the consensus is that design marks can be the basis of a UDRP. https://www.wipo.int/amc/en/domains/search/overview3.0/#item110 -- Our (ICANN Org) understanding is that, for the UDRP, it’s very much a case by case analysis. So, not excluded in principle, but fact-dependent. -- Over states to the extent to which the rights of design marks are limited to those elements taken together. -- Defined best by the negative of the word mark. -- Reminder/placeholder: the question does seem to be what exactly does the WG believe is in the scope of the term “word mark”. There is not internationally understood definition of “word mark”. TMCH was meant to be a repository of verified marks. This WG should not require the provide to conduct an examination, as that changes the purpose of the TMCH. The TMCH rules have to be such that all marks from all jurisdictions can be included. -- We need rules for the TMCH that is effectively lowest-common-denominator for text marks
Becuase of all the varying definitions and jurisdictional practices -- If there is no way to tell whether a registration is a "word mark" how does Deloitte implement this proposal? To this question - Deloitte’s implementation can be found in Sections 5.2.1 and 5.2.2 of the TMCH Guidelines. -- From the TMCH Guidelines: “For those marks that to do not exclusively consist of letters, words, numerals or special characters, the verification agents will verify the trademark name based upon the image on the trademark certificate. In the event that there is any doubt about the order in which the characters appear, the description provided by the Trademark Office will prevail. In the event no description is provided, such trademark records will be allocated to a Deloitte internal team of specialists with thorough knowledge of both national and regional trademark law who will conduct independent research on how the trademark is used, e.g. check website, or they may request that the trademark holder or agent provide additional documentary evidence on how the trademark is used.” -- There are basic disagreements about how trademark law protects textual elements of marks that also have stylization/design elements. -- I think that has been the issue in moving toward further compromise, although I note that the IPC did provide responses to the iteration of the Muscovitch propopsal that was subsequently withdrawn. -- Hence the need for this WG to decide what it means by “word marks” and how that can be implemented within the framework of the TMCH as a repository and that accepts all verified marks from all jurisdictions. -- No reason Deloitte cannot try to match the mark to the string. -- The matching of the mark to string is entirely technical, not something that Deloitte evaluate. -- It's not purely technical because the mark transmitted to them can be a visual symbol, under their standards, and they look to see if they can get text out -- According to Deloitte's answers to our questions, they do look to see if there's anything they can extract. -- Seems that there is no agreement on what the problem is. -- If I was not clear, the staff intention was to remind everyone of what the TMCH is supposed to be - a repository that does not engage in substantive examination of what is/is not a TM; and a repository that is capable of accepting verified marks from all jurisdictions. - Staff also reminded the WG that there is no universally-accepted, single definition of what is a “word mark”. Even if multiple jurisdictions end up in the same place about specific words as TMs, the specific tests, definitions and approach may well be different. -- That’s one of the things I disagree with. You have not identified any area in which those differently worded definitions disagree on the result. -- How can you say they do not? You would just be guessing as well.
 -- Although Deloitte do make this assessment based on what is in the certificate. -- Thought we had previously identified that under some definitions of "word mark" this would include marks that contain words and also design elements?
 -- Decide to draw a line under the discussion that there are two proposals for inclusion in the Initial Report for public comment. Question 8: Updated open TMCH questions doc that contains the new proposals from Kathy and Claudio for Q8: https://docs.google.com/document/d/18jtYYKQfZd1vVM7ePS6PlxVDqgBZEsrY/edit Compromise proposal from Claudio: 1) Going forward, GI may be accepted in the Clearinghouse (and recorded separately as such within the database to distinguish them from TM records) under "3.2.4 - other marks that constitute intellectual property" OR shall be permitted to be recorded in one ancillary GI database, e.g. "the unitary, ancillary GI Database", that all registries/registrars may voluntarily connect with; 2) GIs shall NOT be protected during the Sunrise or TM Claims period, unless they are also registered as trademarks and otherwise meet the qualifying criteria for such trademarks; 3) the protection of GIs (those that are not also registered as trademarks) shall NOT be considered a mandatory RPM for any new gTLD registry; 4) for new gTLD registries that desire or choose to protect GIs (as permitted by the current rules) based on local laws and/or for other consumer protection reasons, GIs may be protected and registered as domain names during the Limited Registration Period, and/or by the issuance of a GI Claims Notice, and which shall be supported by the unitary, ancillary GI database. -- Why put these in the TMCH if they won’t get Sunrise or Claims RPMs? -- Don’t think we should try to define GIs. It is out of scope. Ancillary databases can use whatever definition that they want. -- The closest internationally-accepted definition of GI may be that of the WTO: ““Indications which identify a good as originating in the territory of a [WTO] Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin”. (Article 22, TRIPs.) -- Key difference from Kathy and Paul’s proposals is that it doesn’t address the issue of Deloitte including marks based on statue or treaty. -- Point of this proposal is to have a unified ancillary database under the TMCH, as opposed to each Registry having separate ancillary databases. -- Unless I'm mistaken, no ICANN rule or part of the contract prohibits that--so why would we need to intervene and wouldn't we need to change the contract to *mandate* it be done? -- So basically Claudio is saying: have a single centralized database specifically for GIs, but separate from the TMCH, where GIs accepted into that separate centralized ancillary database could be integrated voluntarily by registries who wish to provide a special registration period specifically for GIs, which would be subsidiary to Sunrise. -- Either there's a market for it and Deloitte can develop it (and others can compete with Deloitte to provide it) or there's not and we would have to mandate it. -- If these are not marks that get access to Sunrise and Claims, then what criteria would Deloitte utilize to determine if they should be accepted for limited registration purposes? Kathy’s suggested language: 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 specified in and protected by a statute or treaty as trademarks [1] in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. [see below] 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks. [1] By "trademarks," the WG means "trademarks, service marks, certification marks and collective marks." For purposes of clarity, separate or ancillary databases of the Trademark Clearinghouse Provider (or another provider) may include other marks, but those databases should not be used for Sunrise or Trademark Claims Notices under the RPMs. Registries may use those separate or ancillary databases to provide additional services but are not required to do so under the RPMs. (Appropriate corresponding changes will be percolated across the Trademark Clearinghouse Applicant Guidebook) -- FYI, ancillary services offered by Deloitte have to be approved by ICANN Org. Currently, these are the extended claims service and the T-Rex service. I believe these services are available to TMCH-verified marks that are contained in an ancillary database.
 -- 89 class registrations are not marks at all. They are there to let TM examiners know that they can’t -- US class 89: nonregistration data entered into b/c of statute, treaty, or other obligations. -- QUESTION: Who will determine whether the word is protected by a ;articular treaty “as a trademark”?
 (thinking of Red Cross, for instance - it’s protected by the Conventions but none of them say it’s a trademark specifically) -- The problem seems to be that Deloitte simply looks at the statute/treaty - doesn’t take the additional step of analyzing whether that statute/treaty considers the entry a “trademark”. -- Concern about including the language in 3.2.3 “as trademarks” since they would be then included in 3.2.1 if they are trademarks. -- Agree, 3.2.3 already states "word marks" seems redundant/duplicative and potentially confusing to then add "as trademarks" and then add the further proposed definition of this. -- It doesn't have to be what the treaty says; it's eligible because of the statute. -- Who will make that conclusion?
 -- Point was that the amendment causes uncertainty for the treaty/statute marks that we all agree this provision is intended to cover. -- We have a couple of possibilities on the table: (1) right now Deloitte takes everything, including GIs. (2) We can specify what trademarks are. (3) We can tell Deloitte to figure it out, which probably gets us back to (1). -- We don't all agree on GIs. -- Happy to have a group set up to take on the task of considering whether and how GIs are protected in gTLDs. But that’s a significant task.
 -- GIs are not marks, and therefore cannot come in under 3.2.4. GIs are only marks when recognized as such. -- But right now Deloitte also offers Claims/Notice for 3.2.4 and does not put other IP into an ancillary database, according to its own representations. -- For Q8: is there any coalescence over its scope being limited to marks (not otherwise eligible under 3.2.1) that are nevertheless protected under a statute or treaty as a sign that functions as a trademark/source identifier? -- 3.2.4 is strictly applicable to those marks for which ROs have requirements and requested service from Deloitte. As staff mentioned last week, the language of this section may need to be tightened to reflect this. -- Propose a recommendation that the WG recommends that a Working Group be initiated to examine the issue of potential protections for GIs in gTLDs. -- Given the rather broad agreement that Deloitte's current practice goes beyond AGB rules, can we get agreement on a proposal to put out for comment?
We can adjust it down the road based upon public comment. -- staff tried to summarize in a comment upthread - is there any coalescence over its scope being limited to marks (not otherwise eligible under 3.2.1) that are nevertheless protected under a statute or treaty as a sign that functions as a trademark/source identifier? -- Does the WG believe there are any other marks/signs/emblems that function as TMs, and hence should be included, but that are NOT covered by 3.2.1 or 3.2.2? -- Don’t support eliminating 3.2.4. Probably need to expand the footnote in the current proposal from Kathy. -- From Griffin: So in terms of a policy fix to achieve that, it seems it would require a clarification to the interpretation of TMCH guidelines about accepting marks protected by statute or treaty to exclude GIs, but state that GIs could be submitted and accepted into the separate centralized ancillary database. Maybe 3.2.3 should be revised to: Any designations specified in and protected by statute or treaty in effect at the time the designation is submitted to the Clearinghouse for inclusion, where such designation is also the subject of a trademark registration. For any such designations not the subject of a trademark registration, such designations could be recorded.