Dear Working Group members, Just a gentle reminder to send any proposals or recommendations you may have, for proceeding with and possibly resolving the few open questions on the TMCH, to this mailing list by tomorrow, 19 April (close of business in your time zone). Staff will compile all proposals received for the Working Group to consider on the next Working Group call next Wednesday (26 April). To recap, the three open questions that are currently under discussion are: 1. TMCH Question 7 on “design marks” o On the last call, Working Group members had discussed whether the TMCH is intended to: (1) only accept “word marks” in the sense that the entire mark comprises text only; (2) also include marks comprising stylized text (but without a figurative/image element); and/or (3) accept device/image marks where the text element is predominant (i.e. Deloitte’s current practice), and the appropriate approach when the text element is (and is not) disclaimed). o The Working Group noted that different jurisdictions may have different approaches to these marks, and that the TMCH was intended to accept marks from all jurisdictions. For further background, the December 2009 STI Report stated that “The trademarks to be included in the [TMCh] are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights”, while the previous (May 2009) IRT Report noted that the TMCH “should be able to accommodate all types of registered trademarks, including word marks and device (logo) marks that contain a word element”. Both the IRT and STI tried to design their recommendations in accordance with the principle that “recommendation should protect the existing rights of trademark owners, but neither expand those rights nor create additional legal rights”. o The TMCH Guidelines that explain Deloitte’s current practice have already been circulated previously – for your convenient reference, they can be found here: http://trademark-clearinghouse.com/sites/default/files/files/downloads/TMCH%... 2. TMCH Question 8 on Geographical Indications, Designations of Origin and similar identifiers o In Copenhagen, Deloitte had discussed both the number of, as well as how it verifies, “marks protected by statute or treaty” with the Working Group, noting that this category could well include geographical indications although the current Guidelines do not require these to be treated separately. o Paul McGrady had asked staff some follow up questions, the answers to which we replicate below for your review. 3. TMCH Question 10 on Identical Match o The Working Group had agreed to return to this question following its review of the Analysis Group’s Revised Report. Please see pages 27-35 of the report for the Analysis Group’s findings on this topic: https://community.icann.org/download/attachments/64066042/Analysis%20Group%2... Please let Amr and I know if you have further questions or need more information. Thanks and cheers Mary From: Mary Wong <mary.wong@icann.org> Date: Thursday, April 13, 2017 at 10:42 To: Paul McGrady <policy@paulmcgrady.com>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [Ext] RE: [gnso-rpm-wg] FOR CONSIDERATION/ACTION: 19 April Deadline for Proposals on Open TMCH Questions Hello Paul and everyone, I’m not sure it will be feasible to get additional specific input from Deloitte within this timeframe, but hopefully the following observations can be of assistance to you and other Working Group members as you consider the G.I. issue. I’ve inserted them inline in blue in the hope that this makes things easier to review and comment on. a. Are there current any GIs lodged in the TMCH? MW: Based on the discussion with Deloitte in Copenhagen and their updated report (reattached here for ease of reference), they do not specifically check whether a TMCH submission made under the category of “mark protected by statute or treaty” is or is not a G.I. (however defined). As such, we will not know the answer to this question unless all the successfully-validated marks from this category are disclosed and a substantive examination performed of whether any are considered G.I.s. b. If so, how many? MW: See above. Also, we know from their report that out of 98 submissions in this category, 75 were successfully validated. c. If so, how did this come about since GIs were not part of the TMCH framework initially? MW: While there is no specific category for GIs (or AoCs or DoOs etc.), the category of “mark protected by statute or treaty”, separate from the categories of “registered trademark” and “court-validated mark” was included in the Applicant Guidebook at some point (I will need to check but I believe it was sometime in 2011) as a result of community discussions and public comments received on earlier versions of the AGB. Staff will research this and come back with the date and context. As staff suggested previously, one question for the Working Group to consider – in relation both to device/image marks and GIs – is whether the scope of the marks currently being accepted for validation by the TMCH is within, or exceeds, the policy intent of the GNSO (especially the original policy principles adopted in 2007 following the PDP on Introduction of New gTLDs). d. If so, when did GIs first appear in any Trademark Requirement Documents or the like and were such documents published for public comment? MW: See above response. As mentioned, staff will go through the various AGB comment periods and documents to see what additional specific information can be provided on this topic. e. If not, why not? MW: See note on Question (e). f. What does Deloitte think “marks protected by statute” means? MW: Section 2.4 of the TMCH Guidelines (http://www.trademark-clearinghouse.com/sites/default/files/files/downloads/T...) may be helpful – it lists the materials and information to be submitted for this category of marks and notes expressly that “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.” g. Are there use requirements for GIs? If not, why not? MW: Going by the publicly available documentation, there does not appear to be a specific “proof of use” requirement associated with the category of “marks protected by statute or treaty” (though please note that staff cannot speak for, nor have we specific confirmation from, Deloitte in this regard). For context on the “proof of use” requirement for Sunrise registrations, this April 2011 Explanatory Memo from ICANN on the changes made to the then-current version of the AGB may be helpful: https://archive.icann.org/en/topics/new-gtlds/trademark-protection-claims-us.... Since our deadline to make a proposal is Wednesday, we really need these answers no later than Monday morning, but practically speaking COB on Friday would be even better. Kind regards, Paul From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 12, 2017 1:47 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] FOR CONSIDERATION/ACTION: 19 April Deadline for Proposals on Open TMCH Questions Dear all, Pending the circulation of the full set of Action Items and Notes from the Working Group call held earlier today, please note the following: o Working Group members are invited to submit proposals/recommendations concerning the three currently-open TMCH questions (see below for the questions) by close of business in your time zone on Wednesday 19 April. Please send your proposal to this mailing list. As noted previously, any such proposal/recommendation should be specific and include a description of the benefits/costs and advantages/disadvantages. Following receipt of all proposals, the co-chairs will work with staff to propose a constructive format for discussion of all proposals for the Working Group to consider. o There will not be a Working Group call next Wednesday 19 April, although the Sub Teams are expected to continue meeting. The Working Group will reconvene on Thursday 27 April 0300 UTC (i.e. Wednesday evening/night for our members in the Americas). The three currently-open TMCH questions are: TMCH Question 7: How are design marks currently handled by the TMCH provider? (one proposal received from Kathy Kleiman) TMCH Question 8: How are geographical indications, protected designations of origin, and protected appellations of origin currently handled by the TMCH provider? TMCH Question 10: Should the TMCH matching rules be retained, modified, or expanded, e.g. to include plurals, ‘marks contained’ or ‘mark+keyword’, and/or common typos of a mark? Thanks and cheers Mary & Amr From: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Monday, April 10, 2017 at 17:56 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Agenda and documents for Wednesday Working Group meeting (12 April) Dear all, The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Discuss remaining open TMCH Charter questions (see attached table and notes, below) 3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document) 4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call 5. Next steps/next meeting For Agenda Item #2, please note the following: As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April). Thanks and cheers Mary