Agenda and documents for Working Group call this week
Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw (Sunrise) and https://community.icann.org/x/psrRAw (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary
Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org> wrote:
Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4. Notice of deadline for further follow up questions to the Analysis Group
5. Next steps/next meeting
*Notes:*
o For *Agenda Item #2*, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw (Sunrise) and https://community.icann.org/x/psrRAw (Claims).
o For *Agenda Item #3*, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will *not* be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
Thanks and cheers
Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw (Sunrise) and https://community.icann.org/x/psrRAw (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.
Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com> wrote:
Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto: gnso-rpm-wg-bounces@icann.org] *On Behalf Of *claudio di gangi *Sent:* Friday, April 28, 2017 12:58 PM *To:* Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Mary, all,
I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.
An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?
For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?
If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.
On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?
I'm looking forward to working with everyone on the team.
Thanks!
Best regards,
Claudio
On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org> wrote:
Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4. Notice of deadline for further follow up questions to the Analysis Group
5. Next steps/next meeting
*Notes:*
o For *Agenda Item #2*, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw (Sunrise) and https://community.icann.org/x/psrRAw (Claims).
o For *Agenda Item #3*, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will *not* be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
Thanks and cheers
Mary
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
------------------------------ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.
Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists <icannlists@winston.com> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw (Sunrise) and https://community.icann.org/x/psrRAw (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.
Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com>; Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists <icannlists@winston.com> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw (Sunrise) and https://community.icann.org/x/psrRAw (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
Jonathan wrote: "Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:" Prk comment. Not to pester a point but when we were arguing to make the TMCH public Or as an alternative to allow this WG to access certain parts of it we were told the opposite. Sincerely, Paul Keating, Esq.
On Apr 29, 2017, at 5:36 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
Which part of the sentence are you referring to? [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (???) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: paul@law.es Sent: 29 April 2017 17:35 To: jonathan.agmon@ip-law.legal Cc: icannlists@winston.com; ipcdigangi@gmail.com; mary.wong@icann.org; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan wrote: "Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:" Prk comment. Not to pester a point but when we were arguing to make the TMCH public Or as an alternative to allow this WG to access certain parts of it we were told the opposite. Sincerely, Paul Keating, Esq. On Apr 29, 2017, at 5:36 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
I have to agree with Paul K. here. The TMCH is not a rights protection mechanism. It is a database containing carefully selected trademark records as lodged by their owners. Nothing more. Best, Paul From: Paul Keating [mailto:paul@law.es] Sent: Saturday, April 29, 2017 4:35 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: icannlists <icannlists@winston.com>; claudio di gangi <ipcdigangi@gmail.com>; Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan wrote: "Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:" Prk comment. Not to pester a point but when we were arguing to make the TMCH public Or as an alternative to allow this WG to access certain parts of it we were told the opposite. Sincerely, Paul Keating, Esq. On Apr 29, 2017, at 5:36 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.
Take a look at the About section of the TMCH. This is what they write. http://www.trademark-clearinghouse.com/content/what-trademark-clearinghouse And I disagree that the TMCH has to do with carefully selected trademarks. That's not correct either. And the word nothing more is also incorrect. [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (???) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com Sent: 29 April 2017 19:51 To: paul@law.es; jonathan.agmon@ip-law.legal Cc: icannlists@winston.com; ipcdigangi@gmail.com; mary.wong@icann.org; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week I have to agree with Paul K. here. The TMCH is not a rights protection mechanism. It is a database containing carefully selected trademark records as lodged by their owners. Nothing more. Best, Paul From: Paul Keating [mailto:paul@law.es] Sent: Saturday, April 29, 2017 4:35 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: icannlists <icannlists@winston.com>; claudio di gangi <ipcdigangi@gmail.com>; Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan wrote: "Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:" Prk comment. Not to pester a point but when we were arguing to make the TMCH public Or as an alternative to allow this WG to access certain parts of it we were told the opposite. Sincerely, Paul Keating, Esq. On Apr 29, 2017, at 5:36 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
Thanks Jonathan: Taking each in turn: 1. Take a look at the About section of the TMCH. This is what they write. http://www.trademark-clearinghouse.com/content/what-trademark-clearinghouse Marketing materials do not override community consensus. The long and detailed work beginning with the IRT, through the STI, to the Board, and finally in the AGB make it clear that the TMCH is a database, not an RPM. I can compile my trademarks in a database all day and it won’t do squat on its own. If it could do something on its own, the publicly accessible USPTO database would have been sufficient and we would not have built the TMCH in the first place. 2. And I disagree that the TMCH has to do with carefully selected trademarks. That's not correct either. Well, my clients carefully selected what they put in there. It wasn’t cheap. Perhaps you work with clients who weren’t careful about what they lodged. Perhaps I misspoke. If you have any good leads on clients with enough money to lodge trademarks in the TMCH with wild abandon, please pass them along! 3. And the word nothing more is also incorrect. How so? What else is the TMCH doing except accepting and validating trademarks (carefully or indiscriminately, depending on the client base) lodged by their owners and providing that data when the actual RPMs (Sunrise and Claims) require the data? Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Saturday, April 29, 2017 7:06 AM To: Paul Keating <paul@law.es>; Jonathan Agmon <jonathan.agmon@ip-law.legal>; icannlists <icannlists@winston.com> Cc: icannlists <icannlists@winston.com>; claudio di gangi <ipcdigangi@gmail.com>; Mary Wong <mary.wong@icann.org>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Take a look at the About section of the TMCH. This is what they write. http://www.trademark-clearinghouse.com/content/what-trademark-clearinghouse And I disagree that the TMCH has to do with carefully selected trademarks. That's not correct either. And the word nothing more is also incorrect. [cid:image001.png@01D2C0B9.E18861E0] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 29 April 2017 19:51 To: paul@law.es<mailto:paul@law.es>; jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> Cc: icannlists@winston.com<mailto:icannlists@winston.com>; ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>; mary.wong@icann.org<mailto:mary.wong@icann.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week I have to agree with Paul K. here. The TMCH is not a rights protection mechanism. It is a database containing carefully selected trademark records as lodged by their owners. Nothing more. Best, Paul From: Paul Keating [mailto:paul@law.es] Sent: Saturday, April 29, 2017 4:35 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>>; claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan wrote: "Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:" Prk comment. Not to pester a point but when we were arguing to make the TMCH public Or as an alternative to allow this WG to access certain parts of it we were told the opposite. Sincerely, Paul Keating, Esq. On Apr 29, 2017, at 5:36 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Sent from my iPhone On Apr 29, 2017, at 5:28 AM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan: Taking each in turn: 1. Take a look at the About section of the TMCH. This is what they write. http://www.trademark-clearinghouse.com/content/what-trademark-clearinghouse<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.trademark-clearinghouse.com%2Fcontent%2Fwhat-trademark-clearinghouse&data=02%7C01%7C%7C27f665f777e1408cbb8408d48efb4902%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290657292740112&sdata=5ekmo9Yj2mZtdnItpWbR99vl8n%2B88IGDBIF%2B1fSuQ%2B0%3D&reserved=0> Marketing materials do not override community consensus. The long and detailed work beginning with the IRT, through the STI, to the Board, and finally in the AGB make it clear that the TMCH is a database, not an RPM. I can compile my trademarks in a database all day and it won’t do squat on its own. If it could do something on its own, the publicly accessible USPTO database would have been sufficient and we would not have built the TMCH in the first place. 2. And I disagree that the TMCH has to do with carefully selected trademarks. That's not correct either. Well, my clients carefully selected what they put in there. It wasn’t cheap. Perhaps you work with clients who weren’t careful about what they lodged. Perhaps I misspoke. If you have any good leads on clients with enough money to lodge trademarks in the TMCH with wild abandon, please pass them along! 3. And the word nothing more is also incorrect. How so? What else is the TMCH doing except accepting and validating trademarks (carefully or indiscriminately, depending on the client base) lodged by their owners and providing that data when the actual RPMs (Sunrise and Claims) require the data? Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Saturday, April 29, 2017 7:06 AM To: Paul Keating <paul@law.es<mailto:paul@law.es>>; Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>>; claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Take a look at the About section of the TMCH. This is what they write. http://www.trademark-clearinghouse.com/content/what-trademark-clearinghouse<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.trademark-clearinghouse.com%2Fcontent%2Fwhat-trademark-clearinghouse&data=02%7C01%7C%7C27f665f777e1408cbb8408d48efb4902%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290657292740112&sdata=5ekmo9Yj2mZtdnItpWbR99vl8n%2B88IGDBIF%2B1fSuQ%2B0%3D&reserved=0> And I disagree that the TMCH has to do with carefully selected trademarks. That's not correct either. And the word nothing more is also incorrect. <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 29 April 2017 19:51 To: paul@law.es<mailto:paul@law.es>; jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> Cc: icannlists@winston.com<mailto:icannlists@winston.com>; ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>; mary.wong@icann.org<mailto:mary.wong@icann.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week I have to agree with Paul K. here. The TMCH is not a rights protection mechanism. It is a database containing carefully selected trademark records as lodged by their owners. Nothing more. Best, Paul From: Paul Keating [mailto:paul@law.es] Sent: Saturday, April 29, 2017 4:35 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>>; claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan wrote: "Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:" Prk comment. Not to pester a point but when we were arguing to make the TMCH public Or as an alternative to allow this WG to access certain parts of it we were told the opposite. Sincerely, Paul Keating, Esq. On Apr 29, 2017, at 5:36 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
I agree that the TMCH is a database. I'm not sure I would agree to the nothing more. There is a process to record trademarks therein and the recordation has meaning outside the fact that it is a database. [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: jsevans@adobe.com Sent: 29 April 2017 20:56 To: icannlists@winston.com Cc: jonathan.agmon@ip-law.legal; paul@law.es; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Sent from my iPhone On Apr 29, 2017, at 5:28 AM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan: Taking each in turn: 1. Take a look at the About section of the TMCH. This is what they write. http://www.trademark-clearinghouse.com/content/what-trademark-clearinghouse<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.trademark-clearinghouse.com%2Fcontent%2Fwhat-trademark-clearinghouse&data=02%7C01%7C%7C27f665f777e1408cbb8408d48efb4902%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290657292740112&sdata=5ekmo9Yj2mZtdnItpWbR99vl8n%2B88IGDBIF%2B1fSuQ%2B0%3D&reserved=0> Marketing materials do not override community consensus. The long and detailed work beginning with the IRT, through the STI, to the Board, and finally in the AGB make it clear that the TMCH is a database, not an RPM. I can compile my trademarks in a database all day and it won’t do squat on its own. If it could do something on its own, the publicly accessible USPTO database would have been sufficient and we would not have built the TMCH in the first place. 2. And I disagree that the TMCH has to do with carefully selected trademarks. That's not correct either. Well, my clients carefully selected what they put in there. It wasn’t cheap. Perhaps you work with clients who weren’t careful about what they lodged. Perhaps I misspoke. If you have any good leads on clients with enough money to lodge trademarks in the TMCH with wild abandon, please pass them along! 3. And the word nothing more is also incorrect. How so? What else is the TMCH doing except accepting and validating trademarks (carefully or indiscriminately, depending on the client base) lodged by their owners and providing that data when the actual RPMs (Sunrise and Claims) require the data? Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Saturday, April 29, 2017 7:06 AM To: Paul Keating <paul@law.es<mailto:paul@law.es>>; Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>>; claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Take a look at the About section of the TMCH. This is what they write. http://www.trademark-clearinghouse.com/content/what-trademark-clearinghouse<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.trademark-clearinghouse.com%2Fcontent%2Fwhat-trademark-clearinghouse&data=02%7C01%7C%7C27f665f777e1408cbb8408d48efb4902%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290657292740112&sdata=5ekmo9Yj2mZtdnItpWbR99vl8n%2B88IGDBIF%2B1fSuQ%2B0%3D&reserved=0> And I disagree that the TMCH has to do with carefully selected trademarks. That's not correct either. And the word nothing more is also incorrect. <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 29 April 2017 19:51 To: paul@law.es<mailto:paul@law.es>; jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> Cc: icannlists@winston.com<mailto:icannlists@winston.com>; ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>; mary.wong@icann.org<mailto:mary.wong@icann.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week I have to agree with Paul K. here. The TMCH is not a rights protection mechanism. It is a database containing carefully selected trademark records as lodged by their owners. Nothing more. Best, Paul From: Paul Keating [mailto:paul@law.es] Sent: Saturday, April 29, 2017 4:35 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>>; claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan wrote: "Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:" Prk comment. Not to pester a point but when we were arguing to make the TMCH public Or as an alternative to allow this WG to access certain parts of it we were told the opposite. Sincerely, Paul Keating, Esq. On Apr 29, 2017, at 5:36 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
Perhaps but it's existence and use present very powerful mechanisms that are applied to grant trademark holders an unprecedented preemptive right to register domain names based upon the database notwithstanding and without regard to any limitations inherent in the trademark at issue. Such a right has no basis in any law. The program was created for a purpose. My position is That it is not fit for purpose. I believe it is being abused and have asked for openness in the database to determine if that belief is supported. It is not an appropriate balanced approach to the problem Other less intrusive solutions to the problem now exist or can be created. I am in favor of exploring this. The opposition seems bent on resistance because they do y want to give up the benefit of the TMCH even though not legally supportable. Sincerely, Paul Keating, Esq
On Apr 29, 2017, at 2:57 PM, J. Scott Evans <jsevans@adobe.com> wrote:
A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims.
Sent from my iPhone
On Apr 29, 2017, at 5:28 AM, icannlists <icannlists@winston.com> wrote:
Thanks Jonathan:
Taking each in turn:
1. Take a look at the About section of the TMCH. This is what they write. http://www.trademark-clearinghouse.com/content/what-trademark-clearinghouse
Marketing materials do not override community consensus. The long and detailed work beginning with the IRT, through the STI, to the Board, and finally in the AGB make it clear that the TMCH is a database, not an RPM. I can compile my trademarks in a database all day and it won’t do squat on its own. If it could do something on its own, the publicly accessible USPTO database would have been sufficient and we would not have built the TMCH in the first place.
2. And I disagree that the TMCH has to do with carefully selected trademarks. That's not correct either.
Well, my clients carefully selected what they put in there. It wasn’t cheap. Perhaps you work with clients who weren’t careful about what they lodged. Perhaps I misspoke. If you have any good leads on clients with enough money to lodge trademarks in the TMCH with wild abandon, please pass them along!
3. And the word nothing more is also incorrect.
How so? What else is the TMCH doing except accepting and validating trademarks (carefully or indiscriminately, depending on the client base) lodged by their owners and providing that data when the actual RPMs (Sunrise and Claims) require the data?
Best, Paul
From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Saturday, April 29, 2017 7:06 AM To: Paul Keating <paul@law.es>; Jonathan Agmon <jonathan.agmon@ip-law.legal>; icannlists <icannlists@winston.com> Cc: icannlists <icannlists@winston.com>; claudio di gangi <ipcdigangi@gmail.com>; Mary Wong <mary.wong@icann.org>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Take a look at the About section of the TMCH. This is what they write. http://www.trademark-clearinghouse.com/content/what-trademark-clearinghouse
And I disagree that the TMCH has to do with carefully selected trademarks. That's not correct either.
And the word nothing more is also incorrect.
<image001.png> Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal www.ip-law.legal T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
From: icannlists@winston.com Sent: 29 April 2017 19:51 To: paul@law.es; jonathan.agmon@ip-law.legal Cc: icannlists@winston.com; ipcdigangi@gmail.com; mary.wong@icann.org; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I have to agree with Paul K. here. The TMCH is not a rights protection mechanism. It is a database containing carefully selected trademark records as lodged by their owners. Nothing more.
Best, Paul
From: Paul Keating [mailto:paul@law.es] Sent: Saturday, April 29, 2017 4:35 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: icannlists <icannlists@winston.com>; claudio di gangi <ipcdigangi@gmail.com>; Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Jonathan wrote:
"Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:"
Prk comment.
Not to pester a point but when we were arguing to make the TMCH public Or as an alternative to allow this WG to access certain parts of it we were told the opposite.
Sincerely, Paul Keating, Esq.
On Apr 29, 2017, at 5:36 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.
************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
@Paul: I am curious – and forgive me if this has been asked and answered before – but if the database were made available, how do you believe it would demonstrate that your belief is true? What is it exactly that you think you would discover there that cannot be gleaned from other public information? Michael R. From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Saturday, April 29, 2017 6:36 AM To: J. Scott Evans <jsevans@adobe.com> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Perhaps but it's existence and use present very powerful mechanisms that are applied to grant trademark holders an unprecedented preemptive right to register domain names based upon the database notwithstanding and without regard to any limitations inherent in the trademark at issue. Such a right has no basis in any law. The program was created for a purpose. My position is That it is not fit for purpose. I believe it is being abused and have asked for openness in the database to determine if that belief is supported. It is not an appropriate balanced approach to the problem Other less intrusive solutions to the problem now exist or can be created. I am in favor of exploring this. The opposition seems bent on resistance because they do y want to give up the benefit of the TMCH even though not legally supportable. Sincerely, Paul Keating, Esq On Apr 29, 2017, at 2:57 PM, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Sent from my iPhone On Apr 29, 2017, at 5:28 AM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan: Taking each in turn: 1. Take a look at the About section of the TMCH. This is what they write. http://www.trademark-clearinghouse.com/content/what-trademark-clearinghouse<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.trademark-clearinghouse.com%2Fcontent%2Fwhat-trademark-clearinghouse&data=02%7C01%7C%7C27f665f777e1408cbb8408d48efb4902%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290657292740112&sdata=5ekmo9Yj2mZtdnItpWbR99vl8n%2B88IGDBIF%2B1fSuQ%2B0%3D&reserved=0> Marketing materials do not override community consensus. The long and detailed work beginning with the IRT, through the STI, to the Board, and finally in the AGB make it clear that the TMCH is a database, not an RPM. I can compile my trademarks in a database all day and it won’t do squat on its own. If it could do something on its own, the publicly accessible USPTO database would have been sufficient and we would not have built the TMCH in the first place. 2. And I disagree that the TMCH has to do with carefully selected trademarks. That's not correct either. Well, my clients carefully selected what they put in there. It wasn’t cheap. Perhaps you work with clients who weren’t careful about what they lodged. Perhaps I misspoke. If you have any good leads on clients with enough money to lodge trademarks in the TMCH with wild abandon, please pass them along! 3. And the word nothing more is also incorrect. How so? What else is the TMCH doing except accepting and validating trademarks (carefully or indiscriminately, depending on the client base) lodged by their owners and providing that data when the actual RPMs (Sunrise and Claims) require the data? Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Saturday, April 29, 2017 7:06 AM To: Paul Keating <paul@law.es<mailto:paul@law.es>>; Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>>; claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Take a look at the About section of the TMCH. This is what they write. http://www.trademark-clearinghouse.com/content/what-trademark-clearinghouse<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.trademark-clearinghouse.com%2Fcontent%2Fwhat-trademark-clearinghouse&data=02%7C01%7C%7C27f665f777e1408cbb8408d48efb4902%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290657292740112&sdata=5ekmo9Yj2mZtdnItpWbR99vl8n%2B88IGDBIF%2B1fSuQ%2B0%3D&reserved=0> And I disagree that the TMCH has to do with carefully selected trademarks. That's not correct either. And the word nothing more is also incorrect. <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 29 April 2017 19:51 To: paul@law.es<mailto:paul@law.es>; jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> Cc: icannlists@winston.com<mailto:icannlists@winston.com>; ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>; mary.wong@icann.org<mailto:mary.wong@icann.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week I have to agree with Paul K. here. The TMCH is not a rights protection mechanism. It is a database containing carefully selected trademark records as lodged by their owners. Nothing more. Best, Paul From: Paul Keating [mailto:paul@law.es] Sent: Saturday, April 29, 2017 4:35 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>>; claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan wrote: "Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:" Prk comment. Not to pester a point but when we were arguing to make the TMCH public Or as an alternative to allow this WG to access certain parts of it we were told the opposite. Sincerely, Paul Keating, Esq. On Apr 29, 2017, at 5:36 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
Thanks Jonathan. I don’t think I need to address your specific critique of my position on GIs, other than to say that after 20 years of practice in this space my conceptual disagreements with you over them isn’t based on a lack of understand of what they are. Thank you for submitting your substantive proposal. Co-chairs – should we start responding to this proposal on the list, or should we wait and have Jonathan be able to present it on the next call (in other words, should the process be the same for his as it was for Kathy’s and mine? I’m happy either way. I just want to be sure Jonathan’s proposal is given an equal chance at being fully heard. Best to all! Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Friday, April 28, 2017 10:36 PM To: icannlists <icannlists@winston.com>; claudio di gangi <ipcdigangi@gmail.com>; Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, [cid:image001.png@01D2C0B5.39D3A170] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw (Sunrise) and https://community.icann.org/x/psrRAw (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
Paul, To keep this friendly, it is important to avoid personal attributes. And, I have practiced longer than you :) . But, I respectfully still think you are incorrect. You may have your understandibg and others may have theirs. The WG is comprised of professionals from different backgrounds, schooling and experience. I think that the process needs to take all opinions, laws, and positions into consideration when proposing a single balanced position or even when there is no consensus. Thanks, [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (����ɭ) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com Sent: 29 April 2017 19:55 To: jonathan.agmon@ip-law.legal; icannlists@winston.com; ipcdigangi@gmail.com; mary.wong@icann.org; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jonathan. I don��t think I need to address your specific critique of my position on GIs, other than to say that after 20 years of practice in this space my conceptual disagreements with you over them isn��t based on a lack of understand of what they are. Thank you for submitting your substantive proposal. Co-chairs �C should we start responding to this proposal on the list, or should we wait and have Jonathan be able to present it on the next call (in other words, should the process be the same for his as it was for Kathy��s and mine? I��m happy either way. I just want to be sure Jonathan��s proposal is given an equal chance at being fully heard. Best to all! Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Friday, April 28, 2017 10:36 PM To: icannlists <icannlists@winston.com>; claudio di gangi <ipcdigangi@gmail.com>; Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: ��GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.�� Finally, please note that my time zone is UTC+8. Thanks, [cid:image001.png@01D2C0B5.39D3A170] Jonathan Agmon (����ɭ) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren��t missing anything. The fact that the co-chairs didn��t dismiss outright the request of a few to dig a bit deeper before moving on isn��t unusual. It is very ICANN. However, that doesn��t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven��t seen that yet on this (or at least I don��t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) �C 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw (Sunrise) and https://community.icann.org/x/psrRAw (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
To weigh in here, regardless of years practiced, I sat in several windowless conference room over an 8 week period in 2009. As I pointed out below, GI's were never discussed. Early on, we did discuss allowing the TMCH to take in all kinds of IP rights and then the registries might choose which of those beyond trademarks they'd like to protect through Sunrise or TM Claims. That concept was rejected. J. Scott Sent from my iPhone On Apr 29, 2017, at 5:17 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, To keep this friendly, it is important to avoid personal attributes. And, I have practiced longer than you :) . But, I respectfully still think you are incorrect. You may have your understandibg and others may have theirs. The WG is comprised of professionals from different backgrounds, schooling and experience. I think that the process needs to take all opinions, laws, and positions into consideration when proposing a single balanced position or even when there is no consensus. Thanks, [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 29 April 2017 19:55 To: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; icannlists@winston.com<mailto:icannlists@winston.com>; ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>; mary.wong@icann.org<mailto:mary.wong@icann.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jonathan. I don’t think I need to address your specific critique of my position on GIs, other than to say that after 20 years of practice in this space my conceptual disagreements with you over them isn’t based on a lack of understand of what they are. Thank you for submitting your substantive proposal. Co-chairs – should we start responding to this proposal on the list, or should we wait and have Jonathan be able to present it on the next call (in other words, should the process be the same for his as it was for Kathy’s and mine? I’m happy either way. I just want to be sure Jonathan’s proposal is given an equal chance at being fully heard. Best to all! Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Friday, April 28, 2017 10:36 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>>; claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, [cid:image001.png@01D2C0B5.39D3A170] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7Ccf6204ff8f464b7822cc08d48ef9b8f9%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290650583090042&sdata=5LCtw79GNl7A%2FtQ%2F03rCvLiQ4HjVmgC5lXXnSaNh9cA%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7Ccf6204ff8f464b7822cc08d48ef9b8f9%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290650583090042&sdata=IErOiwizAIQHaNp82ZpPeAQrF83kBr5uWavtFjKmVdI%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7Ccf6204ff8f464b7822cc08d48ef9b8f9%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290650583090042&sdata=snsxKTLILb9oc498iPZjUiOmkhiT7i1EXlGuTnYAVYc%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
Thanks J. Scott. Not only was it nowhere to be found in the IRT, there is zero mention of them in the AGB. Jonathan, with regard to your comments in your 5:17am email, I don’t understand your comment about avoiding personal attributes. Your earlier comment “I still disagree with you basic understanding of GIs” implies that I don’t have a basic understanding of GIs. I was simply trying to convey that my disagreement with your position isn’t based on my personal ignorance. It is just good old fashioned disagreement. Oddly enough, you then go on to lecture me about the need to take on all opinions, laws, etc. Where in the world is that coming from? I have been the one advocating for you, on the list and on calls, to be able to put forward your own position – however late – even though I know that it is directly opposite to the one that I put in and trying to make sure that yours is given the same platform as mine and Kathy’s were given. If I were trying to keep other opinions out, why would I be actively advocating to let yours in? I don’t know you personally, so I admit to being a little befuddled by all of this. However, one thing you should know about me is that just because I don’t agree with your substantive position, it doesn’t mean that I don’t like you. It just means I don’t agree with your substantive position. I hope this email addresses whatever concerns about me you were trying to raise. Best, Paul From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Saturday, April 29, 2017 7:54 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: icannlists <icannlists@winston.com>; claudio di gangi <ipcdigangi@gmail.com>; Mary Wong <mary.wong@icann.org>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week To weigh in here, regardless of years practiced, I sat in several windowless conference room over an 8 week period in 2009. As I pointed out below, GI's were never discussed. Early on, we did discuss allowing the TMCH to take in all kinds of IP rights and then the registries might choose which of those beyond trademarks they'd like to protect through Sunrise or TM Claims. That concept was rejected. J. Scott Sent from my iPhone On Apr 29, 2017, at 5:17 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, To keep this friendly, it is important to avoid personal attributes. And, I have practiced longer than you :) . But, I respectfully still think you are incorrect. You may have your understandibg and others may have theirs. The WG is comprised of professionals from different backgrounds, schooling and experience. I think that the process needs to take all opinions, laws, and positions into consideration when proposing a single balanced position or even when there is no consensus. Thanks, [cid:image001.png@01D2C0E3.2B988250] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 29 April 2017 19:55 To: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; icannlists@winston.com<mailto:icannlists@winston.com>; ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>; mary.wong@icann.org<mailto:mary.wong@icann.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jonathan. I don’t think I need to address your specific critique of my position on GIs, other than to say that after 20 years of practice in this space my conceptual disagreements with you over them isn’t based on a lack of understand of what they are. Thank you for submitting your substantive proposal. Co-chairs – should we start responding to this proposal on the list, or should we wait and have Jonathan be able to present it on the next call (in other words, should the process be the same for his as it was for Kathy’s and mine? I’m happy either way. I just want to be sure Jonathan’s proposal is given an equal chance at being fully heard. Best to all! Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Friday, April 28, 2017 10:36 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>>; claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, [cid:image001.png@01D2C0E3.2B988250] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7Ccf6204ff8f464b7822cc08d48ef9b8f9%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290650583090042&sdata=5LCtw79GNl7A%2FtQ%2F03rCvLiQ4HjVmgC5lXXnSaNh9cA%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7Ccf6204ff8f464b7822cc08d48ef9b8f9%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290650583090042&sdata=IErOiwizAIQHaNp82ZpPeAQrF83kBr5uWavtFjKmVdI%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7Ccf6204ff8f464b7822cc08d48ef9b8f9%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290650583090042&sdata=snsxKTLILb9oc498iPZjUiOmkhiT7i1EXlGuTnYAVYc%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
I would think it should be treated in the same manner as all other proposals. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VLawDC "Luck is the residue of design" -- Branch Rickey Sent from my iPad On Apr 29, 2017, at 7:55 AM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan. I don��t think I need to address your specific critique of my position on GIs, other than to say that after 20 years of practice in this space my conceptual disagreements with you over them isn��t based on a lack of understand of what they are. Thank you for submitting your substantive proposal. Co-chairs �C should we start responding to this proposal on the list, or should we wait and have Jonathan be able to present it on the next call (in other words, should the process be the same for his as it was for Kathy��s and mine? I��m happy either way. I just want to be sure Jonathan��s proposal is given an equal chance at being fully heard. Best to all! Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Friday, April 28, 2017 10:36 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>>; claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: ��GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.�� Finally, please note that my time zone is UTC+8. Thanks, <image001.png> Jonathan Agmon (����ɭ) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren��t missing anything. The fact that the co-chairs didn��t dismiss outright the request of a few to dig a bit deeper before moving on isn��t unusual. It is very ICANN. However, that doesn��t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven��t seen that yet on this (or at least I don��t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) �C 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw (Sunrise) and https://community.icann.org/x/psrRAw (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
I agree J Scott. Sincerely, Paul Keating, Esq.
On Apr 29, 2017, at 3:18 PM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means.
Sent from my iPhone
On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com> wrote:
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality.
Best, Massimo From: J. Scott Evans via gnso-rpm-wg Sent: 29.04.2017 14:46 To: Jonathan Agmon Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness.
Sent from my iPhone
On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Paul,
I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue.
I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry.
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
“GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.”
Finally, please note that my time zone is UTC+8.
Thanks,
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal www.ip-law.legal T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com>; Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists <icannlists@winston.com> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Claudio.
You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one.
I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back.
Best, Paul
From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists <icannlists@winston.com> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks, Paul.
I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language.
There didn't seem to be a conclusion, hence my earlier email about next steps.
Please let me know if I missing something.
Best regards, Claudio
On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).
Best, Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Mary, all,
I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.
An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?
For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?
If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.
On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?
I'm looking forward to working with everyone on the team.
Thanks!
Best regards, Claudio
On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org> wrote: Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4. Notice of deadline for further follow up questions to the Analysis Group
5. Next steps/next meeting
Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw (Sunrise) and https://community.icann.org/x/psrRAw (Claims).
o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.
************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
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The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: jsevans@adobe.com Sent: 29 April 2017 21:18 To: Massimo@origin-gi.com Cc: jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
No one is trying to exclude a GI which is also a registered trademark. The proposal I put forward has made that very clear. Best, Paul From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jonathan Agmon Sent: Saturday, April 29, 2017 8:33 AM To: Massimo <Massimo@origin-gi.com>; J. Scott Evans <jsevans@adobe.com> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? [cid:image001.png@01D2C0E4.01E81870] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: jsevans@adobe.com<mailto:jsevans@adobe.com> Sent: 29 April 2017 21:18 To: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, [cid:image001.png@01D2C0E4.01E81870] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
On 29/4/17 6:32 am, Jonathan Agmon wrote:
The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them?
Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.
Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (???) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com Sent: 30 April 2017 20:00 To: jmalcolm@eff.org; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? [cid:image001.png@01D2C1C1.79368230] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
+1 Jonathan Héctor Ariel Manoff Vitale, Manoff & Feilbogen Viamonte 1145 10º Piso C1053ABW Buenos Aires República Argentina Te: (54-11) 4371-6100 Fax: (54-11) 4371-6365 E-mail: <mailto:amanoff@vmf.com.ar> amanoff@vmf.com.ar Web: <http://www.vmf.com.ar/> http://www.vmf.com.ar De: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] En nombre de Jonathan Agmon Enviado el: domingo, 30 de abril de 2017 22:41 Para: icannlists CC: J. Scott Evans via gnso-rpm-wg Asunto: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. J The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) <mailto:jonathan.agmon@ip-law.legal> jonathan.agmon@ip-law.legal <http://www.ip-law.legal> www.ip-law.legal T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) <mailto:jonathan.agmon@ip-law.legal> jonathan.agmon@ip-law.legal <http://www.ip-law.legal> www.ip-law.legal T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com Sent: 30 April 2017 20:00 To: jmalcolm@eff.org; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 _____ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com> Cc: Jeremy Malcolm <jmalcolm@eff.org>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, [cid:image001.png@01D2C261.9A0CEBC0] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
I disagree with the conclusory statement that “GIs are a subset of trademarks.” I wholeheartedly understand that is your position. I do not believe that is a fact. J. Scott [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com From: <gnso-rpm-wg-bounces@icann.org> on behalf of Jonathan Agmon <jonathan.agmon@ip-law.legal> Date: Monday, May 1, 2017 at 8:21 AM To: icannlists <icannlists@winston.com> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, [cid:image002.png@01D2C255.25FFDE60] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C76b5ac1811034082ecf408d490a5da5d%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636292489390241866&sdata=z56YhMfKIxzp5l%2FHx5VSgCVdGIDuz9M4BUkM%2BqUIgAA%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C76b5ac1811034082ecf408d490a5da5d%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636292489390241866&sdata=tYLMlTNs7J6HH1Hu0x%2BWytD9fKWQ6pt2WpLfgoHqJd4%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. 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It's a direct quote from the USPTO's position on GIs. Not mine and not even from the EUTM... [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:30, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: I disagree with the conclusory statement that “GIs are a subset of trademarks.” I wholeheartedly understand that is your position. I do not believe that is a fact. J. Scott <image001.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Date: Monday, May 1, 2017 at 8:21 AM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, <image002.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C76b5ac1811034082ecf408d490a5da5d%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636292489390241866&sdata=z56YhMfKIxzp5l%2FHx5VSgCVdGIDuz9M4BUkM%2BqUIgAA%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C76b5ac1811034082ecf408d490a5da5d%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636292489390241866&sdata=tYLMlTNs7J6HH1Hu0x%2BWytD9fKWQ6pt2WpLfgoHqJd4%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
On 1/5/17 5:32 pm, Jonathan Agmon wrote:
It's a direct quote from the USPTO's position on GIs. Not mine and not even from the EUTM...
Well, here's what else the U.S. has to say about GIs; this was released yesterday. Read page 22. https://ustr.gov/sites/default/files/301/2017%20Special%20301%20Report%20FIN... "The EU GI agenda remains highly concerning, especially because of the significant extent to which it undermines the scope of trademarks and other IP rights held by U.S. producers, and imposes barriers on market access for American-made goods and services that rely on the use of common names, such as parmesan or feta. First, the EU GI system raises concerns regarding the extent to which it impairs the scope of trademark protection, including with respect to prior trademark rights. Trademarks are among the most effective ways for producers and companies, including small- and medium-sized enterprises, to create value, promote their goods and services, and protect their brands, particularly with respect to food and beverage products covered by the EU GI system. Many such products are already protected by trademarks in the United States, in the EU, and around the world. ... Second, troubling aspects of the EU GI system impact access for U.S. and other producers in the EU market. The EU has identified hundreds of terms that it argues only certain EU producers should be able to use. ..." -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
Jeremy, Thanks for posting this. Best, Paul -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Monday, May 01, 2017 10:38 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 1/5/17 5:32 pm, Jonathan Agmon wrote:
It's a direct quote from the USPTO's position on GIs. Not mine and not even from the EUTM...
Well, here's what else the U.S. has to say about GIs; this was released yesterday. Read page 22. https://ustr.gov/sites/default/files/301/2017%20Special%20301%20Report%20FIN... "The EU GI agenda remains highly concerning, especially because of the significant extent to which it undermines the scope of trademarks and other IP rights held by U.S. producers, and imposes barriers on market access for American-made goods and services that rely on the use of common names, such as parmesan or feta. First, the EU GI system raises concerns regarding the extent to which it impairs the scope of trademark protection, including with respect to prior trademark rights. Trademarks are among the most effective ways for producers and companies, including small- and medium-sized enterprises, to create value, promote their goods and services, and protect their brands, particularly with respect to food and beverage products covered by the EU GI system. Many such products are already protected by trademarks in the United States, in the EU, and around the world. ... Second, troubling aspects of the EU GI system impact access for U.S. and other producers in the EU market. The EU has identified hundreds of terms that it argues only certain EU producers should be able to use. ..." -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.
+1 J Scott. From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Monday, May 01, 2017 10:30 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal>; icannlists <icannlists@winston.com> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree with the conclusory statement that “GIs are a subset of trademarks.” I wholeheartedly understand that is your position. I do not believe that is a fact. J. Scott [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Date: Monday, May 1, 2017 at 8:21 AM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, [cid:image002.png@01D2C265.F73A3C40] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C76b5ac1811034082ecf408d490a5da5d%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636292489390241866&sdata=z56YhMfKIxzp5l%2FHx5VSgCVdGIDuz9M4BUkM%2BqUIgAA%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C76b5ac1811034082ecf408d490a5da5d%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636292489390241866&sdata=tYLMlTNs7J6HH1Hu0x%2BWytD9fKWQ6pt2WpLfgoHqJd4%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
Thanks Jonathan, There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear. What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists@winston.com> Cc: Jeremy Malcolm <jmalcolm@eff.org>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, [cid:image001.png@01D2C265.5F4BBC10] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong? [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:30, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan, There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear. What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
I think you may have one too many no’s and not’s in your email. I’m not sure what you are asking. Can you rephrase without the double negative? I don’t want to answer incorrectly… From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Monday, May 01, 2017 10:35 AM To: icannlists <icannlists@winston.com> Cc: Jeremy Malcolm <jmalcolm@eff.org>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong? [cid:image001.png@01D2C267.FF7678E0] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:30, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan, There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear. What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
Jonathan, I think you are incorrect in your statement of the USPTO's position regarding GIs. First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPS *separately* classifies different types of Intellectual Property as follows: 1. Copyright and Related Rights 2. Trademarks 3. Geographical Indications 4. Industrial Designs 5. Patents 6. Layout-Designs (Topographies) of Integrated Circuits 7. Protection of Undisclosed Information (This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks). Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement." Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore *for US law purposes*, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of *sui generis *and *ad hoc *GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP. As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs. None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH. Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal
wrote:
When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong?
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180
*T* IL +972 9 950 7000
*F *IL +972 9 950 5500
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
On 1 May 2017, at 23:30, icannlists <icannlists@winston.com> wrote:
Thanks Jonathan,
There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear.
What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more.
Best,
Paul
*From:* Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal <jonathan.agmon@ip-law.legal>] *Sent:* Monday, May 01, 2017 10:22 AM *To:* icannlists <icannlists@winston.com> *Cc:* Jeremy Malcolm <jmalcolm@eff.org>; J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Paul,
Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes.
If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks?
I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated.
Thanks,
<image001.png>
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180 <(212)%20999-6180>
*T* IL +972 9 950 7000 <+972%209-950-7000>
*F *IL +972 9 950 5500 <+972%209-950-5500>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
On 1 May 2017, at 23:01, icannlists <icannlists@winston.com> wrote:
Hi Jonathan,
I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly.
Best,
Paul
*From:* Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal <jonathan.agmon@ip-law.legal>] *Sent:* Sunday, April 30, 2017 8:41 PM *To:* icannlists <icannlists@winston.com> *Cc:* Jeremy Malcolm <jmalcolm@eff.org>; J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Dear Paul,
I most certainly have not.
The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries.
What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. J
The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in.
Kind regards,
<image001.png>
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180 <(212)%20999-6180>
*T* IL +972 9 950 7000 <+972%209-950-7000>
*F *IL +972 9 950 5500 <+972%209-950-5500>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
On 1 May 2017, at 4:01, icannlists <icannlists@winston.com> wrote:
You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process.
Best,
Paul
*From:* Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal <jonathan.agmon@ip-law.legal>] *Sent:* Sunday, April 30, 2017 8:55 AM *To:* Jeremy Malcolm <jmalcolm@eff.org>; J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Paul,
Who suggested "that a separate GICH be built along with GISunrise and GIClaims"?
I didn't see such a proposal...
Perhaps you can direct us to one?
Thanks?
<image001.png>
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180 <(212)%20999-6180>
*T* IL +972 9 950 7000 <+972%209-950-7000>
*F *IL +972 9 950 5500 <+972%209-950-5500>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
*From:* icannlists@winston.com
*Sent:* 30 April 2017 20:00
*To:* jmalcolm@eff.org; gnso-rpm-wg@icann.org
*Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue.
Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome.
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Jeremy Malcolm *Sent:* Saturday, April 29, 2017 8:22 PM *To:* gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
On 29/4/17 6:32 am, Jonathan Agmon wrote:
The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them?
Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group.
--
Jeremy Malcolm
Senior Global Policy Analyst
Electronic Frontier Foundation
jmalcolm@eff.org
Tel: 415.436.9333 ext 161 <(415)%20436-9333>
:: Defending Your Rights in the Digital World ::
Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt
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+1 Greg. Thanks for the clarity. From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Monday, May 01, 2017 12:07 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: icannlists <icannlists@winston.com>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, I think you are incorrect in your statement of the USPTO's position regarding GIs. First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPS separately classifies different types of Intellectual Property as follows: 1. Copyright and Related Rights 2. Trademarks 3. Geographical Indications 4. Industrial Designs 5. Patents 6. Layout-Designs (Topographies) of Integrated Circuits 7. Protection of Undisclosed Information (This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks). Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement." Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore for US law purposes, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of sui generis and ad hoc GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP. As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs. None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong? [cid:image001.png@01D2C276.B1C59090] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:30, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan, There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear. What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
+1 Greg. From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Monday, May 01, 2017 1:33 PM To: Greg Shatan; Jonathan Agmon Cc: J. Scott Evans via gnso-rpm-wg Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1 Greg. Thanks for the clarity. From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Monday, May 01, 2017 12:07 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, I think you are incorrect in your statement of the USPTO's position regarding GIs. First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPS separately classifies different types of Intellectual Property as follows: 1. Copyright and Related Rights 2. Trademarks 3. Geographical Indications 4. Industrial Designs 5. Patents 6. Layout-Designs (Topographies) of Integrated Circuits 7. Protection of Undisclosed Information (This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks). Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement." Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore for US law purposes, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of sui generis and ad hoc GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP. As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs. None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong? [cid:image001.png@01D2C280.644CE890] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:30, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan, There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear. What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cafb2cbe930a745959f2e08d490b82153%7C09131022b7854e6d8d42916975e51262%7C0&sdata=%2FhlpYmwL4v32GvrndplfVAbYAaoswDZHzJmyN%2FErAMI%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cafb2cbe930a745959f2e08d490b82153%7C09131022b7854e6d8d42916975e51262%7C0&sdata=Ow0E0WrpSGS9dWgAUVeiJvcHZjMiuEjx6iXrCwtJolc%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. 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Greg, Jonathan, my point is not whether GIs are equivalent to trademarks. The crucial issue is another: As part of the TRIPs agreement, every country in the world should protect GIs (no obligations as to the system to do so, but still obligation to give protection). There are at lest 8.000 GIs registered in the world through transparent processes that can be easily verifiable. I would like to discuss the practical problems, if any, to recognize this is the TMCH and beyond. As someone mentioned, this might take longer to analyze within the WG, but I think it is worth embarking on such discussion. If they get recognition, GIs can be an opportunity and increase the use of new gTLDs by a multitude of actors around the world. Best, Massimo ________________________________ From: Greg Shatan<mailto:gregshatanipc@gmail.com> Sent: 01.05.2017 19:07 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, I think you are incorrect in your statement of the USPTO's position regarding GIs. First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPS separately classifies different types of Intellectual Property as follows: 1. Copyright and Related Rights 2. Trademarks 3. Geographical Indications 4. Industrial Designs 5. Patents 6. Layout-Designs (Topographies) of Integrated Circuits 7. Protection of Undisclosed Information (This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks). Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement." Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore for US law purposes, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of sui generis and ad hoc GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP. As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs. None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong? [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:30, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan, There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear. What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
I think Massimo has hit on the correct perspective. The protection mechanism for GIs is not consistent. Given this reality, the TMCH should (at this stage at least) only include those GIs that are also registered trademarks. I hereby again support Paul McGrady’s proposal. J. Scott [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com From: <gnso-rpm-wg-bounces@icann.org> on behalf of Massimo <Massimo@origin-gi.com> Date: Monday, May 1, 2017 at 11:49 PM To: Greg Shatan <gregshatanipc@gmail.com>, Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Greg, Jonathan, my point is not whether GIs are equivalent to trademarks. The crucial issue is another: As part of the TRIPs agreement, every country in the world should protect GIs (no obligations as to the system to do so, but still obligation to give protection). There are at lest 8.000 GIs registered in the world through transparent processes that can be easily verifiable. I would like to discuss the practical problems, if any, to recognize this is the TMCH and beyond. As someone mentioned, this might take longer to analyze within the WG, but I think it is worth embarking on such discussion. If they get recognition, GIs can be an opportunity and increase the use of new gTLDs by a multitude of actors around the world. Best, Massimo ________________________________ From: Greg Shatan<mailto:gregshatanipc@gmail.com> Sent: 01.05.2017 19:07 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, I think you are incorrect in your statement of the USPTO's position regarding GIs. First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPS separately classifies different types of Intellectual Property as follows: 1. Copyright and Related Rights 2. Trademarks 3. Geographical Indications 4. Industrial Designs 5. Patents 6. Layout-Designs (Topographies) of Integrated Circuits 7. Protection of Undisclosed Information (This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks). Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement." Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore for US law purposes, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of sui generis and ad hoc GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP. As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs. None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong? [cid:image002.png@01D2C308.E036D410] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:30, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan, There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear. What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C2a527ab7ab484776d14108d49127704b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636293045965650537&sdata=M7jbXsB3Nj74BKIky3iDRkI6ttwDjkknOsHRMvCZ92w%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C2a527ab7ab484776d14108d49127704b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636293045965650537&sdata=0pFwVhTxKisQ4u15Psg4NE98rm%2BA8v4XhitEgciB%2BBc%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2a527ab7ab484776d14108d49127704b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636293045965650537&sdata=WD9nLKJRx4V%2BevaqC3HiPRsHvVcwnAWzEFuMv90CAcU%3D&reserved=0>
I also support Paul's proposal for the same reason - namely that GI's do not have consistent protections globally. Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt@mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW<x-apple-data-detectors://2/2> Washington, DC 20006-1101<x-apple-data-detectors://2/2> 202.263.3284<tel:202.263.3284> direct dial 202.830.0330<tel:202.830.0330> fax 1221 Avenue of the Americas<x-apple-data-detectors://3/0> New York, New York 10020-1001<x-apple-data-detectors://3/0> 212.506.2345<tel:212.506.2345> direct dial On May 2, 2017, at 8:57 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: I think Massimo has hit on the correct perspective. The protection mechanism for GIs is not consistent. Given this reality, the TMCH should (at this stage at least) only include those GIs that are also registered trademarks. I hereby again support Paul McGrady’s proposal. J. Scott <image001.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Date: Monday, May 1, 2017 at 11:49 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Greg, Jonathan, my point is not whether GIs are equivalent to trademarks. The crucial issue is another: As part of the TRIPs agreement, every country in the world should protect GIs (no obligations as to the system to do so, but still obligation to give protection). There are at lest 8.000 GIs registered in the world through transparent processes that can be easily verifiable. I would like to discuss the practical problems, if any, to recognize this is the TMCH and beyond. As someone mentioned, this might take longer to analyze within the WG, but I think it is worth embarking on such discussion. If they get recognition, GIs can be an opportunity and increase the use of new gTLDs by a multitude of actors around the world. Best, Massimo ________________________________ From: Greg Shatan<mailto:gregshatanipc@gmail.com> Sent: 01.05.2017 19:07 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, I think you are incorrect in your statement of the USPTO's position regarding GIs. First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPS separately classifies different types of Intellectual Property as follows: 1. Copyright and Related Rights 2. Trademarks 3. Geographical Indications 4. Industrial Designs 5. Patents 6. Layout-Designs (Topographies) of Integrated Circuits 7. Protection of Undisclosed Information (This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks). Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement." Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore for US law purposes, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of sui generis and ad hoc GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP. As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs. None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong? <image002.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:30, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan, There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear. What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. 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When you say don't have consistent protection, what do you mean? They are recognized in nearly every country in the world. Is it the fact that they can be registered as trademarks in some countries and as protected GIs that bother you? How does that further the goals of the IPC? Is it not the scope of this group to protect IP owners? Am I missing something? [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 2 May 2017, at 21:31, Winterfeldt, Brian J. <BWinterfeldt@mayerbrown.com<mailto:BWinterfeldt@mayerbrown.com>> wrote: I also support Paul's proposal for the same reason - namely that GI's do not have consistent protections globally. Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt@mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW<x-apple-data-detectors://2/2> Washington, DC 20006-1101<x-apple-data-detectors://2/2> 202.263.3284<tel:202.263.3284> direct dial 202.830.0330<tel:202.830.0330> fax 1221 Avenue of the Americas<x-apple-data-detectors://3/0> New York, New York 10020-1001<x-apple-data-detectors://3/0> 212.506.2345<tel:212.506.2345> direct dial On May 2, 2017, at 8:57 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: I think Massimo has hit on the correct perspective. The protection mechanism for GIs is not consistent. Given this reality, the TMCH should (at this stage at least) only include those GIs that are also registered trademarks. I hereby again support Paul McGrady’s proposal. J. Scott <image001.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Date: Monday, May 1, 2017 at 11:49 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Greg, Jonathan, my point is not whether GIs are equivalent to trademarks. The crucial issue is another: As part of the TRIPs agreement, every country in the world should protect GIs (no obligations as to the system to do so, but still obligation to give protection). There are at lest 8.000 GIs registered in the world through transparent processes that can be easily verifiable. I would like to discuss the practical problems, if any, to recognize this is the TMCH and beyond. As someone mentioned, this might take longer to analyze within the WG, but I think it is worth embarking on such discussion. If they get recognition, GIs can be an opportunity and increase the use of new gTLDs by a multitude of actors around the world. Best, Massimo ________________________________ From: Greg Shatan<mailto:gregshatanipc@gmail.com> Sent: 01.05.2017 19:07 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, I think you are incorrect in your statement of the USPTO's position regarding GIs. First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPS separately classifies different types of Intellectual Property as follows: 1. Copyright and Related Rights 2. Trademarks 3. Geographical Indications 4. Industrial Designs 5. Patents 6. Layout-Designs (Topographies) of Integrated Circuits 7. Protection of Undisclosed Information (This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks). Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement." Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore for US law purposes, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of sui generis and ad hoc GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP. As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs. None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong? <image002.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:30, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan, There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear. What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. 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I am not a member of the IPC. Sent from my iPhone On May 2, 2017, at 6:44 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: When you say don't have consistent protection, what do you mean? They are recognized in nearly every country in the world. Is it the fact that they can be registered as trademarks in some countries and as protected GIs that bother you? How does that further the goals of the IPC? Is it not the scope of this group to protect IP owners? Am I missing something? <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 2 May 2017, at 21:31, Winterfeldt, Brian J. <BWinterfeldt@mayerbrown.com<mailto:BWinterfeldt@mayerbrown.com>> wrote: I also support Paul's proposal for the same reason - namely that GI's do not have consistent protections globally. Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt@mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW<x-apple-data-detectors://2/2> Washington, DC 20006-1101<x-apple-data-detectors://2/2> 202.263.3284<tel:202.263.3284> direct dial 202.830.0330<tel:202.830.0330> fax 1221 Avenue of the Americas<x-apple-data-detectors://3/0> New York, New York 10020-1001<x-apple-data-detectors://3/0> 212.506.2345<tel:212.506.2345> direct dial On May 2, 2017, at 8:57 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: I think Massimo has hit on the correct perspective. The protection mechanism for GIs is not consistent. Given this reality, the TMCH should (at this stage at least) only include those GIs that are also registered trademarks. I hereby again support Paul McGrady’s proposal. J. Scott <image001.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Date: Monday, May 1, 2017 at 11:49 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Greg, Jonathan, my point is not whether GIs are equivalent to trademarks. The crucial issue is another: As part of the TRIPs agreement, every country in the world should protect GIs (no obligations as to the system to do so, but still obligation to give protection). There are at lest 8.000 GIs registered in the world through transparent processes that can be easily verifiable. I would like to discuss the practical problems, if any, to recognize this is the TMCH and beyond. As someone mentioned, this might take longer to analyze within the WG, but I think it is worth embarking on such discussion. If they get recognition, GIs can be an opportunity and increase the use of new gTLDs by a multitude of actors around the world. Best, Massimo ________________________________ From: Greg Shatan<mailto:gregshatanipc@gmail.com> Sent: 01.05.2017 19:07 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, I think you are incorrect in your statement of the USPTO's position regarding GIs. First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPS separately classifies different types of Intellectual Property as follows: 1. Copyright and Related Rights 2. Trademarks 3. Geographical Indications 4. Industrial Designs 5. Patents 6. Layout-Designs (Topographies) of Integrated Circuits 7. Protection of Undisclosed Information (This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks). Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement." Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore for US law purposes, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of sui generis and ad hoc GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP. As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs. None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong? <image002.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:30, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan, There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear. What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. 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No one in this Working Group is speaking for the IPC. That includes those who are in leadership, those who are members and those who are not members. (I'll also assume that to be the case for other ICANN structures, as well, unless specifically stated.) Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Tue, May 2, 2017 at 10:48 AM, J. Scott Evans <jsevans@adobe.com> wrote:
I am not a member of the IPC.
Sent from my iPhone
On May 2, 2017, at 6:44 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
When you say don't have consistent protection, what do you mean? They are recognized in nearly every country in the world. Is it the fact that they can be registered as trademarks in some countries and as protected GIs that bother you? How does that further the goals of the IPC? Is it not the scope of this group to protect IP owners? Am I missing something?
<SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png>
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
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Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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On 2 May 2017, at 21:31, Winterfeldt, Brian J. < BWinterfeldt@mayerbrown.com> wrote:
I also support Paul's proposal for the same reason - namely that GI's do not have consistent protections globally.
*Brian J. Winterfeldt*
Co-Head of Global Brand Management and Internet Practice
Mayer Brown LLP
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Washington, DC 20006-1101
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On May 2, 2017, at 8:57 AM, J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:
I think Massimo has hit on the correct perspective. The protection mechanism for GIs is not consistent. Given this reality, the TMCH should (at this stage at least) only include those GIs that are also registered trademarks. I hereby again support Paul McGrady’s proposal.
J. Scott
<image001.gif>
*J. Scott Evans*
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Adobe. Make It an Experience.
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*From: *<gnso-rpm-wg-bounces@icann.org> on behalf of Massimo < Massimo@origin-gi.com> *Date: *Monday, May 1, 2017 at 11:49 PM *To: *Greg Shatan <gregshatanipc@gmail.com>, Jonathan Agmon < jonathan.agmon@ip-law.legal> *Cc: *"J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org> *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Greg, Jonathan,
my point is not whether GIs are equivalent to trademarks. The crucial issue is another: As part of the TRIPs agreement, every country in the world should protect GIs (no obligations as to the system to do so, but still obligation to give protection). There are at lest 8.000 GIs registered in the world through transparent processes that can be easily verifiable.
I would like to discuss the practical problems, if any, to recognize this is the TMCH and beyond. As someone mentioned, this might take longer to analyze within the WG, but I think it is worth embarking on such discussion.
If they get recognition, GIs can be an opportunity and increase the use of new gTLDs by a multitude of actors around the world.
Best, Massimo ------------------------------
*From: *Greg Shatan <gregshatanipc@gmail.com> *Sent: *01.05.2017 19:07 *To: *Jonathan Agmon <jonathan.agmon@ip-law.legal> *Cc: *J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Jonathan,
I think you are incorrect in your statement of the USPTO's position regarding GIs.
First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPS *separately* classifies different types of Intellectual Property as follows:
1. Copyright and Related Rights
2. Trademarks
3. Geographical Indications
4. Industrial Designs
5. Patents
6. Layout-Designs (Topographies) of Integrated Circuits
7. Protection of Undisclosed Information
(This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks).
Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement."
Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore *for US law purposes*, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of *sui generis *and *ad hoc *GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP.
As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs.
None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH.
Greg
*Greg Shatan *C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com
On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon < jonathan.agmon@ip-law.legal> wrote:
When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong?
<image002.png>
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
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Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
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On 1 May 2017, at 23:30, icannlists <icannlists@winston.com> wrote:
Thanks Jonathan,
There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear.
What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more.
Best,
Paul
*From:* Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal <jonathan.agmon@ip-law.legal>] *Sent:* Monday, May 01, 2017 10:22 AM *To:* icannlists <icannlists@winston.com> *Cc:* Jeremy Malcolm <jmalcolm@eff.org>; J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Paul,
Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes.
If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks?
I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated.
Thanks,
<image001.png>
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
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*F *IL +972 9 950 5500 <+972%209-950-5500>
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133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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On 1 May 2017, at 23:01, icannlists <icannlists@winston.com> wrote:
Hi Jonathan,
I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly.
Best,
Paul
*From:* Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal <jonathan.agmon@ip-law.legal>] *Sent:* Sunday, April 30, 2017 8:41 PM *To:* icannlists <icannlists@winston.com> *Cc:* Jeremy Malcolm <jmalcolm@eff.org>; J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Dear Paul,
I most certainly have not.
The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries.
What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. J
The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in.
Kind regards,
<image001.png>
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...>
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*T* IL +972 9 950 7000 <+972%209-950-7000>
*F *IL +972 9 950 5500 <+972%209-950-5500>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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On 1 May 2017, at 4:01, icannlists <icannlists@winston.com> wrote:
You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process.
Best,
Paul
*From:* Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal <jonathan.agmon@ip-law.legal>] *Sent:* Sunday, April 30, 2017 8:55 AM *To:* Jeremy Malcolm <jmalcolm@eff.org>; J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Paul,
Who suggested "that a separate GICH be built along with GISunrise and GIClaims"?
I didn't see such a proposal...
Perhaps you can direct us to one?
Thanks?
<image001.png>
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...>
*T* SG +65 6532 2577 <+65%206532%202577>
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*T* IL +972 9 950 7000 <+972%209-950-7000>
*F *IL +972 9 950 5500 <+972%209-950-5500>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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*From:* icannlists@winston.com
*Sent:* 30 April 2017 20:00
*To:* jmalcolm@eff.org; gnso-rpm-wg@icann.org
*Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue.
Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome.
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Jeremy Malcolm *Sent:* Saturday, April 29, 2017 8:22 PM *To:* gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
On 29/4/17 6:32 am, Jonathan Agmon wrote:
The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them?
Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group.
--
Jeremy Malcolm
Senior Global Policy Analyst
Electronic Frontier Foundation
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Actually, what Scott was saying is that their protection mechanism is different. And he is correct that different countries apply different ways to protect GIs but they are widely protected, as per various international agreements and national laws, and they designate origin and I am missing the point why as representatives of IP owners your would refuse to have them recorded in the TMCH if they are registered according to national law, which is different to yours. [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 2 May 2017, at 21:31, Winterfeldt, Brian J. <BWinterfeldt@mayerbrown.com<mailto:BWinterfeldt@mayerbrown.com>> wrote: I also support Paul's proposal for the same reason - namely that GI's do not have consistent protections globally. Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt@mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW<x-apple-data-detectors://2/2> Washington, DC 20006-1101<x-apple-data-detectors://2/2> 202.263.3284<tel:202.263.3284> direct dial 202.830.0330<tel:202.830.0330> fax 1221 Avenue of the Americas<x-apple-data-detectors://3/0> New York, New York 10020-1001<x-apple-data-detectors://3/0> 212.506.2345<tel:212.506.2345> direct dial On May 2, 2017, at 8:57 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: I think Massimo has hit on the correct perspective. The protection mechanism for GIs is not consistent. Given this reality, the TMCH should (at this stage at least) only include those GIs that are also registered trademarks. I hereby again support Paul McGrady’s proposal. J. Scott <image001.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Date: Monday, May 1, 2017 at 11:49 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Greg, Jonathan, my point is not whether GIs are equivalent to trademarks. The crucial issue is another: As part of the TRIPs agreement, every country in the world should protect GIs (no obligations as to the system to do so, but still obligation to give protection). There are at lest 8.000 GIs registered in the world through transparent processes that can be easily verifiable. I would like to discuss the practical problems, if any, to recognize this is the TMCH and beyond. As someone mentioned, this might take longer to analyze within the WG, but I think it is worth embarking on such discussion. If they get recognition, GIs can be an opportunity and increase the use of new gTLDs by a multitude of actors around the world. Best, Massimo ________________________________ From: Greg Shatan<mailto:gregshatanipc@gmail.com> Sent: 01.05.2017 19:07 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, I think you are incorrect in your statement of the USPTO's position regarding GIs. First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPS separately classifies different types of Intellectual Property as follows: 1. Copyright and Related Rights 2. Trademarks 3. Geographical Indications 4. Industrial Designs 5. Patents 6. Layout-Designs (Topographies) of Integrated Circuits 7. Protection of Undisclosed Information (This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks). Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement." Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore for US law purposes, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of sui generis and ad hoc GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP. As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs. None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong? <image002.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:30, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan, There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear. What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C2a527ab7ab484776d14108d49127704b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636293045965650537&sdata=M7jbXsB3Nj74BKIky3iDRkI6ttwDjkknOsHRMvCZ92w%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C2a527ab7ab484776d14108d49127704b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636293045965650537&sdata=0pFwVhTxKisQ4u15Psg4NE98rm%2BA8v4XhitEgciB%2BBc%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. 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Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C2a527ab7ab484776d14108d49127704b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636293045965650537&sdata=WD9nLKJRx4V%2BevaqC3HiPRsHvVcwnAWzEFuMv90CAcU%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. 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J. Scott, we agree on the introduction, but not on the conclusion, as I would like to have a more in depth discussion on the inclusion of GIs in the TMCH. To follow-up on the historical context sent by Mary on 25 April, I note that the IRT report states: “Most pre-launch RPMs have focused on registered trademark rights of national or multi-national effect. Whilst it is expected that the IP Clearinghouse will predominantly feature data on such rights, some registry operators may opt to include as eligible for their pre-launch RPM other types of rights, such as unregistered trademarks, company names, trading names, designations of origin, geographical names, family and personal names, etc. Therefore, the IRT recommends that the IP Clearinghouse should be structured so that it can accommodate a panoply of such rights even if they are applicable to only a small number of registries.” I would like to discuss the rationale behind this. Best, Massimo From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: 02 May 2017 14:57 To: Massimo Vittori <Massimo@origin-gi.com>; Greg Shatan <gregshatanipc@gmail.com>; Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think Massimo has hit on the correct perspective. The protection mechanism for GIs is not consistent. Given this reality, the TMCH should (at this stage at least) only include those GIs that are also registered trademarks. I hereby again support Paul McGrady’s proposal. J. Scott [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Date: Monday, May 1, 2017 at 11:49 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Greg, Jonathan, my point is not whether GIs are equivalent to trademarks. The crucial issue is another: As part of the TRIPs agreement, every country in the world should protect GIs (no obligations as to the system to do so, but still obligation to give protection). There are at lest 8.000 GIs registered in the world through transparent processes that can be easily verifiable. I would like to discuss the practical problems, if any, to recognize this is the TMCH and beyond. As someone mentioned, this might take longer to analyze within the WG, but I think it is worth embarking on such discussion. If they get recognition, GIs can be an opportunity and increase the use of new gTLDs by a multitude of actors around the world. Best, Massimo ________________________________ From: Greg Shatan<mailto:gregshatanipc@gmail.com> Sent: 01.05.2017 19:07 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, I think you are incorrect in your statement of the USPTO's position regarding GIs. First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPS separately classifies different types of Intellectual Property as follows: 1. Copyright and Related Rights 2. Trademarks 3. Geographical Indications 4. Industrial Designs 5. Patents 6. Layout-Designs (Topographies) of Integrated Circuits 7. Protection of Undisclosed Information (This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks). Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement." Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore for US law purposes, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of sui generis and ad hoc GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP. As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs. None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong? [cid:image002.png@01D2C35C.E779C350] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:30, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan, There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear. What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. 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Massimo: As I stated earlier, you are correct. As originally conceived the Clearinghouse was to be a database and verification for all kinds of IP rights. It was our concept that by having a centralized database, this would allow registries in certain countries to protect IP that was recognized in their home country. For example, a German registry could offer protection for book titles which are IP in Germany. However, through the STI process and several iterations of the Applicant Guidebook responding to community input, that concept was discarded and the Clearinghouse was limited to registered trademarks or unregistered trademarks that had been recognized by a court of competent jurisdiction and trademarks protected by statute or treaty. Not GIs. J. Scott [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com From: Massimo Vittori <Massimo@origin-gi.com> Date: Tuesday, May 2, 2017 at 7:06 AM To: "J. Scott Evans" <jsevans@adobe.com>, Greg Shatan <gregshatanipc@gmail.com>, Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week J. Scott, we agree on the introduction, but not on the conclusion, as I would like to have a more in depth discussion on the inclusion of GIs in the TMCH. To follow-up on the historical context sent by Mary on 25 April, I note that the IRT report states: “Most pre-launch RPMs have focused on registered trademark rights of national or multi-national effect. Whilst it is expected that the IP Clearinghouse will predominantly feature data on such rights, some registry operators may opt to include as eligible for their pre-launch RPM other types of rights, such as unregistered trademarks, company names, trading names, designations of origin, geographical names, family and personal names, etc. Therefore, the IRT recommends that the IP Clearinghouse should be structured so that it can accommodate a panoply of such rights even if they are applicable to only a small number of registries.” I would like to discuss the rationale behind this. Best, Massimo From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: 02 May 2017 14:57 To: Massimo Vittori <Massimo@origin-gi.com>; Greg Shatan <gregshatanipc@gmail.com>; Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think Massimo has hit on the correct perspective. The protection mechanism for GIs is not consistent. Given this reality, the TMCH should (at this stage at least) only include those GIs that are also registered trademarks. I hereby again support Paul McGrady’s proposal. J. Scott [tps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Date: Monday, May 1, 2017 at 11:49 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Greg, Jonathan, my point is not whether GIs are equivalent to trademarks. The crucial issue is another: As part of the TRIPs agreement, every country in the world should protect GIs (no obligations as to the system to do so, but still obligation to give protection). There are at lest 8.000 GIs registered in the world through transparent processes that can be easily verifiable. I would like to discuss the practical problems, if any, to recognize this is the TMCH and beyond. As someone mentioned, this might take longer to analyze within the WG, but I think it is worth embarking on such discussion. If they get recognition, GIs can be an opportunity and increase the use of new gTLDs by a multitude of actors around the world. Best, Massimo ________________________________ From: Greg Shatan<mailto:gregshatanipc@gmail.com> Sent: 01.05.2017 19:07 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, I think you are incorrect in your statement of the USPTO's position regarding GIs. First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPS separately classifies different types of Intellectual Property as follows: 1. Copyright and Related Rights 2. Trademarks 3. Geographical Indications 4. Industrial Designs 5. Patents 6. Layout-Designs (Topographies) of Integrated Circuits 7. Protection of Undisclosed Information (This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks). Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement." Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore for US law purposes, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of sui generis and ad hoc GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP. As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs. None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong? [id:image002.png@01D2C35C.E779C350] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:30, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan, There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear. What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. 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I don’t really understand whose benefit would it be making changes to TMCH on GIs… Surely not of right holders and consumers. Only because there is different approaches to their protection (however there is a common starting point: the TRIPs Agreement to which all WTO Member States adhere), it is not a reason to do such kind of limitation and excluding a part of the GIs. If a step ahead was made, why should we make a step behind? Ivett Paulovics URS Domain Dispute Case Manager --- MFSD Srl | IP Dispute Resolution Center Viale Beatrice d'Este, 20 | 20122 Milano (Italy) T +39 02 45506624 | F +39 02 91471087 M +39 329 2596103 urs@mfsd.it <mailto:responsabile@mfsd.it> | https://urs.mfsd.it <https://urs.mfsd.it/> Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392)
Il giorno 02 mag 2017, alle ore 17:11, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> ha scritto:
Massimo:
As I stated earlier, you are correct. As originally conceived the Clearinghouse was to be a database and verification for all kinds of IP rights. It was our concept that by having a centralized database, this would allow registries in certain countries to protect IP that was recognized in their home country. For example, a German registry could offer protection for book titles which are IP in Germany. However, through the STI process and several iterations of the Applicant Guidebook responding to community input, that concept was discarded and the Clearinghouse was limited to registered trademarks or unregistered trademarks that had been recognized by a court of competent jurisdiction and trademarks protected by statute or treaty. Not GIs.
J. Scott
<image001.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com <mailto:jsevans@adobe.com> www.adobe.com <http://www.adobe.com/>
From: Massimo Vittori <Massimo@origin-gi.com <mailto:Massimo@origin-gi.com>> Date: Tuesday, May 2, 2017 at 7:06 AM To: "J. Scott Evans" <jsevans@adobe.com <mailto:jsevans@adobe.com>>, Greg Shatan <gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>>, Jonathan Agmon <jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
J. Scott, we agree on the introduction, but not on the conclusion, as I would like to have a more in depth discussion on the inclusion of GIs in the TMCH.
To follow-up on the historical context sent by Mary on 25 April, I note that the IRT report states: “Most pre-launch RPMs have focused on registered trademark rights of national or multi-national effect. Whilst it is expected that the IP Clearinghouse will predominantly feature data on such rights, some registry operators may opt to include as eligible for their pre-launch RPM other types of rights, such as unregistered trademarks, company names, trading names, designations of origin, geographical names, family and personal names, etc. Therefore, the IRT recommends that the IP Clearinghouse should be structured so that it can accommodate a panoply of such rights even if they are applicable to only a small number of registries.”
I would like to discuss the rationale behind this.
Best,
Massimo
From: J. Scott Evans [mailto:jsevans@adobe.com <mailto:jsevans@adobe.com>] Sent: 02 May 2017 14:57 To: Massimo Vittori <Massimo@origin-gi.com <mailto:Massimo@origin-gi.com>>; Greg Shatan <gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>>; Jonathan Agmon <jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I think Massimo has hit on the correct perspective. The protection mechanism for GIs is not consistent. Given this reality, the TMCH should (at this stage at least) only include those GIs that are also registered trademarks. I hereby again support Paul McGrady’s proposal.
J. Scott
<image002.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com <mailto:jsevans@adobe.com> www.adobe.com <http://www.adobe.com/>
From: <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Massimo <Massimo@origin-gi.com <mailto:Massimo@origin-gi.com>> Date: Monday, May 1, 2017 at 11:49 PM To: Greg Shatan <gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>>, Jonathan Agmon <jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Greg, Jonathan,
my point is not whether GIs are equivalent to trademarks. The crucial issue is another: As part of the TRIPs agreement, every country in the world should protect GIs (no obligations as to the system to do so, but still obligation to give protection). There are at lest 8.000 GIs registered in the world through transparent processes that can be easily verifiable.
I would like to discuss the practical problems, if any, to recognize this is the TMCH and beyond. As someone mentioned, this might take longer to analyze within the WG, but I think it is worth embarking on such discussion.
If they get recognition, GIs can be an opportunity and increase the use of new gTLDs by a multitude of actors around the world.
Best, Massimo From: Greg Shatan <mailto:gregshatanipc@gmail.com> Sent: 01.05.2017 19:07 To: Jonathan Agmon <mailto:jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Jonathan,
I think you are incorrect in your statement of the USPTO's position regarding GIs.
First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPSseparately classifies different types of Intellectual Property as follows:
1. Copyright and Related Rights
2. Trademarks
3. Geographical Indications
4. Industrial Designs
5. Patents
6. Layout-Designs (Topographies) of Integrated Circuits
7. Protection of Undisclosed Information
(This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks).
Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement."
Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore for US law purposes, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of sui generis and ad hoc GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP.
As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs.
None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH.
Greg
<>Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>
On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>> wrote:
When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong?
<image003.png> Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
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8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
On 1 May 2017, at 23:30, icannlists <icannlists@winston.com <mailto:icannlists@winston.com>> wrote:
Thanks Jonathan,
There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear.
What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more.
Best, Paul
From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists@winston.com <mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org <mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Paul,
Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks?
I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks,
<image001.png> Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 <tel:+65%206532%202577> T US +1 212 999 6180 <tel:(212)%20999-6180> T IL +972 9 950 7000 <tel:+972%209-950-7000> F IL +972 9 950 5500 <tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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On 1 May 2017, at 23:01, icannlists <icannlists@winston.com <mailto:icannlists@winston.com>> wrote:
Hi Jonathan,
I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly.
Best, Paul
From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com <mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org <mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Dear Paul,
I most certainly have not.
The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries.
What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. J
The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in.
Kind regards,
<image001.png> Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 <tel:+65%206532%202577> T US +1 212 999 6180 <tel:(212)%20999-6180> T IL +972 9 950 7000 <tel:+972%209-950-7000> F IL +972 9 950 5500 <tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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On 1 May 2017, at 4:01, icannlists <icannlists@winston.com <mailto:icannlists@winston.com>> wrote:
You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process.
Best, Paul
From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org <mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com <mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Paul,
Who suggested "that a separate GICH be built along with GISunrise and GIClaims"?
I didn't see such a proposal...
Perhaps you can direct us to one?
Thanks?
<image001.png> Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 <tel:+65%206532%202577> T US +1 212 999 6180 <tel:(212)%20999-6180> T IL +972 9 950 7000 <tel:+972%209-950-7000> F IL +972 9 950 5500 <tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
From: icannlists@winston.com <mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org <mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue.
Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome.
Best, Paul
From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
On 29/4/17 6:32 am, Jonathan Agmon wrote:
The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them?
Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group.
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It would benefit the multistakeholder community if the Policy as written and adopted by the Board was implemented, rather the Policy as modified unilaterally by the TMCH operator. Best, Paul Paul D. McGrady, Jr. icannlists@winston.com<mailto:icannlists@winston.com> From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of URS - Uniform Rapid Suspension System - MFSD Sent: Tuesday, May 02, 2017 2:07 PM To: J. Scott Evans <jsevans@adobe.com> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Importance: High I don’t really understand whose benefit would it be making changes to TMCH on GIs… Surely not of right holders and consumers. Only because there is different approaches to their protection (however there is a common starting point: the TRIPs Agreement to which all WTO Member States adhere), it is not a reason to do such kind of limitation and excluding a part of the GIs. If a step ahead was made, why should we make a step behind? Ivett Paulovics URS Domain Dispute Case Manager --- MFSD Srl | IP Dispute Resolution Center Viale Beatrice d'Este, 20 | 20122 Milano (Italy) T +39 02 45506624 | F +39 02 91471087 M +39 329 2596103 urs@mfsd.it<mailto:responsabile@mfsd.it> | https://urs.mfsd.it Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392) [cid:image001.png@01D2C357.BE36D000] Il giorno 02 mag 2017, alle ore 17:11, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> ha scritto: Massimo: As I stated earlier, you are correct. As originally conceived the Clearinghouse was to be a database and verification for all kinds of IP rights. It was our concept that by having a centralized database, this would allow registries in certain countries to protect IP that was recognized in their home country. For example, a German registry could offer protection for book titles which are IP in Germany. However, through the STI process and several iterations of the Applicant Guidebook responding to community input, that concept was discarded and the Clearinghouse was limited to registered trademarks or unregistered trademarks that had been recognized by a court of competent jurisdiction and trademarks protected by statute or treaty. Not GIs. J. Scott <image001.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/> From: Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Date: Tuesday, May 2, 2017 at 7:06 AM To: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>>, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week J. Scott, we agree on the introduction, but not on the conclusion, as I would like to have a more in depth discussion on the inclusion of GIs in the TMCH. To follow-up on the historical context sent by Mary on 25 April, I note that the IRT report states: “Most pre-launch RPMs have focused on registered trademark rights of national or multi-national effect. Whilst it is expected that the IP Clearinghouse will predominantly feature data on such rights, some registry operators may opt to include as eligible for their pre-launch RPM other types of rights, such as unregistered trademarks, company names, trading names, designations of origin, geographical names, family and personal names, etc. Therefore, the IRT recommends that the IP Clearinghouse should be structured so that it can accommodate a panoply of such rights even if they are applicable to only a small number of registries.” I would like to discuss the rationale behind this. Best, Massimo From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: 02 May 2017 14:57 To: Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>; Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>; Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think Massimo has hit on the correct perspective. The protection mechanism for GIs is not consistent. Given this reality, the TMCH should (at this stage at least) only include those GIs that are also registered trademarks. I hereby again support Paul McGrady’s proposal. J. Scott <image002.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Date: Monday, May 1, 2017 at 11:49 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Greg, Jonathan, my point is not whether GIs are equivalent to trademarks. The crucial issue is another: As part of the TRIPs agreement, every country in the world should protect GIs (no obligations as to the system to do so, but still obligation to give protection). There are at lest 8.000 GIs registered in the world through transparent processes that can be easily verifiable. I would like to discuss the practical problems, if any, to recognize this is the TMCH and beyond. As someone mentioned, this might take longer to analyze within the WG, but I think it is worth embarking on such discussion. If they get recognition, GIs can be an opportunity and increase the use of new gTLDs by a multitude of actors around the world. Best, Massimo ________________________________ From: Greg Shatan<mailto:gregshatanipc@gmail.com> Sent: 01.05.2017 19:07 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, I think you are incorrect in your statement of the USPTO's position regarding GIs. First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPSseparately classifies different types of Intellectual Property as follows: 1. Copyright and Related Rights 2. Trademarks 3. Geographical Indications 4. Industrial Designs 5. Patents 6. Layout-Designs (Topographies) of Integrated Circuits 7. Protection of Undisclosed Information (This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks). Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement." Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore for US law purposes, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of sui generis and ad hoc GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP. As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs. None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong? <image003.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:30, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan, There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear. What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C2a527ab7ab484776d14108d49127704b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636293045965650537&sdata=M7jbXsB3Nj74BKIky3iDRkI6ttwDjkknOsHRMvCZ92w%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C2a527ab7ab484776d14108d49127704b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636293045965650537&sdata=0pFwVhTxKisQ4u15Psg4NE98rm%2BA8v4XhitEgciB%2BBc%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. 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Was the Policy modified unilaterally by the TMCH operator? Ivett Paulovics URS Domain Dispute Case Manager --- MFSD Srl | IP Dispute Resolution Center Viale Beatrice d'Este, 20 | 20122 Milano (Italy) T +39 02 45506624 | F +39 02 91471087 M +39 329 2596103 urs@mfsd.it <mailto:responsabile@mfsd.it> | https://urs.mfsd.it <https://urs.mfsd.it/> Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392)
Il giorno 02 mag 2017, alle ore 22:23, icannlists <icannlists@winston.com> ha scritto:
It would benefit the multistakeholder community if the Policy as written and adopted by the Board was implemented, rather the Policy as modified unilaterally by the TMCH operator.
Best, Paul
Paul D. McGrady, Jr. icannlists@winston.com <mailto:icannlists@winston.com>
From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of URS - Uniform Rapid Suspension System - MFSD Sent: Tuesday, May 02, 2017 2:07 PM To: J. Scott Evans <jsevans@adobe.com <mailto:jsevans@adobe.com>> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Importance: High
I don’t really understand whose benefit would it be making changes to TMCH on GIs… Surely not of right holders and consumers.
Only because there is different approaches to their protection (however there is a common starting point: the TRIPs Agreement to which all WTO Member States adhere), it is not a reason to do such kind of limitation and excluding a part of the GIs.
If a step ahead was made, why should we make a step behind?
Ivett Paulovics URS Domain Dispute Case Manager ---
MFSD Srl | IP Dispute Resolution Center Viale Beatrice d'Este, 20 | 20122 Milano (Italy) T +39 02 45506624 | F +39 02 91471087 M +39 329 2596103 urs@mfsd.it <mailto:responsabile@mfsd.it> | https://urs.mfsd.it <https://urs.mfsd.it/> Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392)
<image001.png>
Il giorno 02 mag 2017, alle ore 17:11, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> ha scritto:
Massimo:
As I stated earlier, you are correct. As originally conceived the Clearinghouse was to be a database and verification for all kinds of IP rights. It was our concept that by having a centralized database, this would allow registries in certain countries to protect IP that was recognized in their home country. For example, a German registry could offer protection for book titles which are IP in Germany. However, through the STI process and several iterations of the Applicant Guidebook responding to community input, that concept was discarded and the Clearinghouse was limited to registered trademarks or unregistered trademarks that had been recognized by a court of competent jurisdiction and trademarks protected by statute or treaty. Not GIs.
J. Scott
<image001.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com <mailto:jsevans@adobe.com> www.adobe.com <http://www.adobe.com/>
From: Massimo Vittori <Massimo@origin-gi.com <mailto:Massimo@origin-gi.com>> Date: Tuesday, May 2, 2017 at 7:06 AM To: "J. Scott Evans" <jsevans@adobe.com <mailto:jsevans@adobe.com>>, Greg Shatan <gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>>, Jonathan Agmon <jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
J. Scott, we agree on the introduction, but not on the conclusion, as I would like to have a more in depth discussion on the inclusion of GIs in the TMCH.
To follow-up on the historical context sent by Mary on 25 April, I note that the IRT report states: “Most pre-launch RPMs have focused on registered trademark rights of national or multi-national effect. Whilst it is expected that the IP Clearinghouse will predominantly feature data on such rights, some registry operators may opt to include as eligible for their pre-launch RPM other types of rights, such as unregistered trademarks, company names, trading names, designations of origin, geographical names, family and personal names, etc. Therefore, the IRT recommends that the IP Clearinghouse should be structured so that it can accommodate a panoply of such rights even if they are applicable to only a small number of registries.”
I would like to discuss the rationale behind this.
Best,
Massimo
From: J. Scott Evans [mailto:jsevans@adobe.com <mailto:jsevans@adobe.com>] Sent: 02 May 2017 14:57 To: Massimo Vittori <Massimo@origin-gi.com <mailto:Massimo@origin-gi.com>>; Greg Shatan <gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>>; Jonathan Agmon <jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I think Massimo has hit on the correct perspective. The protection mechanism for GIs is not consistent. Given this reality, the TMCH should (at this stage at least) only include those GIs that are also registered trademarks. I hereby again support Paul McGrady’s proposal.
J. Scott
<image002.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com <mailto:jsevans@adobe.com> www.adobe.com <http://www.adobe.com/>
From: <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Massimo <Massimo@origin-gi.com <mailto:Massimo@origin-gi.com>> Date: Monday, May 1, 2017 at 11:49 PM To: Greg Shatan <gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>>, Jonathan Agmon <jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Greg, Jonathan,
my point is not whether GIs are equivalent to trademarks. The crucial issue is another: As part of the TRIPs agreement, every country in the world should protect GIs (no obligations as to the system to do so, but still obligation to give protection). There are at lest 8.000 GIs registered in the world through transparent processes that can be easily verifiable.
I would like to discuss the practical problems, if any, to recognize this is the TMCH and beyond. As someone mentioned, this might take longer to analyze within the WG, but I think it is worth embarking on such discussion.
If they get recognition, GIs can be an opportunity and increase the use of new gTLDs by a multitude of actors around the world.
Best, Massimo From: Greg Shatan <mailto:gregshatanipc@gmail.com> Sent: 01.05.2017 19:07 To: Jonathan Agmon <mailto:jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Jonathan,
I think you are incorrect in your statement of the USPTO's position regarding GIs.
First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPSseparately classifies different types of Intellectual Property as follows:
1. Copyright and Related Rights
2. Trademarks
3. Geographical Indications
4. Industrial Designs
5. Patents
6. Layout-Designs (Topographies) of Integrated Circuits
7. Protection of Undisclosed Information
(This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks).
Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement."
Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore for US law purposes, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of sui generis and ad hoc GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP.
As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs.
None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH.
Greg
<>Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>
On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>> wrote: When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong?
<image003.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...>
T SG +65 6532 2577 <tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
On 1 May 2017, at 23:30, icannlists <icannlists@winston.com <mailto:icannlists@winston.com>> wrote:
Thanks Jonathan,
There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear.
What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more.
Best, Paul
From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists@winston.com <mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org <mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Paul,
Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks?
I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks,
<image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 <tel:+65%206532%202577> T US +1 212 999 6180 <tel:(212)%20999-6180> T IL +972 9 950 7000 <tel:+972%209-950-7000> F IL +972 9 950 5500 <tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
On 1 May 2017, at 23:01, icannlists <icannlists@winston.com <mailto:icannlists@winston.com>> wrote:
Hi Jonathan,
I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly.
Best, Paul
From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com <mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org <mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Dear Paul,
I most certainly have not.
The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries.
What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. J
The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in.
Kind regards,
<image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 <tel:+65%206532%202577> T US +1 212 999 6180 <tel:(212)%20999-6180> T IL +972 9 950 7000 <tel:+972%209-950-7000> F IL +972 9 950 5500 <tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
On 1 May 2017, at 4:01, icannlists <icannlists@winston.com <mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process.
Best, Paul
From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org <mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com <mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Paul,
Who suggested "that a separate GICH be built along with GISunrise and GIClaims"?
I didn't see such a proposal...
Perhaps you can direct us to one?
Thanks?
<image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 <tel:+65%206532%202577> T US +1 212 999 6180 <tel:(212)%20999-6180> T IL +972 9 950 7000 <tel:+972%209-950-7000> F IL +972 9 950 5500 <tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
From: icannlists@winston.com <mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org <mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue.
Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome.
Best, Paul
From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
On 29/4/17 6:32 am, Jonathan Agmon wrote:
The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them?
Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group.
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Yes, or you could say that the policy was implemented in a manner that unilaterally modified the policy. There was no basis in the policy for including GIs in the TMCH (unless they were trademarks that also happened to be GIs). Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Wed, May 3, 2017 at 8:16 AM, URS - Uniform Rapid Suspension System - MFSD <urs@mfsd.it> wrote:
Was the Policy modified unilaterally by the TMCH operator?
Ivett Paulovics URS Domain Dispute Case Manager ---
MFSD Srl | IP Dispute Resolution Center Viale Beatrice d'Este, 20 | 20122 Milano (Italy) T +39 02 45506624 <+39%2002%204550%206624> | F +39 02 91471087 <+39%2002%209147%201087> M +39 329 2596103 <+39%20329%20259%206103> urs@mfsd.it <responsabile@mfsd.it> | https://urs.mfsd.it Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392)
Il giorno 02 mag 2017, alle ore 22:23, icannlists <icannlists@winston.com> ha scritto:
It would benefit the multistakeholder community if the Policy as written and adopted by the Board was implemented, rather the Policy as modified unilaterally by the TMCH operator.
Best, Paul
Paul D. McGrady, Jr. icannlists@winston.com
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg- bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *URS - Uniform Rapid Suspension System - MFSD *Sent:* Tuesday, May 02, 2017 2:07 PM *To:* J. Scott Evans <jsevans@adobe.com> *Cc:* J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week *Importance:* High
I don’t really understand whose benefit would it be making changes to TMCH on GIs… Surely not of right holders and consumers.
Only because there is different approaches to their protection (however there is a common starting point: the TRIPs Agreement to which all WTO Member States adhere), it is not a reason to do such kind of limitation and excluding a part of the GIs.
If a step ahead was made, why should we make a step behind?
Ivett Paulovics URS Domain Dispute Case Manager ---
MFSD Srl | IP Dispute Resolution Center Viale Beatrice d'Este, 20 | 20122 Milano (Italy) T +39 02 45506624 <+39%2002%204550%206624> | F +39 02 91471087 <+39%2002%209147%201087> M +39 329 2596103 <+39%20329%20259%206103> urs@mfsd.it <responsabile@mfsd.it> | https://urs.mfsd.it Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392)
<image001.png>
Il giorno 02 mag 2017, alle ore 17:11, J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> ha scritto:
Massimo:
As I stated earlier, you are correct. As originally conceived the Clearinghouse was to be a database and verification for all kinds of IP rights. It was our concept that by having a centralized database, this would allow registries in certain countries to protect IP that was recognized in their home country. For example, a German registry could offer protection for book titles which are IP in Germany. However, through the STI process and several iterations of the Applicant Guidebook responding to community input, that concept was discarded and the Clearinghouse was limited to registered trademarks or unregistered trademarks that had been recognized by a court of competent jurisdiction and trademarks protected by statute or treaty. Not GIs.
J. Scott
<image001.gif> *J. Scott Evans* 408.536.5336 <(408)%20536-5336> (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 <(408)%20709-6162> (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com
*From: *Massimo Vittori <Massimo@origin-gi.com> *Date: *Tuesday, May 2, 2017 at 7:06 AM *To: *"J. Scott Evans" <jsevans@adobe.com>, Greg Shatan < gregshatanipc@gmail.com>, Jonathan Agmon <jonathan.agmon@ip-law.legal> *Cc: *"J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org> *Subject: *RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
J. Scott, we agree on the introduction, but not on the conclusion, as I would like to have a more in depth discussion on the inclusion of GIs in the TMCH.
To follow-up on the historical context sent by Mary on 25 April, I note that the IRT report states: *“Most pre-launch RPMs have focused on registered trademark rights of national or multi-national effect. Whilst it is expected that the IP Clearinghouse will predominantly feature data on such rights, some registry operators may opt to include as eligible for their pre-launch RPM other types of rights, such as unregistered trademarks, company names, trading names, designations of origin, geographical names, family and personal names, etc. Therefore, the IRT recommends that the IP Clearinghouse should be structured so that it can accommodate a panoply of such rights even if they are applicable to only a small number of registries.”*
I would like to discuss the rationale behind this.
Best,
Massimo
*From:* J. Scott Evans [mailto:jsevans@adobe.com <jsevans@adobe.com>] *Sent:* 02 May 2017 14:57 *To:* Massimo Vittori <Massimo@origin-gi.com>; Greg Shatan < gregshatanipc@gmail.com>; Jonathan Agmon <jonathan.agmon@ip-law.legal> *Cc:* J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I think Massimo has hit on the correct perspective. The protection mechanism for GIs is not consistent. Given this reality, the TMCH should (at this stage at least) only include those GIs that are also registered trademarks. I hereby again support Paul McGrady’s proposal.
J. Scott
<image002.gif> *J. Scott Evans* 408.536.5336 <(408)%20536-5336> (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 <(408)%20709-6162> (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com
*From: *<gnso-rpm-wg-bounces@icann.org> on behalf of Massimo < Massimo@origin-gi.com> *Date: *Monday, May 1, 2017 at 11:49 PM *To: *Greg Shatan <gregshatanipc@gmail.com>, Jonathan Agmon < jonathan.agmon@ip-law.legal> *Cc: *"J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org> *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Greg, Jonathan,
my point is not whether GIs are equivalent to trademarks. The crucial issue is another: As part of the TRIPs agreement, every country in the world should protect GIs (no obligations as to the system to do so, but still obligation to give protection). There are at lest 8.000 GIs registered in the world through transparent processes that can be easily verifiable.
I would like to discuss the practical problems, if any, to recognize this is the TMCH and beyond. As someone mentioned, this might take longer to analyze within the WG, but I think it is worth embarking on such discussion.
If they get recognition, GIs can be an opportunity and increase the use of new gTLDs by a multitude of actors around the world.
Best, Massimo ------------------------------
*From: *Greg Shatan <gregshatanipc@gmail.com> *Sent: *01.05.2017 19:07 *To: *Jonathan Agmon <jonathan.agmon@ip-law.legal> *Cc: *J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan,
I think you are incorrect in your statement of the USPTO's position regarding GIs.
First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPS *separately* classifies different types of Intellectual Property as follows:
1. Copyright and Related Rights
2. Trademarks
3. Geographical Indications
4. Industrial Designs
5. Patents
6. Layout-Designs (Topographies) of Integrated Circuits
7. Protection of Undisclosed Information
(This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks).
Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement."
Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore *for US law purposes*, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of *sui generis *and *ad hoc *GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP.
As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs.
None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH.
Greg
*Greg Shatan*C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com
On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon < jonathan.agmon@ip-law.legal> wrote:
When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong?
<image003.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...>
*T* SG +65 6532 2577 <+65%206532%202577> *T* US +1 212 999 6180 <(212)%20999-6180> *T* IL +972 9 950 7000 <+972%209-950-7000> *F* IL +972 9 950 5500 <+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
On 1 May 2017, at 23:30, icannlists <icannlists@winston.com> wrote:
Thanks Jonathan,
There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear.
What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more.
Best, Paul
*From:* Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal <jonathan.agmon@ip-law.legal>] *Sent:* Monday, May 01, 2017 10:22 AM *To:* icannlists <icannlists@winston.com> *Cc:* Jeremy Malcolm <jmalcolm@eff.org>; J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Paul,
Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks?
I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks,
<image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> *T* SG +65 6532 2577 <+65%206532%202577> *T* US +1 212 999 6180 <(212)%20999-6180> *T* IL +972 9 950 7000 <+972%209-950-7000> *F* IL +972 9 950 5500 <+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
On 1 May 2017, at 23:01, icannlists <icannlists@winston.com> wrote:
Hi Jonathan,
I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly.
Best, Paul
*From:* Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal <jonathan.agmon@ip-law.legal>] *Sent:* Sunday, April 30, 2017 8:41 PM *To:* icannlists <icannlists@winston.com> *Cc:* Jeremy Malcolm <jmalcolm@eff.org>; J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Dear Paul,
I most certainly have not.
The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries.
What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. J
The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in.
Kind regards,
<image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> *T* SG +65 6532 2577 <+65%206532%202577> *T* US +1 212 999 6180 <(212)%20999-6180> *T* IL +972 9 950 7000 <+972%209-950-7000> *F* IL +972 9 950 5500 <+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
On 1 May 2017, at 4:01, icannlists <icannlists@winston.com> wrote:
You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process.
Best, Paul
*From:* Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal <jonathan.agmon@ip-law.legal>] *Sent:* Sunday, April 30, 2017 8:55 AM *To:* Jeremy Malcolm <jmalcolm@eff.org>; J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Paul,
Who suggested "that a separate GICH be built along with GISunrise and GIClaims"?
I didn't see such a proposal...
Perhaps you can direct us to one?
Thanks?
<image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> *T* SG +65 6532 2577 <+65%206532%202577> *T* US +1 212 999 6180 <(212)%20999-6180> *T* IL +972 9 950 7000 <+972%209-950-7000> *F* IL +972 9 950 5500 <+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
*From:* icannlists@winston.com *Sent:* 30 April 2017 20:00 *To:* jmalcolm@eff.org; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue.
Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome.
Best, Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg- bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Jeremy Malcolm *Sent:* Saturday, April 29, 2017 8:22 PM *To:* gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
On 29/4/17 6:32 am, Jonathan Agmon wrote:
The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them?
Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group.
--
Jeremy Malcolm
Senior Global Policy Analyst
Electronic Frontier Foundation
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+1 [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: urs@mfsd.it Sent: 3 May 2017 03:07 To: jsevans@adobe.com Cc: Massimo@origin-gi.com; gregshatanipc@gmail.com; jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I don’t really understand whose benefit would it be making changes to TMCH on GIs… Surely not of right holders and consumers. Only because there is different approaches to their protection (however there is a common starting point: the TRIPs Agreement to which all WTO Member States adhere), it is not a reason to do such kind of limitation and excluding a part of the GIs. If a step ahead was made, why should we make a step behind? Ivett Paulovics URS Domain Dispute Case Manager --- MFSD Srl | IP Dispute Resolution Center Viale Beatrice d'Este, 20 | 20122 Milano (Italy) T +39 02 45506624 | F +39 02 91471087 M +39 329 2596103 urs@mfsd.it<mailto:responsabile@mfsd.it> | https://urs.mfsd.it Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392) [cid:5042491A-3B0F-4172-BD47-DF4A6B8798BE@office.fasano.pro] Il giorno 02 mag 2017, alle ore 17:11, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> ha scritto: Massimo: As I stated earlier, you are correct. As originally conceived the Clearinghouse was to be a database and verification for all kinds of IP rights. It was our concept that by having a centralized database, this would allow registries in certain countries to protect IP that was recognized in their home country. For example, a German registry could offer protection for book titles which are IP in Germany. However, through the STI process and several iterations of the Applicant Guidebook responding to community input, that concept was discarded and the Clearinghouse was limited to registered trademarks or unregistered trademarks that had been recognized by a court of competent jurisdiction and trademarks protected by statute or treaty. Not GIs. J. Scott <image001.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/> From: Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Date: Tuesday, May 2, 2017 at 7:06 AM To: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>>, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week J. Scott, we agree on the introduction, but not on the conclusion, as I would like to have a more in depth discussion on the inclusion of GIs in the TMCH. To follow-up on the historical context sent by Mary on 25 April, I note that the IRT report states: “Most pre-launch RPMs have focused on registered trademark rights of national or multi-national effect. Whilst it is expected that the IP Clearinghouse will predominantly feature data on such rights, some registry operators may opt to include as eligible for their pre-launch RPM other types of rights, such as unregistered trademarks, company names, trading names, designations of origin, geographical names, family and personal names, etc. Therefore, the IRT recommends that the IP Clearinghouse should be structured so that it can accommodate a panoply of such rights even if they are applicable to only a small number of registries.” I would like to discuss the rationale behind this. Best, Massimo From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: 02 May 2017 14:57 To: Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>; Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>; Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think Massimo has hit on the correct perspective. The protection mechanism for GIs is not consistent. Given this reality, the TMCH should (at this stage at least) only include those GIs that are also registered trademarks. I hereby again support Paul McGrady’s proposal. J. Scott <image002.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Date: Monday, May 1, 2017 at 11:49 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Greg, Jonathan, my point is not whether GIs are equivalent to trademarks. The crucial issue is another: As part of the TRIPs agreement, every country in the world should protect GIs (no obligations as to the system to do so, but still obligation to give protection). There are at lest 8.000 GIs registered in the world through transparent processes that can be easily verifiable. I would like to discuss the practical problems, if any, to recognize this is the TMCH and beyond. As someone mentioned, this might take longer to analyze within the WG, but I think it is worth embarking on such discussion. If they get recognition, GIs can be an opportunity and increase the use of new gTLDs by a multitude of actors around the world. Best, Massimo ________________________________ From: Greg Shatan<mailto:gregshatanipc@gmail.com> Sent: 01.05.2017 19:07 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, I think you are incorrect in your statement of the USPTO's position regarding GIs. First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPSseparately classifies different types of Intellectual Property as follows: 1. Copyright and Related Rights 2. Trademarks 3. Geographical Indications 4. Industrial Designs 5. Patents 6. Layout-Designs (Topographies) of Integrated Circuits 7. Protection of Undisclosed Information (This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks). Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement." Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore for US law purposes, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of sui generis and ad hoc GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP. As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs. None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong? <image003.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:30, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan, There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear. What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C2a527ab7ab484776d14108d49127704b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636293045965650537&sdata=M7jbXsB3Nj74BKIky3iDRkI6ttwDjkknOsHRMvCZ92w%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C2a527ab7ab484776d14108d49127704b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636293045965650537&sdata=0pFwVhTxKisQ4u15Psg4NE98rm%2BA8v4XhitEgciB%2BBc%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. 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+1 Best, Massimo ________________________________ From: URS - Uniform Rapid Suspension System - MFSD<mailto:urs@mfsd.it> Sent: 02.05.2017 21:06 To: J. Scott Evans<mailto:jsevans@adobe.com> Cc: Massimo Vittori<mailto:Massimo@origin-gi.com>; Greg Shatan<mailto:gregshatanipc@gmail.com>; Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I don’t really understand whose benefit would it be making changes to TMCH on GIs… Surely not of right holders and consumers. Only because there is different approaches to their protection (however there is a common starting point: the TRIPs Agreement to which all WTO Member States adhere), it is not a reason to do such kind of limitation and excluding a part of the GIs. If a step ahead was made, why should we make a step behind? Ivett Paulovics URS Domain Dispute Case Manager --- MFSD Srl | IP Dispute Resolution Center Viale Beatrice d'Este, 20 | 20122 Milano (Italy) T +39 02 45506624 | F +39 02 91471087 M +39 329 2596103 urs@mfsd.it<mailto:responsabile@mfsd.it> | https://urs.mfsd.it Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392) [cid:5042491A-3B0F-4172-BD47-DF4A6B8798BE@office.fasano.pro] Il giorno 02 mag 2017, alle ore 17:11, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> ha scritto: Massimo: As I stated earlier, you are correct. As originally conceived the Clearinghouse was to be a database and verification for all kinds of IP rights. It was our concept that by having a centralized database, this would allow registries in certain countries to protect IP that was recognized in their home country. For example, a German registry could offer protection for book titles which are IP in Germany. However, through the STI process and several iterations of the Applicant Guidebook responding to community input, that concept was discarded and the Clearinghouse was limited to registered trademarks or unregistered trademarks that had been recognized by a court of competent jurisdiction and trademarks protected by statute or treaty. Not GIs. J. Scott <image001.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/> From: Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Date: Tuesday, May 2, 2017 at 7:06 AM To: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>>, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week J. Scott, we agree on the introduction, but not on the conclusion, as I would like to have a more in depth discussion on the inclusion of GIs in the TMCH. To follow-up on the historical context sent by Mary on 25 April, I note that the IRT report states: “Most pre-launch RPMs have focused on registered trademark rights of national or multi-national effect. Whilst it is expected that the IP Clearinghouse will predominantly feature data on such rights, some registry operators may opt to include as eligible for their pre-launch RPM other types of rights, such as unregistered trademarks, company names, trading names, designations of origin, geographical names, family and personal names, etc. Therefore, the IRT recommends that the IP Clearinghouse should be structured so that it can accommodate a panoply of such rights even if they are applicable to only a small number of registries.” I would like to discuss the rationale behind this. Best, Massimo From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: 02 May 2017 14:57 To: Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>; Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>; Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think Massimo has hit on the correct perspective. The protection mechanism for GIs is not consistent. Given this reality, the TMCH should (at this stage at least) only include those GIs that are also registered trademarks. I hereby again support Paul McGrady’s proposal. J. Scott <image002.gif> J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Date: Monday, May 1, 2017 at 11:49 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Greg, Jonathan, my point is not whether GIs are equivalent to trademarks. The crucial issue is another: As part of the TRIPs agreement, every country in the world should protect GIs (no obligations as to the system to do so, but still obligation to give protection). There are at lest 8.000 GIs registered in the world through transparent processes that can be easily verifiable. I would like to discuss the practical problems, if any, to recognize this is the TMCH and beyond. As someone mentioned, this might take longer to analyze within the WG, but I think it is worth embarking on such discussion. If they get recognition, GIs can be an opportunity and increase the use of new gTLDs by a multitude of actors around the world. Best, Massimo ________________________________ From: Greg Shatan<mailto:gregshatanipc@gmail.com> Sent: 01.05.2017 19:07 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, I think you are incorrect in your statement of the USPTO's position regarding GIs. First, the document you rely on is clearly a document specifically written in the context of TRIPS. It is not "the USPTO's position on GIs." TRIPSseparately classifies different types of Intellectual Property as follows: 1. Copyright and Related Rights 2. Trademarks 3. Geographical Indications 4. Industrial Designs 5. Patents 6. Layout-Designs (Topographies) of Integrated Circuits 7. Protection of Undisclosed Information (This also answers your question to Paul McGrady regarding which treaties have differing treatment of GIs and trademarks). Second, this document was created in the specific context of a TRIPS-related trade dispute, where the EU contended that the US had failed to satisfy the TRIPS requirement that the US provide some form of protection to GIs. As a result, the USPTO needed to demonstrate that it was satisfying the TRIPS requirement, by showing that it was possible to protect GIs in the US in some fashion -- i.e., under trademark law. As the document states regarding the use of trademark law to protect GIs: "In addition to fulfilling all of the requirements of substantive GI and trademark obligations in TRIPS, this system meets the requirement for national treatment and the obligations in TRIPS regarding enforcement." Third, reading the document as a whole, it's the position of the USPTO is that GIs may be protected through trademark law, as the United States does, and therefore for US law purposes, GIs "may be viewed as a subset of trademarks" when determining how to protect them. It is clear that it is not the US position that the various forms of sui generis and ad hoc GI protection in various jurisdictions are a subset of trademark protection. It is also clear that it is not the US position that GIs and trademarks are indistinguishable or identical. This is consistent with TRIPS and WIPO treatment of GIs as separate and distinct types of IP. As such, it is clear that the US position is that GIs can only be protected under US law to the extent that they meet the existing standards for trademarks (including, when applicable, certification marks or collective marks). In the context of TRIPS, it is clear that the US position is that the US trademark system is sufficient to meet the TRIPS requirements for "equivalent" national protection of GIs. None of this supports the proposition that non-trademarks (and GIs are "non-trademarks" unless and until they are afforded trademark protection under trademark laws) should be introduced into the TMCH. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Mon, May 1, 2017 at 11:34 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: When you say there is no agreement on the fact the GIs are not a subset of trademarks, are you saying that the USPTO's position is also wrong? <image003.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:30, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Jonathan, There is no agreement that all GIs are a subset of trademarks. If a GI is registered as a trademark under a national law, then it is welcome in the TMCH. My proposal makes that clear. What you are proposing is not that. You are proposing that all GIs be treated as trademarks even if they are not registered as trademarks under a national law. There is no broad international consensus on this point (as evidenced by the divide within the IPC itself which is playing out on the larger PDP WG list). Further, there is zero current policy within ICANN allowing for GIs which are not otherwise registered as trademarks under a national law to be included in the policy. Zero. You are suggesting a change in ICANN Policy. That cannot be done without thinking through the implications and the potential implementation issues, and that takes time – in this case, at least months, but perhaps even more. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Monday, May 01, 2017 10:22 AM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Since GIs are a subset of trademarks, which policy exactly did you have in mind requiring changes. If the proposal only allows GIs registered in national trademark registers or their GI alternative, what different implementation you think is required aside from clarifying to the TMCH that it can record registered GIs because they are a subset of trademarks, exactly like collective marks? I fail to see the issue when the changes discussed in relation to other questions on the charter seem more far reaching and complicated. Thanks, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 23:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Jonathan, I’m not artificially amending anything. You are proposing a policy change. In ICANNland, Policy changes are always followed by implementation and, generally speaking, the PDP WG should send some signals about possible implementation along with the proposed policy. There is no such thing as suggesting a sweeping change to Policy like you are proposing, without also building out what that would look like. If you are proposing a policy change with no thought to how it will be implemented, I think most of us who have been around ICANN awhile will tell you that won’t fly. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:41 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C2a527ab7ab484776d14108d49127704b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636293045965650537&sdata=M7jbXsB3Nj74BKIky3iDRkI6ttwDjkknOsHRMvCZ92w%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C2a527ab7ab484776d14108d49127704b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636293045965650537&sdata=0pFwVhTxKisQ4u15Psg4NE98rm%2BA8v4XhitEgciB%2BBc%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. 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I think this makes our job simpler -- in this WG at least. Jonathan has clarified that the idea of a GICH, GI Sunrise or GI Claims is not before us in this Working Group. The question then is simply whether GIs as such (and not only when they are protected under trademark law as trademarks) should be included in Trademark Sunrise, Trademark Claims and (as the tool behind these RPMs) the Trademark Clearinghouse. Since it's clear that GIs are not in fact (either under US law or generally), a "subset" of trademarks, I think the answer to the question is simple. No. *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Sun, Apr 30, 2017 at 9:41 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal
wrote:
Dear Paul,
I most certainly have not.
The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries.
What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. J
The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in.
Kind regards,
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180
*T* IL +972 9 950 7000
*F *IL +972 9 950 5500
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
On 1 May 2017, at 4:01, icannlists <icannlists@winston.com> wrote:
You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process.
Best,
Paul
*From:* Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal <jonathan.agmon@ip-law.legal>] *Sent:* Sunday, April 30, 2017 8:55 AM *To:* Jeremy Malcolm <jmalcolm@eff.org>; J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Paul,
Who suggested "that a separate GICH be built along with GISunrise and GIClaims"?
I didn't see such a proposal...
Perhaps you can direct us to one?
Thanks?
<image001.png>
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180 <(212)%20999-6180>
*T* IL +972 9 950 7000 <+972%209-950-7000>
*F *IL +972 9 950 5500 <+972%209-950-5500>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
*From:* icannlists@winston.com
*Sent:* 30 April 2017 20:00
*To:* jmalcolm@eff.org; gnso-rpm-wg@icann.org
*Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue.
Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome.
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Jeremy Malcolm *Sent:* Saturday, April 29, 2017 8:22 PM *To:* gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
On 29/4/17 6:32 am, Jonathan Agmon wrote:
The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them?
Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group.
--
Jeremy Malcolm
Senior Global Policy Analyst
Electronic Frontier Foundation
jmalcolm@eff.org
Tel: 415.436.9333 ext 161 <(415)%20436-9333>
:: Defending Your Rights in the Digital World ::
Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt
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Greg, we are in disagreement on the last sentence, but I have a day job so I will respond later today to your previous post to try and centralize the discussion. Thanks, [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Monday, May 1, 2017 7:18 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: icannlists <icannlists@winston.com>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this makes our job simpler -- in this WG at least. Jonathan has clarified that the idea of a GICH, GI Sunrise or GI Claims is not before us in this Working Group. The question then is simply whether GIs as such (and not only when they are protected under trademark law as trademarks) should be included in Trademark Sunrise, Trademark Claims and (as the tool behind these RPMs) the Trademark Clearinghouse. Since it's clear that GIs are not in fact (either under US law or generally), a "subset" of trademarks, I think the answer to the question is simple. No. Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sun, Apr 30, 2017 at 9:41 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, [cid:image001.png@01D2C30D.270D4D20] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
Jonathan, I expect we might disagree on the last sentence, which is "No." As for the day job, I believe you are not alone in that regard. In any event, i don't think the issue whether you disagree with my conclusion or my analysis (which is in other emails, which I respectfully believe have already "centralized" the discussion. I assume you have read those as well). Rather, I think the issue is whether the Working Group needs to continue this discussion in order to come to broad agreement on the issue. I'll leave it to the Co-Chairs to decide when and whether to bring the discussion to a close. However, I would observe that any position that finds me, Paul McGrady, Brian Winterfeldt, Paul Keating and Jeremy Malcolm in agreement can fairly be characterized as "broad agreement." Best regards, Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Tue, May 2, 2017 at 12:27 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal
wrote:
Greg, we are in disagreement on the last sentence, but I have a day job so I will respond later today to your previous post to try and centralize the discussion.
Thanks,
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180
*T* IL +972 9 950 7000
*F *IL +972 9 950 5500
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Monday, May 1, 2017 7:18 PM *To:* Jonathan Agmon <jonathan.agmon@ip-law.legal> *Cc:* icannlists <icannlists@winston.com>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I think this makes our job simpler -- in this WG at least.
Jonathan has clarified that the idea of a GICH, GI Sunrise or GI Claims is not before us in this Working Group.
The question then is simply whether GIs as such (and not only when they are protected under trademark law as trademarks) should be included in Trademark Sunrise, Trademark Claims and (as the tool behind these RPMs) the Trademark Clearinghouse.
Since it's clear that GIs are not in fact (either under US law or generally), a "subset" of trademarks, I think the answer to the question is simple.
No.
*Greg Shatan *C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com
On Sun, Apr 30, 2017 at 9:41 PM, Jonathan Agmon < jonathan.agmon@ip-law.legal> wrote:
Dear Paul,
I most certainly have not.
The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries.
What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. J
The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in.
Kind regards,
[image: cid:image001.png@01D2C2F2.DA9863E0]
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180 <(212)%20999-6180>
*T* IL +972 9 950 7000 <+972%209-950-7000>
*F *IL +972 9 950 5500 <+972%209-950-5500>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
On 1 May 2017, at 4:01, icannlists <icannlists@winston.com> wrote:
You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process.
Best,
Paul
*From:* Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal <jonathan.agmon@ip-law.legal>] *Sent:* Sunday, April 30, 2017 8:55 AM *To:* Jeremy Malcolm <jmalcolm@eff.org>; J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Paul,
Who suggested "that a separate GICH be built along with GISunrise and GIClaims"?
I didn't see such a proposal...
Perhaps you can direct us to one?
Thanks?
<image001.png>
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180 <(212)%20999-6180>
*T* IL +972 9 950 7000 <+972%209-950-7000>
*F *IL +972 9 950 5500 <+972%209-950-5500>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
*From:* icannlists@winston.com
*Sent:* 30 April 2017 20:00
*To:* jmalcolm@eff.org; gnso-rpm-wg@icann.org
*Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue.
Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome.
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Jeremy Malcolm *Sent:* Saturday, April 29, 2017 8:22 PM *To:* gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
On 29/4/17 6:32 am, Jonathan Agmon wrote:
The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them?
Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group.
--
Jeremy Malcolm
Senior Global Policy Analyst
Electronic Frontier Foundation
jmalcolm@eff.org
Tel: 415.436.9333 ext 161 <(415)%20436-9333>
:: Defending Your Rights in the Digital World ::
Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt
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Actually it was on the previous sentence. The word “No” is not a sentence ☺ And luckily not even a GI… As to broad agreement, I would think that broad agreement should from a worldwide view as opposed to from a US view (as you so clearly analyze US law), but then again, aside from a couple of other WG members you have the majority and I am after all in UTC+8 ☺. Perhaps, we should follow Massimo’s lead and see how rights owners worldwide can enjoy a better and more comprehensive TMCH. [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, May 2, 2017 6:53 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: icannlists <icannlists@winston.com>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, I expect we might disagree on the last sentence, which is "No." As for the day job, I believe you are not alone in that regard. In any event, i don't think the issue whether you disagree with my conclusion or my analysis (which is in other emails, which I respectfully believe have already "centralized" the discussion. I assume you have read those as well). Rather, I think the issue is whether the Working Group needs to continue this discussion in order to come to broad agreement on the issue. I'll leave it to the Co-Chairs to decide when and whether to bring the discussion to a close. However, I would observe that any position that finds me, Paul McGrady, Brian Winterfeldt, Paul Keating and Jeremy Malcolm in agreement can fairly be characterized as "broad agreement." Best regards, Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Tue, May 2, 2017 at 12:27 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Greg, we are in disagreement on the last sentence, but I have a day job so I will respond later today to your previous post to try and centralize the discussion. Thanks, [cid:image001.png@01D2C322.56F66B60] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>] Sent: Monday, May 1, 2017 7:18 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this makes our job simpler -- in this WG at least. Jonathan has clarified that the idea of a GICH, GI Sunrise or GI Claims is not before us in this Working Group. The question then is simply whether GIs as such (and not only when they are protected under trademark law as trademarks) should be included in Trademark Sunrise, Trademark Claims and (as the tool behind these RPMs) the Trademark Clearinghouse. Since it's clear that GIs are not in fact (either under US law or generally), a "subset" of trademarks, I think the answer to the question is simple. No. Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sun, Apr 30, 2017 at 9:41 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, [cid:image002.png@01D2C322.56F66B60] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
Actually it was on the previous sentence. The word “No” is not a sentence ☺ And luckily not even a GI… As to broad agreement, I would think that broad agreement should be a worldwide view as opposed to a US view (as you so clearly analyze US law), but then again, aside from a couple of other WG members you have the majority and I am after all in UTC+8 ☺. Perhaps, we should follow Massimo’s lead and see how rights owners worldwide can enjoy a better and more comprehensive TMCH. [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, May 2, 2017 6:53 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, I expect we might disagree on the last sentence, which is "No." As for the day job, I believe you are not alone in that regard. In any event, i don't think the issue whether you disagree with my conclusion or my analysis (which is in other emails, which I respectfully believe have already "centralized" the discussion. I assume you have read those as well). Rather, I think the issue is whether the Working Group needs to continue this discussion in order to come to broad agreement on the issue. I'll leave it to the Co-Chairs to decide when and whether to bring the discussion to a close. However, I would observe that any position that finds me, Paul McGrady, Brian Winterfeldt, Paul Keating and Jeremy Malcolm in agreement can fairly be characterized as "broad agreement." Best regards, Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Tue, May 2, 2017 at 12:27 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Greg, we are in disagreement on the last sentence, but I have a day job so I will respond later today to your previous post to try and centralize the discussion. Thanks, [cid:image001.png@01D2C324.AF1B5A10] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>] Sent: Monday, May 1, 2017 7:18 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this makes our job simpler -- in this WG at least. Jonathan has clarified that the idea of a GICH, GI Sunrise or GI Claims is not before us in this Working Group. The question then is simply whether GIs as such (and not only when they are protected under trademark law as trademarks) should be included in Trademark Sunrise, Trademark Claims and (as the tool behind these RPMs) the Trademark Clearinghouse. Since it's clear that GIs are not in fact (either under US law or generally), a "subset" of trademarks, I think the answer to the question is simple. No. Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sun, Apr 30, 2017 at 9:41 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Dear Paul, I most certainly have not. The USPTO classifies GIs as a subset of trademarks. Most other countries on the planet view them similarly as an indication of source of goods and they are registered in either national trademark registries or specific GI registries. What I stated was that GIs registered in both national trademark registry and national GI registry should enter the TMCH. No more, no less; or as some of the other colleagues on the list would put it – period. ☺ The fact that you disagree that GIs can serve and do serve as trademarks is your own view and opinion, which you are mostly certainly entitled thereto. Thus, if you want to go ahead and suggest an alternative proposal to mine which recommends working on a GICH or other Claims/Sunrise processes, please go ahead. Otherwise, kindly don't artificially amend my proposal to include in it language I did not put in. Kind regards, [cid:image002.png@01D2C324.AF1B5A10] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. On 1 May 2017, at 4:01, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: You have Jonathan. Under current policy as implemented by the Board in the AGB, we don’t currently have a clearinghouse mechanism to hold GIs that are not also registered as trademarks nor do we have any Sunrise-like or Claims-like mechanisms to use any future GI data that may be lodged in a GICH. The TMCH took months to develop and so would a GICH. I see no reason to assume that GIs should automatically co-reside with trademarks in the TMCH nor any reason to assume that the parameters of any Claims or Sunrises based on GI data would be co-extensive with TM Claims and Sunrise. If this GIs issue persists, i.e. we do anything with it other than a recommendation asking the GNSO Council to ask the Board to tell the TMCH operator to stop letting GIs in and retire the ones they have let in, we will be developing new policy (not insisting on accurate implementation of old policy) and thus starting from scratch to address it. Any effort to develop new RPMs will add months (years?) to this process. Best, Paul From: Jonathan Agmon [mailto:jonathan.agmon@ip-law.legal] Sent: Sunday, April 30, 2017 8:55 AM To: Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, Who suggested "that a separate GICH be built along with GISunrise and GIClaims"? I didn't see such a proposal... Perhaps you can direct us to one? Thanks? <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: icannlists@winston.com<mailto:icannlists@winston.com> Sent: 30 April 2017 20:00 To: jmalcolm@eff.org<mailto:jmalcolm@eff.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Jeremy. I think the problem came up because the TMCH operator has let a few in under an assumption, even though no one can find any guidance in the GNSO Policy, IRT Recommendations, STI Report, Board Resolutions or the AGB supporting the notion. If this group doesn’t affirmatively say “stop that” then presumably the TMCH operator will keep doing it and more GIs will get in. So, unless we are happy with the status quo where the TMCH operator is letting in things no one intended to be let in, I think we have to address the issue. Even so, there are those on the list who want GIs to be welcome into the TMCH or that a separate GICH be built along with GISunrise and GIClaims. While these things are not necessary off-charter, such activities could easily add a year or more to this PDP. That is not my favorite outcome. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Saturday, April 29, 2017 8:22 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week On 29/4/17 6:32 am, Jonathan Agmon wrote: The USPTO is in the US. Perhaps the EPO's and many other Trademark Offices' positions is also relevant. My point, which I feel I am not getting through, is that the US positron is not the only one. Nearly every country on the planet has some laws relating to GI protection and I am arguing most of them view them as a form of trademarks. I don't see the reason why not to include a registered GI in the TMCH. They are after all trademarks, when registered. Can you help me out here to understand your objection and the reasons for it? If others (non US countries) see GIs as trademarks and allow them to be registered, why exclude them? Forgive my ignorance, has this discussion happened elsewhere? The proposition that GIs should be recognized alongside trademarks in the DNS is surely a far bigger one than the RPMs working group. Not the kind of thing that we could just slip in as an assumption. I for one would certainly have a lot more to say about the merits of recognizing GIs in the DNS, if that were our discussion. But I doubt it's a discussion for this working group. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
+1 Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt@mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW<x-apple-data-detectors://2/2> Washington, DC 20006-1101<x-apple-data-detectors://2/2> 202.263.3284<tel:202.263.3284> direct dial 202.830.0330<tel:202.830.0330> fax 1221 Avenue of the Americas<x-apple-data-detectors://3/0> New York, New York 10020-1001<x-apple-data-detectors://3/0> 212.506.2345<tel:212.506.2345> direct dial On Apr 29, 2017, at 10:02 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. If you have received this email in error please notify the system manager. If you are not the named addressee you should not disseminate, distribute or copy this e-mail.
The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
+1 [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com Sent: 29 April 2017 22:48 To: jsevans@adobe.com Cc: jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
+1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs *are* trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon < jonathan.agmon@ip-law.legal> wrote:
+1
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180
*T* IL +972 9 950 7000
*F *IL +972 9 950 5500
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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*From:* Massimo@origin-gi.com *Sent:* 29 April 2017 22:48 *To:* jsevans@adobe.com *Cc:* jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org *Subject:* RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level.
Best, Massimo ------------------------------ From: J. Scott Evans <jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo <Massimo@origin-gi.com> Cc: Jonathan Agmon <jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights.
Sent from my iPhone
On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com> wrote:
The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate.
An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH.
But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory?
Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation.
Best, Massimo ------------------------------ From: J. Scott Evans <jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo <Massimo@origin-gi.com> Cc: Jonathan Agmon <jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means.
Sent from my iPhone
On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com> wrote:
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality.
Best, Massimo ------------------------------ From: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness.
Sent from my iPhone
On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Paul,
I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue.
I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry.
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
“GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.”
Finally, please note that my time zone is UTC+8.
Thanks,
<SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png>
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...>
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180 <(212)%20999-6180>
*T* IL +972 9 950 7000 <+972%209-950-7000>
*F *IL +972 9 950 5500 <+972%209-950-5500>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *icannlists *Sent:* Friday, April 28, 2017 9:35 PM *To:* claudio di gangi <ipcdigangi@gmail.com>; Mary Wong < mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists < icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Claudio.
You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the *Trademark* Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one.
I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back.
Best,
Paul
*From:* claudio di gangi [mailto:ipcdigangi@gmail.com <ipcdigangi@gmail.com>] *Sent:* Friday, April 28, 2017 1:49 PM *To:* Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists < icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks, Paul.
I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language.
There didn't seem to be a conclusion, hence my earlier email about next steps.
Please let me know if I missing something.
Best regards,
Claudio
On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com> wrote:
Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org] *On Behalf Of *claudio di gangi *Sent:* Friday, April 28, 2017 12:58 PM *To:* Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Mary, all,
I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.
An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?
For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?
If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.
On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?
I'm looking forward to working with everyone on the team.
Thanks!
Best regards,
Claudio
On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org> wrote:
Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4. Notice of deadline for further follow up questions to the Analysis Group
5. Next steps/next meeting
*Notes:*
o For *Agenda Item #2*, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> (Sunrise) and https://community.icann.org/x/psrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> (Claims).
o For *Agenda Item #3*, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will *not* be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
Thanks and cheers
Mary
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I agree with Greg’s statement, with the exception of “Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion.” Actually, I think the discussion we are having as to whether GIs which do not have trademark registrations should be eligible for registration in the TMCH, and thereby eligible for Sunrise registrations and the generation of TM Claims Notices, is close to the same debate. (But I certainly agree that the creation of a new GICH is outside the bounds of our Charter.) Based upon the dialogue so far, I lean toward the side of argument that only GIs that have been trademarked should be eligible for TMCH registration. That seems best supported by the facts that have been brought forward. It also accords with my view that, notwithstanding the limited (in scope and demonstrated use) exceptions in the current policy, we should hew as closely as possible to maintaining the TMCH as a database of verified trademarks and not allow the registration of terms that fall short of that clear and simple standard of eligibility. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Greg Shatan Sent: Saturday, April 29, 2017 11:37 AM To: Jonathan Agmon Cc: J. Scott Evans via gnso-rpm-wg Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 [cid:image001.png@01D2C0E0.6B488DD0] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.8012 / Virus Database: 4769/14347 - Release Date: 04/19/17 Internal Virus Database is out of date.
I’m not so sure that it is so much outside the scope of our Charter so much as we have to decide if we want to tack another year onto Phase 1 of this PDP. I don’t. Best, Paul From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Saturday, April 29, 2017 11:03 AM To: Greg Shatan <gregshatanipc@gmail.com>; Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I agree with Greg’s statement, with the exception of “Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion.” Actually, I think the discussion we are having as to whether GIs which do not have trademark registrations should be eligible for registration in the TMCH, and thereby eligible for Sunrise registrations and the generation of TM Claims Notices, is close to the same debate. (But I certainly agree that the creation of a new GICH is outside the bounds of our Charter.) Based upon the dialogue so far, I lean toward the side of argument that only GIs that have been trademarked should be eligible for TMCH registration. That seems best supported by the facts that have been brought forward. It also accords with my view that, notwithstanding the limited (in scope and demonstrated use) exceptions in the current policy, we should hew as closely as possible to maintaining the TMCH as a database of verified trademarks and not allow the registration of terms that fall short of that clear and simple standard of eligibility. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Greg Shatan Sent: Saturday, April 29, 2017 11:37 AM To: Jonathan Agmon Cc: J. Scott Evans via gnso-rpm-wg Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 [cid:image001.png@01D2C0E5.315BF6C0] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. 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Greg, You state: Claiming that GIs are trademarks (or even "marks") is not something I can support. But, GIs are simply word marks. PARMA is a word mark, is it not? And PARMA can (and was) registered as trademarks in the US. Can you explain, what you meant? Thanks, [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Saturday, April 29, 2017 5:37 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: J. Scott Evans <jsevans@adobe.com>; Massimo <Massimo@origin-gi.com>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 [cid:image001.png@01D2C16E.822A0180] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. 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Jonathan, Responses in-line: On Sat, Apr 29, 2017 at 10:59 PM, Jonathan Agmon < jonathan.agmon@ip-law.legal> wrote:
Greg,
You state: Claiming that GIs *are* trademarks (or even "marks") is not something I can support.
But, GIs are simply word marks.
No, GIs are not "word marks." That is the point you are trying to prove. Stating it to prove the point is circular. They may be words (or designs, or combinations of words and designs). If by word "mark," you mean a trademark, then that is not true. If you don't mean a trademark, then what definition of "mark" are you using? I note that WIPO, in defining GIs, uses "sign" and not "mark". GIs may be words, and they may signify something, but they are not trademarks, unless and until they are registered as trademarks. Using the word "mark" to refer to both "trademarks" and "not trademarks" essentially strips it of meaning. PARMA is a word mark, is it not? It is not. PARMA is a word. It is not *per se* a word mark. Whether it's a "word mark" depends on whether it is registered as a trademark (putting aside "common law" marks, since they are generally not accepted into the TMCH unless they are "court-validated"). If it is used in a way that qualifies as a trademark under the trademark laws of a particular jurisdiction as a trademark of some sort, and it is registered as a trademark, then it is a trademark (or a "word mark" if you wish). If it is a GI and it is registered as such, or if it is not registered at all, it is not a trademark.
And PARMA can (and was) registered as trademarks in the US.
Yes, but that hardly proves your point. Quite the opposite. There are currently seven registrations for PARMA (without any other words) on the US trademark register. With one exception, these trademarks are clearly not functioning in any way akin to a GI. Five are "standard form" registrations (text without any type of formatting) for PARMA, owned by five different registrants for the following goods and services: 1. Hard wood flooring; Engineered wood flooring; Laminate flooring; Luxury vinyl tile. 2. Restaurant and bar services, namely, fine dining restaurant services. 3. Faucets, shower heads and faucet sets. Towel rings, clothes-drying racks; bath accessories, namely, cup holders, toothbrush holders and soap dishes. 4. Computer software for use in displaying and printing digital typeface designs and typographic ornaments. 5. Fluid pumps-namely, irrigation and drainage pumps, sewerage and sump pumps, tractor-drawn farm implements-namely, corrugators, crop toppers, and beet cleaners. One is a registration for "PARMA!" (with an exclamation point) for "Flavourings and seasonings; Food seasonings; Seasonings." One is a registration for PARMA Plus Design (consisting of the word "PARMA" inside a stylized crown) for "Ham Products." This registration is owned by CONSORZIO DEL PROSCIUTTO DI PARMA ASSOCIATION ITALY Largo Calamandrei 1/A Parma (PR) ITALY, as a Certification Mark, with the statement: "The certification mark, as used by persons authorized by the certifier, certifies the regional origin of the products and certifies that those products conform to the production process, size, shape, weight, curing, slicing and packaging requirements promulgated by the certifier." I assume this is the registration you are referring to (particularly since there is no "standard form" registration for PARMA owned by the CONSORZIO DEL PROSCIUTTO DI PARMA). The CONSORZIO DEL PROSCIUTTO DI PARMA also owns two other Certification Mark registrations containing the word PARMA: One for PARMA HAM ("Ham" disclaimed) and one for PROSCIUTTO DI PARMA ("Prosciutto" disclaimed). Both of these are standard form registrations. ( Notably, there is a registration for PARMA BRAND Plus Design (consisting of the words PARMA BRAND in a circle with a flying eagle clutching a sausage in its talons) ("Brand" disclaimed) for MEAT PRODUCTS-NAMELY, SAUSAGE, SALAMI, CAPICOLLO, LUNCH MEATS, owned by Parma Sausage Products, Inc. of Pittsburgh, PA. This registration predates all of the registrations owned by the Consorzio. Interestingly, all three of the Consorzio's applications were refused registration by the USPTO based on the PARMA BRAND Plus Design registration (which at that time included "Prosciutto" among its goods and services). *(For all those talking about "scope of protection" of text + design marks, this is a great example to consider -- the two text-only marks and the PARMA (and Crown) mark were refused registration by PARMA Brand plus a sausage-toting eagle. Clearly the scope of the PARMA Brand registration extended beyond the context of its design.) * The Consorzio del Prosciutto di Parma and Parma Sausage Products entered into a settlement agreement, whereby Parma Sausage agreed to remove "prosciutto" from its goods and services, which allowed the Consorzio applications to proceed to registration on the trademark register. Then, and only then, did the PARMA (and Crown), PARMA HAM and PROSCIUTTO DI PARMA "signs" become trademarks (assuming they were not registered as trademarks elsewhere first). These registrations could be relied on to register PARMA, PARMA HAM and PROSCIUTTO DI PARMA in the TMCH (noting there is still some disagreement in the WG whether the crown in the PARMA registration somehow disqualifies it from serving as the basis for entry of PARMA into the TMCH). Of course, each of the first six registrations above could also form the basis for entering PARMA into the TMCH (the sixth by excluding the "!"). None of these are GIs, of course. And the PARMA BRAND registration could form the basis for entering PARMA BRAND into the TMCH (again noting the disagreement on how such text plus design marks should be handled). This too, is not a GI, even if it used for meat products (but not prosciutto) made in the great city of Pittsburgh, PA. https://www.parmasausage.com/
Can you explain, what you meant?
Hope that helps. I've attached a document with some of the info referred to here....
Thanks,
You are most welcome. Greg
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180
*T* IL +972 9 950 7000
*F *IL +972 9 950 5500
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Saturday, April 29, 2017 5:37 PM *To:* Jonathan Agmon <jonathan.agmon@ip-law.legal> *Cc:* J. Scott Evans <jsevans@adobe.com>; Massimo <Massimo@origin-gi.com>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org>
*Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
+1000 to J Scott on this point:
A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims.
Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs *are* trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs.
Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks.
Greg
[As always, in my personal capacity, unless otherwise noted.]
*Greg Shatan *C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com
On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon < jonathan.agmon@ip-law.legal> wrote:
+1
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180 <(212)%20999-6180>
*T* IL +972 9 950 7000 <+972%209-950-7000>
*F *IL +972 9 950 5500 <+972%209-950-5500>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
*From:* Massimo@origin-gi.com
*Sent:* 29 April 2017 22:48
*To:* jsevans@adobe.com
*Cc:* jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org
*Subject:* RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level.
Best, Massimo ------------------------------
*From: *J. Scott Evans <jsevans@adobe.com> *Sent: *29.04.2017 16:02 *To: *Massimo <Massimo@origin-gi.com> *Cc: *Jonathan Agmon <jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights.
Sent from my iPhone
On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com> wrote:
The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate.
An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH.
But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory?
Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation.
Best, Massimo ------------------------------
*From: *J. Scott Evans <jsevans@adobe.com> *Sent: *29.04.2017 15:18 *To: *Massimo <Massimo@origin-gi.com> *Cc: *Jonathan Agmon <jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means.
Sent from my iPhone
On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com> wrote:
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality.
Best, Massimo ------------------------------
*From: *J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> *Sent: *29.04.2017 14:46 *To: *Jonathan Agmon <jonathan.agmon@ip-law.legal> *Cc: *gnso-rpm-wg@icann.org *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness.
Sent from my iPhone
On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Paul,
I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue.
I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry.
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
“GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.”
Finally, please note that my time zone is UTC+8.
Thanks,
<SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png>
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...>
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180 <(212)%20999-6180>
*T* IL +972 9 950 7000 <+972%209-950-7000>
*F *IL +972 9 950 5500 <+972%209-950-5500>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *icannlists *Sent:* Friday, April 28, 2017 9:35 PM *To:* claudio di gangi <ipcdigangi@gmail.com>; Mary Wong < mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists < icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Claudio.
You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the *Trademark* Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one.
I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back.
Best,
Paul
*From:* claudio di gangi [mailto:ipcdigangi@gmail.com <ipcdigangi@gmail.com>] *Sent:* Friday, April 28, 2017 1:49 PM *To:* Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists < icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks, Paul.
I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language.
There didn't seem to be a conclusion, hence my earlier email about next steps.
Please let me know if I missing something.
Best regards,
Claudio
On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com> wrote:
Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org] *On Behalf Of *claudio di gangi *Sent:* Friday, April 28, 2017 12:58 PM *To:* Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Mary, all,
I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.
An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?
For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?
If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.
On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?
I'm looking forward to working with everyone on the team.
Thanks!
Best regards,
Claudio
On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org> wrote:
Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4. Notice of deadline for further follow up questions to the Analysis Group
5. Next steps/next meeting
*Notes:*
o For *Agenda Item #2*, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> (Sunrise) and https://community.icann.org/x/psrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> (Claims).
o For *Agenda Item #3*, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will *not* be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
Thanks and cheers
Mary
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Greg, When I used the word “mark”, I didn’t mean “trademark”. I was making a distinction between a “mark” and a “trade mark” because I was trying to state that various forms of indicators can become trademarks. Thus, the term “mark” is not reserved to trademarks, unless it is applied in the legal sense. If it is applied in the legal sense it is synonymous with the word “sign”. WIPO’s use of the word “sign” with respect to GIs should not be an indication that WIPO specifically wished to exclude “marks” from this definition because some other (non-US) legal systems define a trademark as a “sign” capable of distinguishing goods (or services) of one undertaking from those of other undertakings. See UK’s Trade Marks Act, 1994, s. 1. Under the UK TM Act GIS are collective trademarks. It states that: “a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.” I think that the rest of the discussion is not relevant to my point, because I am advocating the we should allow GI that have been registered into the TMCH because they are signs capable of disguising goods of one undertaking from those of other undertakings. Assuming we agree to have GIs that are registered in a national trademark registry into the TMCH, why do you object to having the same signs that are registered in a national GI registry into the TMCH? Thanks, [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Sunday, April 30, 2017 8:11 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: J. Scott Evans <jsevans@adobe.com>; Massimo <Massimo@origin-gi.com>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, Responses in-line: On Sat, Apr 29, 2017 at 10:59 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Greg, You state: Claiming that GIs are trademarks (or even "marks") is not something I can support. But, GIs are simply word marks. No, GIs are not "word marks." That is the point you are trying to prove. Stating it to prove the point is circular. They may be words (or designs, or combinations of words and designs). If by word "mark," you mean a trademark, then that is not true. If you don't mean a trademark, then what definition of "mark" are you using? I note that WIPO, in defining GIs, uses "sign" and not "mark". GIs may be words, and they may signify something, but they are not trademarks, unless and until they are registered as trademarks. Using the word "mark" to refer to both "trademarks" and "not trademarks" essentially strips it of meaning. PARMA is a word mark, is it not? It is not. PARMA is a word. It is not per se a word mark. Whether it's a "word mark" depends on whether it is registered as a trademark (putting aside "common law" marks, since they are generally not accepted into the TMCH unless they are "court-validated"). If it is used in a way that qualifies as a trademark under the trademark laws of a particular jurisdiction as a trademark of some sort, and it is registered as a trademark, then it is a trademark (or a "word mark" if you wish). If it is a GI and it is registered as such, or if it is not registered at all, it is not a trademark. And PARMA can (and was) registered as trademarks in the US. Yes, but that hardly proves your point. Quite the opposite. There are currently seven registrations for PARMA (without any other words) on the US trademark register. With one exception, these trademarks are clearly not functioning in any way akin to a GI. Five are "standard form" registrations (text without any type of formatting) for PARMA, owned by five different registrants for the following goods and services: 1. Hard wood flooring; Engineered wood flooring; Laminate flooring; Luxury vinyl tile. 2. Restaurant and bar services, namely, fine dining restaurant services. 3. Faucets, shower heads and faucet sets. Towel rings, clothes-drying racks; bath accessories, namely, cup holders, toothbrush holders and soap dishes. 4. Computer software for use in displaying and printing digital typeface designs and typographic ornaments. 5. Fluid pumps-namely, irrigation and drainage pumps, sewerage and sump pumps, tractor-drawn farm implements-namely, corrugators, crop toppers, and beet cleaners. One is a registration for "PARMA!" (with an exclamation point) for "Flavourings and seasonings; Food seasonings; Seasonings." One is a registration for PARMA Plus Design (consisting of the word "PARMA" inside a stylized crown) for "Ham Products." This registration is owned by CONSORZIO DEL PROSCIUTTO DI PARMA ASSOCIATION ITALY Largo Calamandrei 1/A Parma (PR) ITALY, as a Certification Mark, with the statement: "The certification mark, as used by persons authorized by the certifier, certifies the regional origin of the products and certifies that those products conform to the production process, size, shape, weight, curing, slicing and packaging requirements promulgated by the certifier." I assume this is the registration you are referring to (particularly since there is no "standard form" registration for PARMA owned by the CONSORZIO DEL PROSCIUTTO DI PARMA). The CONSORZIO DEL PROSCIUTTO DI PARMA also owns two other Certification Mark registrations containing the word PARMA: One for PARMA HAM ("Ham" disclaimed) and one for PROSCIUTTO DI PARMA ("Prosciutto" disclaimed). Both of these are standard form registrations. ( Notably, there is a registration for PARMA BRAND Plus Design (consisting of the words PARMA BRAND in a circle with a flying eagle clutching a sausage in its talons) ("Brand" disclaimed) for MEAT PRODUCTS-NAMELY, SAUSAGE, SALAMI, CAPICOLLO, LUNCH MEATS, owned by Parma Sausage Products, Inc. of Pittsburgh, PA. This registration predates all of the registrations owned by the Consorzio. Interestingly, all three of the Consorzio's applications were refused registration by the USPTO based on the PARMA BRAND Plus Design registration (which at that time included "Prosciutto" among its goods and services). (For all those talking about "scope of protection" of text + design marks, this is a great example to consider -- the two text-only marks and the PARMA (and Crown) mark were refused registration by PARMA Brand plus a sausage-toting eagle. Clearly the scope of the PARMA Brand registration extended beyond the context of its design.) The Consorzio del Prosciutto di Parma and Parma Sausage Products entered into a settlement agreement, whereby Parma Sausage agreed to remove "prosciutto" from its goods and services, which allowed the Consorzio applications to proceed to registration on the trademark register. Then, and only then, did the PARMA (and Crown), PARMA HAM and PROSCIUTTO DI PARMA "signs" become trademarks (assuming they were not registered as trademarks elsewhere first). These registrations could be relied on to register PARMA, PARMA HAM and PROSCIUTTO DI PARMA in the TMCH (noting there is still some disagreement in the WG whether the crown in the PARMA registration somehow disqualifies it from serving as the basis for entry of PARMA into the TMCH). Of course, each of the first six registrations above could also form the basis for entering PARMA into the TMCH (the sixth by excluding the "!"). None of these are GIs, of course. And the PARMA BRAND registration could form the basis for entering PARMA BRAND into the TMCH (again noting the disagreement on how such text plus design marks should be handled). This too, is not a GI, even if it used for meat products (but not prosciutto) made in the great city of Pittsburgh, PA. https://www.parmasausage.com/ Can you explain, what you meant? Hope that helps. I've attached a document with some of the info referred to here.... Thanks, You are most welcome. Greg [cid:image001.png@01D2C19D.64CF2910] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>] Sent: Saturday, April 29, 2017 5:37 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 [cid:image001.png@01D2C19D.64CF2910] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. 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This is a great thread and I find Greg's explanations are very helpful. Question: are GI's registered in a "GI registry" but NOT in a trademark registry entitled to treaty protections afforded to registered trademarks? Or are they treated "somewhat" differently as, for example, NGOs are treated under 6ter? Sent from my iPad
On 30 Apr 2017, at 11:28, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Greg,
When I used the word “mark”, I didn’t mean “trademark”. I was making a distinction between a “mark” and a “trade mark” because I was trying to state that various forms of indicators can become trademarks. Thus, the term “mark” is not reserved to trademarks, unless it is applied in the legal sense. If it is applied in the legal sense it is synonymous with the word “sign”.
WIPO’s use of the word “sign” with respect to GIs should not be an indication that WIPO specifically wished to exclude “marks” from this definition because some other (non-US) legal systems define a trademark as a “sign” capable of distinguishing goods (or services) of one undertaking from those of other undertakings. See UK’s Trade Marks Act, 1994, s. 1. Under the UK TM Act GIS are collective trademarks. It states that: “a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.”
I think that the rest of the discussion is not relevant to my point, because I am advocating the we should allow GI that have been registered into the TMCH because they are signs capable of disguising goods of one undertaking from those of other undertakings.
Assuming we agree to have GIs that are registered in a national trademark registry into the TMCH, why do you object to having the same signs that are registered in a national GI registry into the TMCH?
Thanks,
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal www.ip-law.legal T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Sunday, April 30, 2017 8:11 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: J. Scott Evans <jsevans@adobe.com>; Massimo <Massimo@origin-gi.com>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Jonathan,
Responses in-line:
On Sat, Apr 29, 2017 at 10:59 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote: Greg,
You state: Claiming that GIs are trademarks (or even "marks") is not something I can support. But, GIs are simply word marks.
No, GIs are not "word marks." That is the point you are trying to prove. Stating it to prove the point is circular. They may be words (or designs, or combinations of words and designs). If by word "mark," you mean a trademark, then that is not true. If you don't mean a trademark, then what definition of "mark" are you using? I note that WIPO, in defining GIs, uses "sign" and not "mark". GIs may be words, and they may signify something, but they are not trademarks, unless and until they are registered as trademarks. Using the word "mark" to refer to both "trademarks" and "not trademarks" essentially strips it of meaning.
PARMA is a word mark, is it not?
It is not. PARMA is a word. It is not per se a word mark. Whether it's a "word mark" depends on whether it is registered as a trademark (putting aside "common law" marks, since they are generally not accepted into the TMCH unless they are "court-validated"). If it is used in a way that qualifies as a trademark under the trademark laws of a particular jurisdiction as a trademark of some sort, and it is registered as a trademark, then it is a trademark (or a "word mark" if you wish). If it is a GI and it is registered as such, or if it is not registered at all, it is not a trademark.
And PARMA can (and was) registered as trademarks in the US.
Yes, but that hardly proves your point. Quite the opposite. There are currently seven registrations for PARMA (without any other words) on the US trademark register. With one exception, these trademarks are clearly not functioning in any way akin to a GI.
Five are "standard form" registrations (text without any type of formatting) for PARMA, owned by five different registrants for the following goods and services: 1. Hard wood flooring; Engineered wood flooring; Laminate flooring; Luxury vinyl tile. 2. Restaurant and bar services, namely, fine dining restaurant services. 3. Faucets, shower heads and faucet sets. Towel rings, clothes-drying racks; bath accessories, namely, cup holders, toothbrush holders and soap dishes. 4. Computer software for use in displaying and printing digital typeface designs and typographic ornaments. 5. Fluid pumps-namely, irrigation and drainage pumps, sewerage and sump pumps, tractor-drawn farm implements-namely, corrugators, crop toppers, and beet cleaners. One is a registration for "PARMA!" (with an exclamation point) for "Flavourings and seasonings; Food seasonings; Seasonings." One is a registration for PARMA Plus Design (consisting of the word "PARMA" inside a stylized crown) for "Ham Products." This registration is owned by CONSORZIO DEL PROSCIUTTO DI PARMA ASSOCIATION ITALY Largo Calamandrei 1/A Parma (PR) ITALY, as a Certification Mark, with the statement: "The certification mark, as used by persons authorized by the certifier, certifies the regional origin of the products and certifies that those products conform to the production process, size, shape, weight, curing, slicing and packaging requirements promulgated by the certifier." I assume this is the registration you are referring to (particularly since there is no "standard form" registration for PARMA owned by the CONSORZIO DEL PROSCIUTTO DI PARMA). The CONSORZIO DEL PROSCIUTTO DI PARMA also owns two other Certification Mark registrations containing the word PARMA: One for PARMA HAM ("Ham" disclaimed) and one for PROSCIUTTO DI PARMA ("Prosciutto" disclaimed). Both of these are standard form registrations. ( Notably, there is a registration for PARMA BRAND Plus Design (consisting of the words PARMA BRAND in a circle with a flying eagle clutching a sausage in its talons) ("Brand" disclaimed) for MEAT PRODUCTS-NAMELY, SAUSAGE, SALAMI, CAPICOLLO, LUNCH MEATS, owned by Parma Sausage Products, Inc. of Pittsburgh, PA. This registration predates all of the registrations owned by the Consorzio. Interestingly, all three of the Consorzio's applications were refused registration by the USPTO based on the PARMA BRAND Plus Design registration (which at that time included "Prosciutto" among its goods and services). (For all those talking about "scope of protection" of text + design marks, this is a great example to consider -- the two text-only marks and the PARMA (and Crown) mark were refused registration by PARMA Brand plus a sausage-toting eagle. Clearly the scope of the PARMA Brand registration extended beyond the context of its design.) The Consorzio del Prosciutto di Parma and Parma Sausage Products entered into a settlement agreement, whereby Parma Sausage agreed to remove "prosciutto" from its goods and services, which allowed the Consorzio applications to proceed to registration on the trademark register. Then, and only then, did the PARMA (and Crown), PARMA HAM and PROSCIUTTO DI PARMA "signs" become trademarks (assuming they were not registered as trademarks elsewhere first). These registrations could be relied on to register PARMA, PARMA HAM and PROSCIUTTO DI PARMA in the TMCH (noting there is still some disagreement in the WG whether the crown in the PARMA registration somehow disqualifies it from serving as the basis for entry of PARMA into the TMCH). Of course, each of the first six registrations above could also form the basis for entering PARMA into the TMCH (the sixth by excluding the "!"). None of these are GIs, of course. And the PARMA BRAND registration could form the basis for entering PARMA BRAND into the TMCH (again noting the disagreement on how such text plus design marks should be handled). This too, is not a GI, even if it used for meat products (but not prosciutto) made in the great city of Pittsburgh, PA. https://www.parmasausage.com/
Can you explain, what you meant?
Hope that helps. I've attached a document with some of the info referred to here....
Thanks,
You are most welcome.
Greg
<image001.png> Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal www.ip-law.legal T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Saturday, April 29, 2017 5:37 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: J. Scott Evans <jsevans@adobe.com>; Massimo <Massimo@origin-gi.com>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
+1000 to J Scott on this point:
A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims.
Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs.
Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks.
Greg [As always, in my personal capacity, unless otherwise noted.]
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote: +1
<image001.png> Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal www.ip-law.legal
T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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From: Massimo@origin-gi.com Sent: 29 April 2017 22:48 To: jsevans@adobe.com Cc: jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level.
Best, Massimo From: J. Scott Evans Sent: 29.04.2017 16:02 To: Massimo Cc: Jonathan Agmon; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights.
Sent from my iPhone
On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com> wrote:
The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate.
An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH.
But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory?
Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation.
Best, Massimo From: J. Scott Evans Sent: 29.04.2017 15:18 To: Massimo Cc: Jonathan Agmon; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means.
Sent from my iPhone
On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com> wrote:
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality.
Best, Massimo From: J. Scott Evans via gnso-rpm-wg Sent: 29.04.2017 14:46 To: Jonathan Agmon Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness.
Sent from my iPhone
On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Paul,
I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue.
I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry.
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
“GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.”
Finally, please note that my time zone is UTC+8.
Thanks,
<SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal www.ip-law.legal T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com>; Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists <icannlists@winston.com> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Claudio.
You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one.
I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back.
Best, Paul
From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists <icannlists@winston.com> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks, Paul.
I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language.
There didn't seem to be a conclusion, hence my earlier email about next steps.
Please let me know if I missing something.
Best regards, Claudio
On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).
Best, Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Mary, all,
I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.
An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?
For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?
If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.
On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?
I'm looking forward to working with everyone on the team.
Thanks!
Best regards, Claudio
On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org> wrote: Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4. Notice of deadline for further follow up questions to the Analysis Group
5. Next steps/next meeting
Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw (Sunrise) and https://community.icann.org/x/psrRAw (Claims).
o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Paul, It's a good question that we can research, but given that some members of the group are less open to explore if registered GIs should be in the TMCH or not, I question if the entire exercise is not a waste of time. As I just suggested since there seems to be some disagreement (between US and other practitioners) perhaps leaving the status quo is best at this time. Thanks, [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: paul@law.es Sent: 30 April 2017 19:01 To: jonathan.agmon@ip-law.legal Cc: gregshatanipc@gmail.com; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week This is a great thread and I find Greg's explanations are very helpful. Question: are GI's registered in a "GI registry" but NOT in a trademark registry entitled to treaty protections afforded to registered trademarks? Or are they treated "somewhat" differently as, for example, NGOs are treated under 6ter? Sent from my iPad On 30 Apr 2017, at 11:28, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Greg, When I used the word “mark”, I didn’t mean “trademark”. I was making a distinction between a “mark” and a “trade mark” because I was trying to state that various forms of indicators can become trademarks. Thus, the term “mark” is not reserved to trademarks, unless it is applied in the legal sense. If it is applied in the legal sense it is synonymous with the word “sign”. WIPO’s use of the word “sign” with respect to GIs should not be an indication that WIPO specifically wished to exclude “marks” from this definition because some other (non-US) legal systems define a trademark as a “sign” capable of distinguishing goods (or services) of one undertaking from those of other undertakings. See UK’s Trade Marks Act, 1994, s. 1. Under the UK TM Act GIS are collective trademarks. It states that: “a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.” I think that the rest of the discussion is not relevant to my point, because I am advocating the we should allow GI that have been registered into the TMCH because they are signs capable of disguising goods of one undertaking from those of other undertakings. Assuming we agree to have GIs that are registered in a national trademark registry into the TMCH, why do you object to having the same signs that are registered in a national GI registry into the TMCH? Thanks, [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Sunday, April 30, 2017 8:11 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, Responses in-line: On Sat, Apr 29, 2017 at 10:59 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Greg, You state: Claiming that GIs are trademarks (or even "marks") is not something I can support. But, GIs are simply word marks. No, GIs are not "word marks." That is the point you are trying to prove. Stating it to prove the point is circular. They may be words (or designs, or combinations of words and designs). If by word "mark," you mean a trademark, then that is not true. If you don't mean a trademark, then what definition of "mark" are you using? I note that WIPO, in defining GIs, uses "sign" and not "mark". GIs may be words, and they may signify something, but they are not trademarks, unless and until they are registered as trademarks. Using the word "mark" to refer to both "trademarks" and "not trademarks" essentially strips it of meaning. PARMA is a word mark, is it not? It is not. PARMA is a word. It is not per se a word mark. Whether it's a "word mark" depends on whether it is registered as a trademark (putting aside "common law" marks, since they are generally not accepted into the TMCH unless they are "court-validated"). If it is used in a way that qualifies as a trademark under the trademark laws of a particular jurisdiction as a trademark of some sort, and it is registered as a trademark, then it is a trademark (or a "word mark" if you wish). If it is a GI and it is registered as such, or if it is not registered at all, it is not a trademark. And PARMA can (and was) registered as trademarks in the US. Yes, but that hardly proves your point. Quite the opposite. There are currently seven registrations for PARMA (without any other words) on the US trademark register. With one exception, these trademarks are clearly not functioning in any way akin to a GI. Five are "standard form" registrations (text without any type of formatting) for PARMA, owned by five different registrants for the following goods and services: 1. Hard wood flooring; Engineered wood flooring; Laminate flooring; Luxury vinyl tile. 2. Restaurant and bar services, namely, fine dining restaurant services. 3. Faucets, shower heads and faucet sets. Towel rings, clothes-drying racks; bath accessories, namely, cup holders, toothbrush holders and soap dishes. 4. Computer software for use in displaying and printing digital typeface designs and typographic ornaments. 5. Fluid pumps-namely, irrigation and drainage pumps, sewerage and sump pumps, tractor-drawn farm implements-namely, corrugators, crop toppers, and beet cleaners. One is a registration for "PARMA!" (with an exclamation point) for "Flavourings and seasonings; Food seasonings; Seasonings." One is a registration for PARMA Plus Design (consisting of the word "PARMA" inside a stylized crown) for "Ham Products." This registration is owned by CONSORZIO DEL PROSCIUTTO DI PARMA ASSOCIATION ITALY Largo Calamandrei 1/A Parma (PR) ITALY, as a Certification Mark, with the statement: "The certification mark, as used by persons authorized by the certifier, certifies the regional origin of the products and certifies that those products conform to the production process, size, shape, weight, curing, slicing and packaging requirements promulgated by the certifier." I assume this is the registration you are referring to (particularly since there is no "standard form" registration for PARMA owned by the CONSORZIO DEL PROSCIUTTO DI PARMA). The CONSORZIO DEL PROSCIUTTO DI PARMA also owns two other Certification Mark registrations containing the word PARMA: One for PARMA HAM ("Ham" disclaimed) and one for PROSCIUTTO DI PARMA ("Prosciutto" disclaimed). Both of these are standard form registrations. ( Notably, there is a registration for PARMA BRAND Plus Design (consisting of the words PARMA BRAND in a circle with a flying eagle clutching a sausage in its talons) ("Brand" disclaimed) for MEAT PRODUCTS-NAMELY, SAUSAGE, SALAMI, CAPICOLLO, LUNCH MEATS, owned by Parma Sausage Products, Inc. of Pittsburgh, PA. This registration predates all of the registrations owned by the Consorzio. Interestingly, all three of the Consorzio's applications were refused registration by the USPTO based on the PARMA BRAND Plus Design registration (which at that time included "Prosciutto" among its goods and services). (For all those talking about "scope of protection" of text + design marks, this is a great example to consider -- the two text-only marks and the PARMA (and Crown) mark were refused registration by PARMA Brand plus a sausage-toting eagle. Clearly the scope of the PARMA Brand registration extended beyond the context of its design.) The Consorzio del Prosciutto di Parma and Parma Sausage Products entered into a settlement agreement, whereby Parma Sausage agreed to remove "prosciutto" from its goods and services, which allowed the Consorzio applications to proceed to registration on the trademark register. Then, and only then, did the PARMA (and Crown), PARMA HAM and PROSCIUTTO DI PARMA "signs" become trademarks (assuming they were not registered as trademarks elsewhere first). These registrations could be relied on to register PARMA, PARMA HAM and PROSCIUTTO DI PARMA in the TMCH (noting there is still some disagreement in the WG whether the crown in the PARMA registration somehow disqualifies it from serving as the basis for entry of PARMA into the TMCH). Of course, each of the first six registrations above could also form the basis for entering PARMA into the TMCH (the sixth by excluding the "!"). None of these are GIs, of course. And the PARMA BRAND registration could form the basis for entering PARMA BRAND into the TMCH (again noting the disagreement on how such text plus design marks should be handled). This too, is not a GI, even if it used for meat products (but not prosciutto) made in the great city of Pittsburgh, PA. https://www.parmasausage.com/ Can you explain, what you meant? Hope that helps. I've attached a document with some of the info referred to here.... Thanks, You are most welcome. Greg <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>] Sent: Saturday, April 29, 2017 5:37 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. 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Frankly I would like to know. And I don't want to maintain the status quo absent evidence that it is worth the intrusion. Sincerely, Paul Keating, Esq.
On Apr 30, 2017, at 5:21 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Paul,
It's a good question that we can research, but given that some members of the group are less open to explore if registered GIs should be in the TMCH or not, I question if the entire exercise is not a waste of time.
As I just suggested since there seems to be some disagreement (between US and other practitioners) perhaps leaving the status quo is best at this time.
Thanks,
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal www.ip-law.legal T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
From: paul@law.es Sent: 30 April 2017 19:01 To: jonathan.agmon@ip-law.legal Cc: gregshatanipc@gmail.com; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
This is a great thread and I find Greg's explanations are very helpful.
Question: are GI's registered in a "GI registry" but NOT in a trademark registry entitled to treaty protections afforded to registered trademarks?
Or are they treated "somewhat" differently as, for example, NGOs are treated under 6ter?
Sent from my iPad
On 30 Apr 2017, at 11:28, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Greg,
When I used the word “mark”, I didn’t mean “trademark”. I was making a distinction between a “mark” and a “trade mark” because I was trying to state that various forms of indicators can become trademarks. Thus, the term “mark” is not reserved to trademarks, unless it is applied in the legal sense. If it is applied in the legal sense it is synonymous with the word “sign”.
WIPO’s use of the word “sign” with respect to GIs should not be an indication that WIPO specifically wished to exclude “marks” from this definition because some other (non-US) legal systems define a trademark as a “sign” capable of distinguishing goods (or services) of one undertaking from those of other undertakings. See UK’s Trade Marks Act, 1994, s. 1. Under the UK TM Act GIS are collective trademarks. It states that: “a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.”
I think that the rest of the discussion is not relevant to my point, because I am advocating the we should allow GI that have been registered into the TMCH because they are signs capable of disguising goods of one undertaking from those of other undertakings.
Assuming we agree to have GIs that are registered in a national trademark registry into the TMCH, why do you object to having the same signs that are registered in a national GI registry into the TMCH?
Thanks,
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal www.ip-law.legal T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Sunday, April 30, 2017 8:11 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: J. Scott Evans <jsevans@adobe.com>; Massimo <Massimo@origin-gi.com>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Jonathan,
Responses in-line:
On Sat, Apr 29, 2017 at 10:59 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote: Greg,
You state: Claiming that GIs are trademarks (or even "marks") is not something I can support. But, GIs are simply word marks.
No, GIs are not "word marks." That is the point you are trying to prove. Stating it to prove the point is circular. They may be words (or designs, or combinations of words and designs). If by word "mark," you mean a trademark, then that is not true. If you don't mean a trademark, then what definition of "mark" are you using? I note that WIPO, in defining GIs, uses "sign" and not "mark". GIs may be words, and they may signify something, but they are not trademarks, unless and until they are registered as trademarks. Using the word "mark" to refer to both "trademarks" and "not trademarks" essentially strips it of meaning.
PARMA is a word mark, is it not?
It is not. PARMA is a word. It is not per se a word mark. Whether it's a "word mark" depends on whether it is registered as a trademark (putting aside "common law" marks, since they are generally not accepted into the TMCH unless they are "court-validated"). If it is used in a way that qualifies as a trademark under the trademark laws of a particular jurisdiction as a trademark of some sort, and it is registered as a trademark, then it is a trademark (or a "word mark" if you wish). If it is a GI and it is registered as such, or if it is not registered at all, it is not a trademark.
And PARMA can (and was) registered as trademarks in the US.
Yes, but that hardly proves your point. Quite the opposite. There are currently seven registrations for PARMA (without any other words) on the US trademark register. With one exception, these trademarks are clearly not functioning in any way akin to a GI.
Five are "standard form" registrations (text without any type of formatting) for PARMA, owned by five different registrants for the following goods and services: 1. Hard wood flooring; Engineered wood flooring; Laminate flooring; Luxury vinyl tile. 2. Restaurant and bar services, namely, fine dining restaurant services. 3. Faucets, shower heads and faucet sets. Towel rings, clothes-drying racks; bath accessories, namely, cup holders, toothbrush holders and soap dishes. 4. Computer software for use in displaying and printing digital typeface designs and typographic ornaments. 5. Fluid pumps-namely, irrigation and drainage pumps, sewerage and sump pumps, tractor-drawn farm implements-namely, corrugators, crop toppers, and beet cleaners. One is a registration for "PARMA!" (with an exclamation point) for "Flavourings and seasonings; Food seasonings; Seasonings." One is a registration for PARMA Plus Design (consisting of the word "PARMA" inside a stylized crown) for "Ham Products." This registration is owned by CONSORZIO DEL PROSCIUTTO DI PARMA ASSOCIATION ITALY Largo Calamandrei 1/A Parma (PR) ITALY, as a Certification Mark, with the statement: "The certification mark, as used by persons authorized by the certifier, certifies the regional origin of the products and certifies that those products conform to the production process, size, shape, weight, curing, slicing and packaging requirements promulgated by the certifier." I assume this is the registration you are referring to (particularly since there is no "standard form" registration for PARMA owned by the CONSORZIO DEL PROSCIUTTO DI PARMA). The CONSORZIO DEL PROSCIUTTO DI PARMA also owns two other Certification Mark registrations containing the word PARMA: One for PARMA HAM ("Ham" disclaimed) and one for PROSCIUTTO DI PARMA ("Prosciutto" disclaimed). Both of these are standard form registrations. ( Notably, there is a registration for PARMA BRAND Plus Design (consisting of the words PARMA BRAND in a circle with a flying eagle clutching a sausage in its talons) ("Brand" disclaimed) for MEAT PRODUCTS-NAMELY, SAUSAGE, SALAMI, CAPICOLLO, LUNCH MEATS, owned by Parma Sausage Products, Inc. of Pittsburgh, PA. This registration predates all of the registrations owned by the Consorzio. Interestingly, all three of the Consorzio's applications were refused registration by the USPTO based on the PARMA BRAND Plus Design registration (which at that time included "Prosciutto" among its goods and services). (For all those talking about "scope of protection" of text + design marks, this is a great example to consider -- the two text-only marks and the PARMA (and Crown) mark were refused registration by PARMA Brand plus a sausage-toting eagle. Clearly the scope of the PARMA Brand registration extended beyond the context of its design.) The Consorzio del Prosciutto di Parma and Parma Sausage Products entered into a settlement agreement, whereby Parma Sausage agreed to remove "prosciutto" from its goods and services, which allowed the Consorzio applications to proceed to registration on the trademark register. Then, and only then, did the PARMA (and Crown), PARMA HAM and PROSCIUTTO DI PARMA "signs" become trademarks (assuming they were not registered as trademarks elsewhere first). These registrations could be relied on to register PARMA, PARMA HAM and PROSCIUTTO DI PARMA in the TMCH (noting there is still some disagreement in the WG whether the crown in the PARMA registration somehow disqualifies it from serving as the basis for entry of PARMA into the TMCH). Of course, each of the first six registrations above could also form the basis for entering PARMA into the TMCH (the sixth by excluding the "!"). None of these are GIs, of course. And the PARMA BRAND registration could form the basis for entering PARMA BRAND into the TMCH (again noting the disagreement on how such text plus design marks should be handled). This too, is not a GI, even if it used for meat products (but not prosciutto) made in the great city of Pittsburgh, PA. https://www.parmasausage.com/
Can you explain, what you meant?
Hope that helps. I've attached a document with some of the info referred to here....
Thanks,
You are most welcome.
Greg
<image001.png> Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal www.ip-law.legal T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Saturday, April 29, 2017 5:37 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: J. Scott Evans <jsevans@adobe.com>; Massimo <Massimo@origin-gi.com>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
+1000 to J Scott on this point:
A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims.
Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs.
Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks.
Greg [As always, in my personal capacity, unless otherwise noted.]
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote: +1
<image001.png> Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal www.ip-law.legal
T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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From: Massimo@origin-gi.com Sent: 29 April 2017 22:48 To: jsevans@adobe.com Cc: jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level.
Best, Massimo From: J. Scott Evans Sent: 29.04.2017 16:02 To: Massimo Cc: Jonathan Agmon; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights.
Sent from my iPhone
On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com> wrote:
The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate.
An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH.
But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory?
Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation.
Best, Massimo From: J. Scott Evans Sent: 29.04.2017 15:18 To: Massimo Cc: Jonathan Agmon; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means.
Sent from my iPhone
On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com> wrote:
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality.
Best, Massimo From: J. Scott Evans via gnso-rpm-wg Sent: 29.04.2017 14:46 To: Jonathan Agmon Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness.
Sent from my iPhone
On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Paul,
I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue.
I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry.
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
“GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.”
Finally, please note that my time zone is UTC+8.
Thanks,
<SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal www.ip-law.legal T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com>; Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists <icannlists@winston.com> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Claudio.
You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one.
I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back.
Best, Paul
From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists <icannlists@winston.com> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks, Paul.
I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language.
There didn't seem to be a conclusion, hence my earlier email about next steps.
Please let me know if I missing something.
Best regards, Claudio
On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).
Best, Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Mary, all,
I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.
An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?
For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?
If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.
On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?
I'm looking forward to working with everyone on the team.
Thanks!
Best regards, Claudio
On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org> wrote: Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4. Notice of deadline for further follow up questions to the Analysis Group
5. Next steps/next meeting
Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw (Sunrise) and https://community.icann.org/x/psrRAw (Claims).
o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Paul K It depends on your definition of the status quo, I suppose. If the status quo is the GNSO Policy, as developed by the IRT and STI and adopted by the Board as reflected in the AGB, meaning no mention of GIs in the TMCH, then the status quo seems just fine. However, if the status quo is that GIs have creeped into TMCH via the TMCH provider, than the status quo needs to be challenged. Best, Paul M From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Sunday, April 30, 2017 12:54 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Frankly I would like to know. And I don't want to maintain the status quo absent evidence that it is worth the intrusion. Sincerely, Paul Keating, Esq. On Apr 30, 2017, at 5:21 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, It's a good question that we can research, but given that some members of the group are less open to explore if registered GIs should be in the TMCH or not, I question if the entire exercise is not a waste of time. As I just suggested since there seems to be some disagreement (between US and other practitioners) perhaps leaving the status quo is best at this time. Thanks, [cid:image001.png@01D2C1C0.75325480] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: paul@law.es<mailto:paul@law.es> Sent: 30 April 2017 19:01 To: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> Cc: gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week This is a great thread and I find Greg's explanations are very helpful. Question: are GI's registered in a "GI registry" but NOT in a trademark registry entitled to treaty protections afforded to registered trademarks? Or are they treated "somewhat" differently as, for example, NGOs are treated under 6ter? Sent from my iPad On 30 Apr 2017, at 11:28, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Greg, When I used the word “mark”, I didn’t mean “trademark”. I was making a distinction between a “mark” and a “trade mark” because I was trying to state that various forms of indicators can become trademarks. Thus, the term “mark” is not reserved to trademarks, unless it is applied in the legal sense. If it is applied in the legal sense it is synonymous with the word “sign”. WIPO’s use of the word “sign” with respect to GIs should not be an indication that WIPO specifically wished to exclude “marks” from this definition because some other (non-US) legal systems define a trademark as a “sign” capable of distinguishing goods (or services) of one undertaking from those of other undertakings. See UK’s Trade Marks Act, 1994, s. 1. Under the UK TM Act GIS are collective trademarks. It states that: “a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.” I think that the rest of the discussion is not relevant to my point, because I am advocating the we should allow GI that have been registered into the TMCH because they are signs capable of disguising goods of one undertaking from those of other undertakings. Assuming we agree to have GIs that are registered in a national trademark registry into the TMCH, why do you object to having the same signs that are registered in a national GI registry into the TMCH? Thanks, [cid:image001.png@01D2C1C0.75325480] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Sunday, April 30, 2017 8:11 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, Responses in-line: On Sat, Apr 29, 2017 at 10:59 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Greg, You state: Claiming that GIs are trademarks (or even "marks") is not something I can support. But, GIs are simply word marks. No, GIs are not "word marks." That is the point you are trying to prove. Stating it to prove the point is circular. They may be words (or designs, or combinations of words and designs). If by word "mark," you mean a trademark, then that is not true. If you don't mean a trademark, then what definition of "mark" are you using? I note that WIPO, in defining GIs, uses "sign" and not "mark". GIs may be words, and they may signify something, but they are not trademarks, unless and until they are registered as trademarks. Using the word "mark" to refer to both "trademarks" and "not trademarks" essentially strips it of meaning. PARMA is a word mark, is it not? It is not. PARMA is a word. It is not per se a word mark. Whether it's a "word mark" depends on whether it is registered as a trademark (putting aside "common law" marks, since they are generally not accepted into the TMCH unless they are "court-validated"). If it is used in a way that qualifies as a trademark under the trademark laws of a particular jurisdiction as a trademark of some sort, and it is registered as a trademark, then it is a trademark (or a "word mark" if you wish). If it is a GI and it is registered as such, or if it is not registered at all, it is not a trademark. And PARMA can (and was) registered as trademarks in the US. Yes, but that hardly proves your point. Quite the opposite. There are currently seven registrations for PARMA (without any other words) on the US trademark register. With one exception, these trademarks are clearly not functioning in any way akin to a GI. Five are "standard form" registrations (text without any type of formatting) for PARMA, owned by five different registrants for the following goods and services: 1. Hard wood flooring; Engineered wood flooring; Laminate flooring; Luxury vinyl tile. 2. Restaurant and bar services, namely, fine dining restaurant services. 3. Faucets, shower heads and faucet sets. Towel rings, clothes-drying racks; bath accessories, namely, cup holders, toothbrush holders and soap dishes. 4. Computer software for use in displaying and printing digital typeface designs and typographic ornaments. 5. Fluid pumps-namely, irrigation and drainage pumps, sewerage and sump pumps, tractor-drawn farm implements-namely, corrugators, crop toppers, and beet cleaners. One is a registration for "PARMA!" (with an exclamation point) for "Flavourings and seasonings; Food seasonings; Seasonings." One is a registration for PARMA Plus Design (consisting of the word "PARMA" inside a stylized crown) for "Ham Products." This registration is owned by CONSORZIO DEL PROSCIUTTO DI PARMA ASSOCIATION ITALY Largo Calamandrei 1/A Parma (PR) ITALY, as a Certification Mark, with the statement: "The certification mark, as used by persons authorized by the certifier, certifies the regional origin of the products and certifies that those products conform to the production process, size, shape, weight, curing, slicing and packaging requirements promulgated by the certifier." I assume this is the registration you are referring to (particularly since there is no "standard form" registration for PARMA owned by the CONSORZIO DEL PROSCIUTTO DI PARMA). The CONSORZIO DEL PROSCIUTTO DI PARMA also owns two other Certification Mark registrations containing the word PARMA: One for PARMA HAM ("Ham" disclaimed) and one for PROSCIUTTO DI PARMA ("Prosciutto" disclaimed). Both of these are standard form registrations. ( Notably, there is a registration for PARMA BRAND Plus Design (consisting of the words PARMA BRAND in a circle with a flying eagle clutching a sausage in its talons) ("Brand" disclaimed) for MEAT PRODUCTS-NAMELY, SAUSAGE, SALAMI, CAPICOLLO, LUNCH MEATS, owned by Parma Sausage Products, Inc. of Pittsburgh, PA. This registration predates all of the registrations owned by the Consorzio. Interestingly, all three of the Consorzio's applications were refused registration by the USPTO based on the PARMA BRAND Plus Design registration (which at that time included "Prosciutto" among its goods and services). (For all those talking about "scope of protection" of text + design marks, this is a great example to consider -- the two text-only marks and the PARMA (and Crown) mark were refused registration by PARMA Brand plus a sausage-toting eagle. Clearly the scope of the PARMA Brand registration extended beyond the context of its design.) The Consorzio del Prosciutto di Parma and Parma Sausage Products entered into a settlement agreement, whereby Parma Sausage agreed to remove "prosciutto" from its goods and services, which allowed the Consorzio applications to proceed to registration on the trademark register. Then, and only then, did the PARMA (and Crown), PARMA HAM and PROSCIUTTO DI PARMA "signs" become trademarks (assuming they were not registered as trademarks elsewhere first). These registrations could be relied on to register PARMA, PARMA HAM and PROSCIUTTO DI PARMA in the TMCH (noting there is still some disagreement in the WG whether the crown in the PARMA registration somehow disqualifies it from serving as the basis for entry of PARMA into the TMCH). Of course, each of the first six registrations above could also form the basis for entering PARMA into the TMCH (the sixth by excluding the "!"). None of these are GIs, of course. And the PARMA BRAND registration could form the basis for entering PARMA BRAND into the TMCH (again noting the disagreement on how such text plus design marks should be handled). This too, is not a GI, even if it used for meat products (but not prosciutto) made in the great city of Pittsburgh, PA. https://www.parmasausage.com/ Can you explain, what you meant? Hope that helps. I've attached a document with some of the info referred to here.... Thanks, You are most welcome. Greg <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>] Sent: Saturday, April 29, 2017 5:37 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. 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I'm sorry but I question the need for either. I am definitely not in favor of any expansion of the TMCH and in fact question the need or desirability for its existence. Sent from my iPad
On 30 Apr 2017, at 21:48, icannlists <icannlists@winston.com> wrote:
Paul K
It depends on your definition of the status quo, I suppose. If the status quo is the GNSO Policy, as developed by the IRT and STI and adopted by the Board as reflected in the AGB, meaning no mention of GIs in the TMCH, then the status quo seems just fine. However, if the status quo is that GIs have creeped into TMCH via the TMCH provider, than the status quo needs to be challenged.
Best, Paul M
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Sunday, April 30, 2017 12:54 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Frankly I would like to know.
And I don't want to maintain the status quo absent evidence that it is worth the intrusion.
Sincerely, Paul Keating, Esq.
On Apr 30, 2017, at 5:21 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Paul,
It's a good question that we can research, but given that some members of the group are less open to explore if registered GIs should be in the TMCH or not, I question if the entire exercise is not a waste of time.
As I just suggested since there seems to be some disagreement (between US and other practitioners) perhaps leaving the status quo is best at this time.
Thanks,
<image001.png> Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal www.ip-law.legal T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
From: paul@law.es Sent: 30 April 2017 19:01 To: jonathan.agmon@ip-law.legal Cc: gregshatanipc@gmail.com; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
This is a great thread and I find Greg's explanations are very helpful.
Question: are GI's registered in a "GI registry" but NOT in a trademark registry entitled to treaty protections afforded to registered trademarks?
Or are they treated "somewhat" differently as, for example, NGOs are treated under 6ter?
Sent from my iPad
On 30 Apr 2017, at 11:28, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Greg,
When I used the word “mark”, I didn’t mean “trademark”. I was making a distinction between a “mark” and a “trade mark” because I was trying to state that various forms of indicators can become trademarks. Thus, the term “mark” is not reserved to trademarks, unless it is applied in the legal sense. If it is applied in the legal sense it is synonymous with the word “sign”.
WIPO’s use of the word “sign” with respect to GIs should not be an indication that WIPO specifically wished to exclude “marks” from this definition because some other (non-US) legal systems define a trademark as a “sign” capable of distinguishing goods (or services) of one undertaking from those of other undertakings. See UK’s Trade Marks Act, 1994, s. 1. Under the UK TM Act GIS are collective trademarks. It states that: “a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.”
I think that the rest of the discussion is not relevant to my point, because I am advocating the we should allow GI that have been registered into the TMCH because they are signs capable of disguising goods of one undertaking from those of other undertakings.
Assuming we agree to have GIs that are registered in a national trademark registry into the TMCH, why do you object to having the same signs that are registered in a national GI registry into the TMCH?
Thanks,
<image001.png> Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal www.ip-law.legal T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Sunday, April 30, 2017 8:11 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: J. Scott Evans <jsevans@adobe.com>; Massimo <Massimo@origin-gi.com>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Jonathan,
Responses in-line:
On Sat, Apr 29, 2017 at 10:59 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote: Greg,
You state: Claiming that GIs are trademarks (or even "marks") is not something I can support. But, GIs are simply word marks.
No, GIs are not "word marks." That is the point you are trying to prove. Stating it to prove the point is circular. They may be words (or designs, or combinations of words and designs). If by word "mark," you mean a trademark, then that is not true. If you don't mean a trademark, then what definition of "mark" are you using? I note that WIPO, in defining GIs, uses "sign" and not "mark". GIs may be words, and they may signify something, but they are not trademarks, unless and until they are registered as trademarks. Using the word "mark" to refer to both "trademarks" and "not trademarks" essentially strips it of meaning.
PARMA is a word mark, is it not?
It is not. PARMA is a word. It is not per se a word mark. Whether it's a "word mark" depends on whether it is registered as a trademark (putting aside "common law" marks, since they are generally not accepted into the TMCH unless they are "court-validated"). If it is used in a way that qualifies as a trademark under the trademark laws of a particular jurisdiction as a trademark of some sort, and it is registered as a trademark, then it is a trademark (or a "word mark" if you wish). If it is a GI and it is registered as such, or if it is not registered at all, it is not a trademark.
And PARMA can (and was) registered as trademarks in the US.
Yes, but that hardly proves your point. Quite the opposite. There are currently seven registrations for PARMA (without any other words) on the US trademark register. With one exception, these trademarks are clearly not functioning in any way akin to a GI.
Five are "standard form" registrations (text without any type of formatting) for PARMA, owned by five different registrants for the following goods and services: 1. Hard wood flooring; Engineered wood flooring; Laminate flooring; Luxury vinyl tile. 2. Restaurant and bar services, namely, fine dining restaurant services. 3. Faucets, shower heads and faucet sets. Towel rings, clothes-drying racks; bath accessories, namely, cup holders, toothbrush holders and soap dishes. 4. Computer software for use in displaying and printing digital typeface designs and typographic ornaments. 5. Fluid pumps-namely, irrigation and drainage pumps, sewerage and sump pumps, tractor-drawn farm implements-namely, corrugators, crop toppers, and beet cleaners. One is a registration for "PARMA!" (with an exclamation point) for "Flavourings and seasonings; Food seasonings; Seasonings." One is a registration for PARMA Plus Design (consisting of the word "PARMA" inside a stylized crown) for "Ham Products." This registration is owned by CONSORZIO DEL PROSCIUTTO DI PARMA ASSOCIATION ITALY Largo Calamandrei 1/A Parma (PR) ITALY, as a Certification Mark, with the statement: "The certification mark, as used by persons authorized by the certifier, certifies the regional origin of the products and certifies that those products conform to the production process, size, shape, weight, curing, slicing and packaging requirements promulgated by the certifier." I assume this is the registration you are referring to (particularly since there is no "standard form" registration for PARMA owned by the CONSORZIO DEL PROSCIUTTO DI PARMA). The CONSORZIO DEL PROSCIUTTO DI PARMA also owns two other Certification Mark registrations containing the word PARMA: One for PARMA HAM ("Ham" disclaimed) and one for PROSCIUTTO DI PARMA ("Prosciutto" disclaimed). Both of these are standard form registrations. ( Notably, there is a registration for PARMA BRAND Plus Design (consisting of the words PARMA BRAND in a circle with a flying eagle clutching a sausage in its talons) ("Brand" disclaimed) for MEAT PRODUCTS-NAMELY, SAUSAGE, SALAMI, CAPICOLLO, LUNCH MEATS, owned by Parma Sausage Products, Inc. of Pittsburgh, PA. This registration predates all of the registrations owned by the Consorzio. Interestingly, all three of the Consorzio's applications were refused registration by the USPTO based on the PARMA BRAND Plus Design registration (which at that time included "Prosciutto" among its goods and services). (For all those talking about "scope of protection" of text + design marks, this is a great example to consider -- the two text-only marks and the PARMA (and Crown) mark were refused registration by PARMA Brand plus a sausage-toting eagle. Clearly the scope of the PARMA Brand registration extended beyond the context of its design.) The Consorzio del Prosciutto di Parma and Parma Sausage Products entered into a settlement agreement, whereby Parma Sausage agreed to remove "prosciutto" from its goods and services, which allowed the Consorzio applications to proceed to registration on the trademark register. Then, and only then, did the PARMA (and Crown), PARMA HAM and PROSCIUTTO DI PARMA "signs" become trademarks (assuming they were not registered as trademarks elsewhere first). These registrations could be relied on to register PARMA, PARMA HAM and PROSCIUTTO DI PARMA in the TMCH (noting there is still some disagreement in the WG whether the crown in the PARMA registration somehow disqualifies it from serving as the basis for entry of PARMA into the TMCH). Of course, each of the first six registrations above could also form the basis for entering PARMA into the TMCH (the sixth by excluding the "!"). None of these are GIs, of course. And the PARMA BRAND registration could form the basis for entering PARMA BRAND into the TMCH (again noting the disagreement on how such text plus design marks should be handled). This too, is not a GI, even if it used for meat products (but not prosciutto) made in the great city of Pittsburgh, PA. https://www.parmasausage.com/
Can you explain, what you meant?
Hope that helps. I've attached a document with some of the info referred to here....
Thanks,
You are most welcome.
Greg
<image001.png> Jonathan Agmon (胡韩森)
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From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Saturday, April 29, 2017 5:37 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: J. Scott Evans <jsevans@adobe.com>; Massimo <Massimo@origin-gi.com>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
+1000 to J Scott on this point:
A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims.
Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs.
Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks.
Greg [As always, in my personal capacity, unless otherwise noted.]
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote: +1
<image001.png> Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal www.ip-law.legal
T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
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From: Massimo@origin-gi.com Sent: 29 April 2017 22:48 To: jsevans@adobe.com Cc: jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level.
Best, Massimo From: J. Scott Evans Sent: 29.04.2017 16:02 To: Massimo Cc: Jonathan Agmon; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights.
Sent from my iPhone
On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com> wrote:
The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate.
An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH.
But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory?
Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation.
Best, Massimo From: J. Scott Evans Sent: 29.04.2017 15:18 To: Massimo Cc: Jonathan Agmon; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means.
Sent from my iPhone
On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com> wrote:
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality.
Best, Massimo From: J. Scott Evans via gnso-rpm-wg Sent: 29.04.2017 14:46 To: Jonathan Agmon Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness.
Sent from my iPhone
On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Paul,
I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue.
I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry.
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
“GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.”
Finally, please note that my time zone is UTC+8.
Thanks,
<SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森)
Advocate, Director
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jonathan.agmon@ip-law.legal www.ip-law.legal T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
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From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com>; Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists <icannlists@winston.com> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Claudio.
You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one.
I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back.
Best, Paul
From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists <icannlists@winston.com> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks, Paul.
I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language.
There didn't seem to be a conclusion, hence my earlier email about next steps.
Please let me know if I missing something.
Best regards, Claudio
On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).
Best, Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Mary, all,
I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.
An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?
For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?
If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.
On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?
I'm looking forward to working with everyone on the team.
Thanks!
Best regards, Claudio
On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org> wrote: Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4. Notice of deadline for further follow up questions to the Analysis Group
5. Next steps/next meeting
Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw (Sunrise) and https://community.icann.org/x/psrRAw (Claims).
o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Hi Paul, Let me echo your respect and appreciation for "GNSO Policy, as developed by the IRT and STI" and adopted by the Board as reflected in the AGB". I agree! J. Scott made a similar point re: the existence of the Sunrise Period and TM Claims itself -- all a product of the original process. These were tough compromises negotiated carefully and worked on in good faith by the participants and their stakeholder groups. To that list of original agreements, we must add the bar against acceptance of trademarks into the TMCH database with styling, design or logo. The STI could not have been more clear in what it adopted for addition to the TMCH database -- text marks outside of logos or designs. The GNSO Council adopted the language, then the ICANN Board adopted it and it was placed in the Applicant Guidebook. Exactly as you have outlined above. In this case, the original text of the adopted rules is: "The TC [Trademark Clearinghouse] Database should be required to include nationally or multinationally registered "text mark" trademarks, from all jurisdictions (including countries where there is no substantive review). (The trademarks to be included in the TC 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.)" As the TMCH was created, and the Sunrise Period and TM Claims, so too were these limits created to balance a system which to many (echoing Paul Keating's earlier thought) provided unprecedented rights of preemption to trademark owners. It all flows from the same page... Best, Kathy
Paul K
It depends on your definition of the status quo, I suppose. If the status quo is the GNSO Policy, as developed by the IRT and STI and adopted by the Board as reflected in the AGB, meaning no mention of GIs in the TMCH, then the status quo seems just fine. However, if the status quo is that GIs have creeped into TMCH via the TMCH provider, than the status quo needs to be challenged.
Best,
Paul M
*From:*gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Paul Keating *Sent:* Sunday, April 30, 2017 12:54 PM *To:* Jonathan Agmon <jonathan.agmon@ip-law.legal> *Cc:* J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Frankly I would like to know.
And I don't want to maintain the status quo absent evidence that it is worth the intrusion.
Sincerely,
Paul Keating, Esq.
On Apr 30, 2017, at 5:21 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>> wrote:
Paul,
It's a good question that we can research, but given that some members of the group are less open to explore if registered GIs should be in the TMCH or not, I question if the entire exercise is not a waste of time.
As I just suggested since there seems to be some disagreement (between US and other practitioners) perhaps leaving the status quo is best at this time.
Thanks,
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
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*From:*paul@law.es <mailto:paul@law.es>
*Sent:*30 April 2017 19:01
*To:*jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>
*Cc:*gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>
*Subject:*Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
This is a great thread and I find Greg's explanations are very helpful.
Question: are GI's registered in a "GI registry" but NOT in a trademark registry entitled to treaty protections afforded to registered trademarks?
Or are they treated "somewhat" differently as, for example, NGOs are treated under 6ter?
Sent from my iPad
On 30 Apr 2017, at 11:28, Jonathan Agmon <jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>> wrote:
Greg,
When I used the word “mark”, I didn’t mean “trademark”. I was making a distinction between a “mark” and a “trade mark” because I was trying to state that various forms of indicators can become trademarks. Thus, the term “mark” is not reserved to trademarks, unless it is applied in the legal sense. If it is applied in the legal sense it is synonymous with the word “sign”.
WIPO’s use of the word “sign” with respect to GIs should not be an indication that WIPO specifically wished to exclude “marks” from this definition because some other (non-US) legal systems define a trademark as a “sign” capable of distinguishing goods (or services) of one undertaking from those of other undertakings. See UK’s Trade Marks Act, 1994, s. 1. Under the UK TM Act GIS are collective trademarks. It states that: “a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.”
I think that the rest of the discussion is not relevant to my point, because I am advocating the we should allow GI that have been registered into the TMCH because they are signs capable of disguising goods of one undertaking from those of other undertakings.
Assuming we agree to have GIs that are registered in a national trademark registry into the TMCH, why do you object to having the same signs that are registered in a national GI registry into the TMCH?
Thanks,
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>
www.ip-law.legal <http://www.ip-law.legal>
*T*SG+65 6532 2577
*T*US +1 212 999 6180
*T*IL +972 9 950 7000
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*From:*Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Sunday, April 30, 2017 8:11 AM *To:* Jonathan Agmon <jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>> *Cc:* J. Scott Evans <jsevans@adobe.com <mailto:jsevans@adobe.com>>; Massimo <Massimo@origin-gi.com <mailto:Massimo@origin-gi.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Jonathan,
Responses in-line:
On Sat, Apr 29, 2017 at 10:59 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>> wrote:
Greg,
You state: Claiming that GIs _are_ trademarks (or even "marks") is not something I can support.
But, GIs are simply word marks.
No, GIs are not "word marks." That is the point you are trying to prove. Stating it to prove the point is circular. They may be words (or designs, or combinations of words and designs). If by word "mark," you mean a trademark, then that is not true. If you don't mean a trademark, then what definition of "mark" are you using? I note that WIPO, in defining GIs, uses "sign" and not "mark". GIs may be words, and they may signify something, but they are not trademarks, unless and until they are registered as trademarks. Using the word "mark" to refer to both "trademarks" and "not trademarks" essentially strips it of meaning.
PARMA is a word mark, is it not?
It is not. PARMA is a word. It is not /per se/ a word mark. Whether it's a "word mark" depends on whether it is registered as a trademark (putting aside "common law" marks, since they are generally not accepted into the TMCH unless they are "court-validated"). If it is used in a way that qualifies as a trademark under the trademark laws of a particular jurisdiction as a trademark of some sort, and it is registered as a trademark, then it is a trademark (or a "word mark" if you wish). If it is a GI and it is registered as such, or if it is not registered at all, it is not a trademark.
And PARMA can (and was) registered as trademarks in the US.
Yes, but that hardly proves your point. Quite the opposite. There are currently seven registrations for PARMA (without any other words) on the US trademark register. With one exception, these trademarks are clearly not functioning in any way akin to a GI.
Five are "standard form" registrations (text without any type of formatting) for PARMA, owned by five different registrants for the following goods and services:
1.Hard wood flooring; Engineered wood flooring; Laminate flooring; Luxury vinyl tile.
2.Restaurant and bar services, namely, fine dining restaurant services.
3.Faucets, shower heads and faucet sets. Towel rings, clothes-drying racks; bath accessories, namely, cup holders, toothbrush holders and soap dishes.
4.Computer software for use in displaying and printing digital typeface designs and typographic ornaments.
5. Fluid pumps-namely, irrigation and drainage pumps, sewerage and sump pumps, tractor-drawn farm implements-namely, corrugators, crop toppers, and beet cleaners.
One is a registration for "PARMA!" (with an exclamation point) for "Flavourings and seasonings; Food seasonings; Seasonings."
One is a registration for PARMA Plus Design (consisting of the word "PARMA" inside a stylized crown) for "Ham Products." This registration is owned by CONSORZIO DEL PROSCIUTTO DI PARMA ASSOCIATION ITALY Largo Calamandrei 1/A Parma (PR) ITALY, as a Certification Mark, with the statement: "The certification mark, as used by persons authorized by the certifier, certifies the regional origin of the products and certifies that those products conform to the production process, size, shape, weight, curing, slicing and packaging requirements promulgated by the certifier." I assume this is the registration you are referring to (particularly since there is no "standard form" registration for PARMA owned by the CONSORZIO DEL PROSCIUTTO DI PARMA).
The CONSORZIO DEL PROSCIUTTO DI PARMA also owns two other Certification Mark registrations containing the word PARMA: One for PARMA HAM ("Ham" disclaimed) and one for PROSCIUTTO DI PARMA ("Prosciutto" disclaimed). Both of these are standard form registrations. (
Notably, there is a registration for PARMA BRAND Plus Design (consisting of the words PARMA BRAND in a circle with a flying eagle clutching a sausage in its talons) ("Brand" disclaimed) for MEAT PRODUCTS-NAMELY, SAUSAGE, SALAMI, CAPICOLLO, LUNCH MEATS, owned by Parma Sausage Products, Inc. of Pittsburgh, PA. This registration predates all of the registrations owned by the Consorzio.
Interestingly, all three of the Consorzio's applications were refused registration by the USPTO based on the PARMA BRAND Plus Design registration (which at that time included "Prosciutto" among its goods and services). *(For all those talking about "scope of protection" of text + design marks, this is a great example to consider -- the two text-only marks and the PARMA (and Crown) mark were refused registration by PARMA Brand plus a sausage-toting eagle. Clearly the scope of the PARMA Brand registration extended beyond the context of its design.) * The Consorzio del Prosciutto di Parma and Parma Sausage Products entered into a settlement agreement, whereby Parma Sausage agreed to remove "prosciutto" from its goods and services, which allowed the Consorzio applications to proceed to registration on the trademark register.
Then, and only then, did the PARMA (and Crown), PARMA HAM and PROSCIUTTO DI PARMA "signs" become trademarks (assuming they were not registered as trademarks elsewhere first). These registrations could be relied on to register PARMA, PARMA HAM and PROSCIUTTO DI PARMA in the TMCH (noting there is still some disagreement in the WG whether the crown in the PARMA registration somehow disqualifies it from serving as the basis for entry of PARMA into the TMCH).
Of course, each of the first six registrations above could also form the basis for entering PARMA into the TMCH (the sixth by excluding the "!"). None of these are GIs, of course. And the PARMA BRAND registration could form the basis for entering PARMA BRAND into the TMCH (again noting the disagreement on how such text plus design marks should be handled). This too, is not a GI, even if it used for meat products (but not prosciutto) made in the great city of Pittsburgh, PA. https://www.parmasausage.com/
Can you explain, what you meant?
Hope that helps. I've attached a document with some of the info referred to here....
Thanks,
You are most welcome.
Greg
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Jonathan Agmon (胡韩森)
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*From:*Greg Shatan [mailto:gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>] *Sent:* Saturday, April 29, 2017 5:37 PM *To:* Jonathan Agmon <jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>> *Cc:* J. Scott Evans <jsevans@adobe.com <mailto:jsevans@adobe.com>>; Massimo <Massimo@origin-gi.com <mailto:Massimo@origin-gi.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>>
*Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
+1000 to J Scott on this point:
A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims.
Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs _are_ trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs.
Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks.
Greg
[As always, in my personal capacity, unless otherwise noted.]
*Greg Shatan *C: 917-816-6428 <tel:%28917%29%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <tel:%28646%29%20845-9428> gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>
On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>> wrote:
+1
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Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
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*From:*Massimo@origin-gi.com <mailto:Massimo@origin-gi.com>
*Sent:*29 April 2017 22:48
*To:*jsevans@adobe.com <mailto:jsevans@adobe.com>
*Cc:*jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>
*Subject:*RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level.
Best, Massimo
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*From: *J. Scott Evans <mailto:jsevans@adobe.com> *Sent: *29.04.2017 16:02 *To: *Massimo <mailto:Massimo@origin-gi.com> *Cc: *Jonathan Agmon <mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights.
Sent from my iPhone
On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com <mailto:Massimo@origin-gi.com>> wrote:
The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate.
An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH.
But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory?
Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation.
Best, Massimo
------------------------------------------------------------------------
*From: *J. Scott Evans <mailto:jsevans@adobe.com> *Sent: *29.04.2017 15:18 *To: *Massimo <mailto:Massimo@origin-gi.com> *Cc: *Jonathan Agmon <mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means.
Sent from my iPhone
On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com <mailto:Massimo@origin-gi.com>> wrote:
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality.
Best, Massimo
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*From: *J. Scott Evans via gnso-rpm-wg <mailto:gnso-rpm-wg@icann.org> *Sent: *29.04.2017 14:46 *To: *Jonathan Agmon <mailto:jonathan.agmon@ip-law.legal> *Cc: *gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness.
Sent from my iPhone
On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>> wrote:
Paul,
I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue.
I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry.
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
“GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.”
Finally, please note that my time zone is UTC+8.
Thanks,
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Jonathan Agmon (胡韩森)
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*From:*gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *icannlists *Sent:* Friday, April 28, 2017 9:35 PM *To:* claudio di gangi <ipcdigangi@gmail.com <mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org <mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com <mailto:icannlists@winston.com>> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Claudio.
You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the *_Trademark_* Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one.
I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back.
Best,
Paul
*From:*claudio di gangi [mailto:ipcdigangi@gmail.com] *Sent:* Friday, April 28, 2017 1:49 PM *To:* Mary Wong <mary.wong@icann.org <mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com <mailto:icannlists@winston.com>> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks, Paul.
I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language.
There didn't seem to be a conclusion, hence my earlier email about next steps.
Please let me know if I missing something.
Best regards,
Claudio
On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com <mailto:icannlists@winston.com>> wrote:
Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).
Best,
Paul
*From:*gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>[mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *claudio di gangi *Sent:* Friday, April 28, 2017 12:58 PM *To:* Mary Wong <mary.wong@icann.org <mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Mary, all,
I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.
An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?
For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?
If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.
On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?
I'm looking forward to working with everyone on the team.
Thanks!
Best regards,
Claudio
On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org <mailto:mary.wong@icann.org>> wrote:
Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1.Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2.Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3.Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4.Notice of deadline for further follow up questions to the Analysis Group
5.Next steps/next meeting
*Notes:*
oFor _Agenda Item #2_, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0>(Sunrise) and https://community.icann.org/x/psrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0>(Claims).
oFor _Agenda Item #3_, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will _not_ be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
Thanks and cheers
Mary
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Thanks Kathy. I don’t think there are gobs of disagreements on the point you raise. The disagreement is, as we have discussed at great length, in the definitions. You are trying to lump in stylized marks and composite marks in with design marks. Not everyone agrees. Since we have spent so much time on that, I don’t think it makes sense for me to engage again in another round. The good news is that Staff has put forward a proposed glossary and we are going over that now. Hopefully, we when we can all get on the same page with definitions, we can then go back and look at the AGB to see what it says. Best, Paul From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Tuesday, May 02, 2017 3:21 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] [renamed] Back to Question #7 Hi Paul, Let me echo your respect and appreciation for "GNSO Policy, as developed by the IRT and STI" and adopted by the Board as reflected in the AGB". I agree! J. Scott made a similar point re: the existence of the Sunrise Period and TM Claims itself -- all a product of the original process. These were tough compromises negotiated carefully and worked on in good faith by the participants and their stakeholder groups. To that list of original agreements, we must add the bar against acceptance of trademarks into the TMCH database with styling, design or logo. The STI could not have been more clear in what it adopted for addition to the TMCH database -- text marks outside of logos or designs. The GNSO Council adopted the language, then the ICANN Board adopted it and it was placed in the Applicant Guidebook. Exactly as you have outlined above. In this case, the original text of the adopted rules is: "The TC [Trademark Clearinghouse] Database should be required to include nationally or multinationally registered "text mark" trademarks, from all jurisdictions (including countries where there is no substantive review). (The trademarks to be included in the TC 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.)" As the TMCH was created, and the Sunrise Period and TM Claims, so too were these limits created to balance a system which to many (echoing Paul Keating's earlier thought) provided unprecedented rights of preemption to trademark owners. It all flows from the same page... Best, Kathy Paul K It depends on your definition of the status quo, I suppose. If the status quo is the GNSO Policy, as developed by the IRT and STI and adopted by the Board as reflected in the AGB, meaning no mention of GIs in the TMCH, then the status quo seems just fine. However, if the status quo is that GIs have creeped into TMCH via the TMCH provider, than the status quo needs to be challenged. Best, Paul M From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Sunday, April 30, 2017 12:54 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal><mailto:jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Frankly I would like to know. And I don't want to maintain the status quo absent evidence that it is worth the intrusion. Sincerely, Paul Keating, Esq. On Apr 30, 2017, at 5:21 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, It's a good question that we can research, but given that some members of the group are less open to explore if registered GIs should be in the TMCH or not, I question if the entire exercise is not a waste of time. As I just suggested since there seems to be some disagreement (between US and other practitioners) perhaps leaving the status quo is best at this time. Thanks, [cid:image001.png@01D2C358.6BB88980] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: paul@law.es<mailto:paul@law.es> Sent: 30 April 2017 19:01 To: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> Cc: gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week This is a great thread and I find Greg's explanations are very helpful. Question: are GI's registered in a "GI registry" but NOT in a trademark registry entitled to treaty protections afforded to registered trademarks? Or are they treated "somewhat" differently as, for example, NGOs are treated under 6ter? Sent from my iPad On 30 Apr 2017, at 11:28, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Greg, When I used the word “mark”, I didn’t mean “trademark”. I was making a distinction between a “mark” and a “trade mark” because I was trying to state that various forms of indicators can become trademarks. Thus, the term “mark” is not reserved to trademarks, unless it is applied in the legal sense. If it is applied in the legal sense it is synonymous with the word “sign”. WIPO’s use of the word “sign” with respect to GIs should not be an indication that WIPO specifically wished to exclude “marks” from this definition because some other (non-US) legal systems define a trademark as a “sign” capable of distinguishing goods (or services) of one undertaking from those of other undertakings. See UK’s Trade Marks Act, 1994, s. 1. Under the UK TM Act GIS are collective trademarks. It states that: “a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.” I think that the rest of the discussion is not relevant to my point, because I am advocating the we should allow GI that have been registered into the TMCH because they are signs capable of disguising goods of one undertaking from those of other undertakings. Assuming we agree to have GIs that are registered in a national trademark registry into the TMCH, why do you object to having the same signs that are registered in a national GI registry into the TMCH? Thanks, [cid:image001.png@01D2C358.6BB88980] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Sunday, April 30, 2017 8:11 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, Responses in-line: On Sat, Apr 29, 2017 at 10:59 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Greg, You state: Claiming that GIs are trademarks (or even "marks") is not something I can support. But, GIs are simply word marks. No, GIs are not "word marks." That is the point you are trying to prove. Stating it to prove the point is circular. They may be words (or designs, or combinations of words and designs). If by word "mark," you mean a trademark, then that is not true. If you don't mean a trademark, then what definition of "mark" are you using? I note that WIPO, in defining GIs, uses "sign" and not "mark". GIs may be words, and they may signify something, but they are not trademarks, unless and until they are registered as trademarks. Using the word "mark" to refer to both "trademarks" and "not trademarks" essentially strips it of meaning. PARMA is a word mark, is it not? It is not. PARMA is a word. It is not per se a word mark. Whether it's a "word mark" depends on whether it is registered as a trademark (putting aside "common law" marks, since they are generally not accepted into the TMCH unless they are "court-validated"). If it is used in a way that qualifies as a trademark under the trademark laws of a particular jurisdiction as a trademark of some sort, and it is registered as a trademark, then it is a trademark (or a "word mark" if you wish). If it is a GI and it is registered as such, or if it is not registered at all, it is not a trademark. And PARMA can (and was) registered as trademarks in the US. Yes, but that hardly proves your point. Quite the opposite. There are currently seven registrations for PARMA (without any other words) on the US trademark register. With one exception, these trademarks are clearly not functioning in any way akin to a GI. Five are "standard form" registrations (text without any type of formatting) for PARMA, owned by five different registrants for the following goods and services: 1. Hard wood flooring; Engineered wood flooring; Laminate flooring; Luxury vinyl tile. 2. Restaurant and bar services, namely, fine dining restaurant services. 3. Faucets, shower heads and faucet sets. Towel rings, clothes-drying racks; bath accessories, namely, cup holders, toothbrush holders and soap dishes. 4. Computer software for use in displaying and printing digital typeface designs and typographic ornaments. 5. Fluid pumps-namely, irrigation and drainage pumps, sewerage and sump pumps, tractor-drawn farm implements-namely, corrugators, crop toppers, and beet cleaners. One is a registration for "PARMA!" (with an exclamation point) for "Flavourings and seasonings; Food seasonings; Seasonings." One is a registration for PARMA Plus Design (consisting of the word "PARMA" inside a stylized crown) for "Ham Products." This registration is owned by CONSORZIO DEL PROSCIUTTO DI PARMA ASSOCIATION ITALY Largo Calamandrei 1/A Parma (PR) ITALY, as a Certification Mark, with the statement: "The certification mark, as used by persons authorized by the certifier, certifies the regional origin of the products and certifies that those products conform to the production process, size, shape, weight, curing, slicing and packaging requirements promulgated by the certifier." I assume this is the registration you are referring to (particularly since there is no "standard form" registration for PARMA owned by the CONSORZIO DEL PROSCIUTTO DI PARMA). The CONSORZIO DEL PROSCIUTTO DI PARMA also owns two other Certification Mark registrations containing the word PARMA: One for PARMA HAM ("Ham" disclaimed) and one for PROSCIUTTO DI PARMA ("Prosciutto" disclaimed). Both of these are standard form registrations. ( Notably, there is a registration for PARMA BRAND Plus Design (consisting of the words PARMA BRAND in a circle with a flying eagle clutching a sausage in its talons) ("Brand" disclaimed) for MEAT PRODUCTS-NAMELY, SAUSAGE, SALAMI, CAPICOLLO, LUNCH MEATS, owned by Parma Sausage Products, Inc. of Pittsburgh, PA. This registration predates all of the registrations owned by the Consorzio. Interestingly, all three of the Consorzio's applications were refused registration by the USPTO based on the PARMA BRAND Plus Design registration (which at that time included "Prosciutto" among its goods and services). (For all those talking about "scope of protection" of text + design marks, this is a great example to consider -- the two text-only marks and the PARMA (and Crown) mark were refused registration by PARMA Brand plus a sausage-toting eagle. Clearly the scope of the PARMA Brand registration extended beyond the context of its design.) The Consorzio del Prosciutto di Parma and Parma Sausage Products entered into a settlement agreement, whereby Parma Sausage agreed to remove "prosciutto" from its goods and services, which allowed the Consorzio applications to proceed to registration on the trademark register. Then, and only then, did the PARMA (and Crown), PARMA HAM and PROSCIUTTO DI PARMA "signs" become trademarks (assuming they were not registered as trademarks elsewhere first). These registrations could be relied on to register PARMA, PARMA HAM and PROSCIUTTO DI PARMA in the TMCH (noting there is still some disagreement in the WG whether the crown in the PARMA registration somehow disqualifies it from serving as the basis for entry of PARMA into the TMCH). Of course, each of the first six registrations above could also form the basis for entering PARMA into the TMCH (the sixth by excluding the "!"). None of these are GIs, of course. And the PARMA BRAND registration could form the basis for entering PARMA BRAND into the TMCH (again noting the disagreement on how such text plus design marks should be handled). This too, is not a GI, even if it used for meat products (but not prosciutto) made in the great city of Pittsburgh, PA. https://www.parmasausage.com/ Can you explain, what you meant? Hope that helps. I've attached a document with some of the info referred to here.... Thanks, You are most welcome. Greg <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>] Sent: Saturday, April 29, 2017 5:37 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:%28917%29%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:%28646%29%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:%28212%29%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:%28212%29%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. 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Agree. Thanks for recalling this for us all, Paul. Brian From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Tuesday, May 02, 2017 10:28 PM To: Kathy Kleiman; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] [renamed] Back to Question #7 Thanks Kathy. I don’t think there are gobs of disagreements on the point you raise. The disagreement is, as we have discussed at great length, in the definitions. You are trying to lump in stylized marks and composite marks in with design marks. Not everyone agrees. Since we have spent so much time on that, I don’t think it makes sense for me to engage again in another round. The good news is that Staff has put forward a proposed glossary and we are going over that now. Hopefully, we when we can all get on the same page with definitions, we can then go back and look at the AGB to see what it says. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Tuesday, May 02, 2017 3:21 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [renamed] Back to Question #7 Hi Paul, Let me echo your respect and appreciation for "GNSO Policy, as developed by the IRT and STI" and adopted by the Board as reflected in the AGB". I agree! J. Scott made a similar point re: the existence of the Sunrise Period and TM Claims itself -- all a product of the original process. These were tough compromises negotiated carefully and worked on in good faith by the participants and their stakeholder groups. To that list of original agreements, we must add the bar against acceptance of trademarks into the TMCH database with styling, design or logo. The STI could not have been more clear in what it adopted for addition to the TMCH database -- text marks outside of logos or designs. The GNSO Council adopted the language, then the ICANN Board adopted it and it was placed in the Applicant Guidebook. Exactly as you have outlined above. In this case, the original text of the adopted rules is: "The TC [Trademark Clearinghouse] Database should be required to include nationally or multinationally registered "text mark" trademarks, from all jurisdictions (including countries where there is no substantive review). (The trademarks to be included in the TC 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.)" As the TMCH was created, and the Sunrise Period and TM Claims, so too were these limits created to balance a system which to many (echoing Paul Keating's earlier thought) provided unprecedented rights of preemption to trademark owners. It all flows from the same page... Best, Kathy Paul K It depends on your definition of the status quo, I suppose. If the status quo is the GNSO Policy, as developed by the IRT and STI and adopted by the Board as reflected in the AGB, meaning no mention of GIs in the TMCH, then the status quo seems just fine. However, if the status quo is that GIs have creeped into TMCH via the TMCH provider, than the status quo needs to be challenged. Best, Paul M From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Sunday, April 30, 2017 12:54 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal><mailto:jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Frankly I would like to know. And I don't want to maintain the status quo absent evidence that it is worth the intrusion. Sincerely, Paul Keating, Esq. On Apr 30, 2017, at 5:21 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, It's a good question that we can research, but given that some members of the group are less open to explore if registered GIs should be in the TMCH or not, I question if the entire exercise is not a waste of time. As I just suggested since there seems to be some disagreement (between US and other practitioners) perhaps leaving the status quo is best at this time. Thanks, [cid:image001.png@01D2C3F2.9CB9CD10] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: paul@law.es<mailto:paul@law.es> Sent: 30 April 2017 19:01 To: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> Cc: gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week This is a great thread and I find Greg's explanations are very helpful. Question: are GI's registered in a "GI registry" but NOT in a trademark registry entitled to treaty protections afforded to registered trademarks? Or are they treated "somewhat" differently as, for example, NGOs are treated under 6ter? Sent from my iPad On 30 Apr 2017, at 11:28, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Greg, When I used the word “mark”, I didn’t mean “trademark”. I was making a distinction between a “mark” and a “trade mark” because I was trying to state that various forms of indicators can become trademarks. Thus, the term “mark” is not reserved to trademarks, unless it is applied in the legal sense. If it is applied in the legal sense it is synonymous with the word “sign”. WIPO’s use of the word “sign” with respect to GIs should not be an indication that WIPO specifically wished to exclude “marks” from this definition because some other (non-US) legal systems define a trademark as a “sign” capable of distinguishing goods (or services) of one undertaking from those of other undertakings. See UK’s Trade Marks Act, 1994, s. 1. Under the UK TM Act GIS are collective trademarks. It states that: “a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.” I think that the rest of the discussion is not relevant to my point, because I am advocating the we should allow GI that have been registered into the TMCH because they are signs capable of disguising goods of one undertaking from those of other undertakings. Assuming we agree to have GIs that are registered in a national trademark registry into the TMCH, why do you object to having the same signs that are registered in a national GI registry into the TMCH? Thanks, [cid:image001.png@01D2C3F2.9CB9CD10] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Sunday, April 30, 2017 8:11 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, Responses in-line: On Sat, Apr 29, 2017 at 10:59 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Greg, You state: Claiming that GIs are trademarks (or even "marks") is not something I can support. But, GIs are simply word marks. No, GIs are not "word marks." That is the point you are trying to prove. Stating it to prove the point is circular. They may be words (or designs, or combinations of words and designs). If by word "mark," you mean a trademark, then that is not true. If you don't mean a trademark, then what definition of "mark" are you using? I note that WIPO, in defining GIs, uses "sign" and not "mark". GIs may be words, and they may signify something, but they are not trademarks, unless and until they are registered as trademarks. Using the word "mark" to refer to both "trademarks" and "not trademarks" essentially strips it of meaning. PARMA is a word mark, is it not? It is not. PARMA is a word. It is not per se a word mark. Whether it's a "word mark" depends on whether it is registered as a trademark (putting aside "common law" marks, since they are generally not accepted into the TMCH unless they are "court-validated"). If it is used in a way that qualifies as a trademark under the trademark laws of a particular jurisdiction as a trademark of some sort, and it is registered as a trademark, then it is a trademark (or a "word mark" if you wish). If it is a GI and it is registered as such, or if it is not registered at all, it is not a trademark. And PARMA can (and was) registered as trademarks in the US. Yes, but that hardly proves your point. Quite the opposite. There are currently seven registrations for PARMA (without any other words) on the US trademark register. With one exception, these trademarks are clearly not functioning in any way akin to a GI. Five are "standard form" registrations (text without any type of formatting) for PARMA, owned by five different registrants for the following goods and services: 1. Hard wood flooring; Engineered wood flooring; Laminate flooring; Luxury vinyl tile. 2. Restaurant and bar services, namely, fine dining restaurant services. 3. Faucets, shower heads and faucet sets. Towel rings, clothes-drying racks; bath accessories, namely, cup holders, toothbrush holders and soap dishes. 4. Computer software for use in displaying and printing digital typeface designs and typographic ornaments. 5. Fluid pumps-namely, irrigation and drainage pumps, sewerage and sump pumps, tractor-drawn farm implements-namely, corrugators, crop toppers, and beet cleaners. One is a registration for "PARMA!" (with an exclamation point) for "Flavourings and seasonings; Food seasonings; Seasonings." One is a registration for PARMA Plus Design (consisting of the word "PARMA" inside a stylized crown) for "Ham Products." This registration is owned by CONSORZIO DEL PROSCIUTTO DI PARMA ASSOCIATION ITALY Largo Calamandrei 1/A Parma (PR) ITALY, as a Certification Mark, with the statement: "The certification mark, as used by persons authorized by the certifier, certifies the regional origin of the products and certifies that those products conform to the production process, size, shape, weight, curing, slicing and packaging requirements promulgated by the certifier." I assume this is the registration you are referring to (particularly since there is no "standard form" registration for PARMA owned by the CONSORZIO DEL PROSCIUTTO DI PARMA). The CONSORZIO DEL PROSCIUTTO DI PARMA also owns two other Certification Mark registrations containing the word PARMA: One for PARMA HAM ("Ham" disclaimed) and one for PROSCIUTTO DI PARMA ("Prosciutto" disclaimed). Both of these are standard form registrations. ( Notably, there is a registration for PARMA BRAND Plus Design (consisting of the words PARMA BRAND in a circle with a flying eagle clutching a sausage in its talons) ("Brand" disclaimed) for MEAT PRODUCTS-NAMELY, SAUSAGE, SALAMI, CAPICOLLO, LUNCH MEATS, owned by Parma Sausage Products, Inc. of Pittsburgh, PA. This registration predates all of the registrations owned by the Consorzio. Interestingly, all three of the Consorzio's applications were refused registration by the USPTO based on the PARMA BRAND Plus Design registration (which at that time included "Prosciutto" among its goods and services). (For all those talking about "scope of protection" of text + design marks, this is a great example to consider -- the two text-only marks and the PARMA (and Crown) mark were refused registration by PARMA Brand plus a sausage-toting eagle. Clearly the scope of the PARMA Brand registration extended beyond the context of its design.) The Consorzio del Prosciutto di Parma and Parma Sausage Products entered into a settlement agreement, whereby Parma Sausage agreed to remove "prosciutto" from its goods and services, which allowed the Consorzio applications to proceed to registration on the trademark register. Then, and only then, did the PARMA (and Crown), PARMA HAM and PROSCIUTTO DI PARMA "signs" become trademarks (assuming they were not registered as trademarks elsewhere first). These registrations could be relied on to register PARMA, PARMA HAM and PROSCIUTTO DI PARMA in the TMCH (noting there is still some disagreement in the WG whether the crown in the PARMA registration somehow disqualifies it from serving as the basis for entry of PARMA into the TMCH). Of course, each of the first six registrations above could also form the basis for entering PARMA into the TMCH (the sixth by excluding the "!"). None of these are GIs, of course. And the PARMA BRAND registration could form the basis for entering PARMA BRAND into the TMCH (again noting the disagreement on how such text plus design marks should be handled). This too, is not a GI, even if it used for meat products (but not prosciutto) made in the great city of Pittsburgh, PA. https://www.parmasausage.com/ Can you explain, what you meant? Hope that helps. I've attached a document with some of the info referred to here.... Thanks, You are most welcome. Greg <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>] Sent: Saturday, April 29, 2017 5:37 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:%28917%29%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:%28646%29%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:%28212%29%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:%28212%29%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. 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+1 From: <gnso-rpm-wg-bounces@icann.org> on behalf of Kathy Kleiman <kathy@kathykleiman.com> Date: Tuesday, May 2, 2017 at 10:20 PM To: <gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [renamed] Back to Question #7
Hi Paul,
Let me echo your respect and appreciation for "GNSO Policy, as developed by the IRT and STI" and adopted by the Board as reflected in the AGB". I agree! J. Scott made a similar point re: the existence of the Sunrise Period and TM Claims itself -- all a product of the original process. These were tough compromises negotiated carefully and worked on in good faith by the participants and their stakeholder groups.
To that list of original agreements, we must add the bar against acceptance of trademarks into the TMCH database with styling, design or logo. The STI could not have been more clear in what it adopted for addition to the TMCH database -- text marks outside of logos or designs. The GNSO Council adopted the language, then the ICANN Board adopted it and it was placed in the Applicant Guidebook. Exactly as you have outlined above. In this case, the original text of the adopted rules is:
"The TC [Trademark Clearinghouse] Database should be required to include nationally or multinationally registered "text mark" trademarks, from all jurisdictions (including countries where there is no substantive review). (The trademarks to be included in the TC 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.)"
As the TMCH was created, and the Sunrise Period and TM Claims, so too were these limits created to balance a system which to many (echoing Paul Keating's earlier thought) provided unprecedented rights of preemption to trademark owners. It all flows from the same page...
Best, Kathy
Paul K
It depends on your definition of the status quo, I suppose. If the status quo is the GNSO Policy, as developed by the IRT and STI and adopted by the Board as reflected in the AGB, meaning no mention of GIs in the TMCH, then the status quo seems just fine. However, if the status quo is that GIs have creeped into TMCH via the TMCH provider, than the status quo needs to be challenged.
Best,
Paul M
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Sunday, April 30, 2017 12:54 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> <mailto:jonathan.agmon@ip-law.legal> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Frankly I would like to know.
And I don't want to maintain the status quo absent evidence that it is worth the intrusion.
Sincerely,
Paul Keating, Esq.
On Apr 30, 2017, at 5:21 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Paul,
It's a good question that we can research, but given that some members of the group are less open to explore if registered GIs should be in the TMCH or not, I question if the entire exercise is not a waste of time.
As I just suggested since there seems to be some disagreement (between US and other practitioners) perhaps leaving the status quo is best at this time.
Thanks,
Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal <http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
From: paul@law.es
Sent: 30 April 2017 19:01
To: jonathan.agmon@ip-law.legal
Cc: gregshatanipc@gmail.com; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
This is a great thread and I find Greg's explanations are very helpful.
Question: are GI's registered in a "GI registry" but NOT in a trademark registry entitled to treaty protections afforded to registered trademarks?
Or are they treated "somewhat" differently as, for example, NGOs are treated under 6ter?
Sent from my iPad
On 30 Apr 2017, at 11:28, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Greg,
When I used the word “mark”, I didn’t mean “trademark”. I was making a distinction between a “mark” and a “trade mark” because I was trying to state that various forms of indicators can become trademarks. Thus, the term “mark” is not reserved to trademarks, unless it is applied in the legal sense. If it is applied in the legal sense it is synonymous with the word “sign”.
WIPO’s use of the word “sign” with respect to GIs should not be an indication that WIPO specifically wished to exclude “marks” from this definition because some other (non-US) legal systems define a trademark as a “sign” capable of distinguishing goods (or services) of one undertaking from those of other undertakings. See UK’s Trade Marks Act, 1994, s. 1. Under the UK TM Act GIS are collective trademarks. It states that: “a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.”
I think that the rest of the discussion is not relevant to my point, because I am advocating the we should allow GI that have been registered into the TMCH because they are signs capable of disguising goods of one undertaking from those of other undertakings.
Assuming we agree to have GIs that are registered in a national trademark registry into the TMCH, why do you object to having the same signs that are registered in a national GI registry into the TMCH?
Thanks,
Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal <http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Sunday, April 30, 2017 8:11 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: J. Scott Evans <jsevans@adobe.com>; Massimo <Massimo@origin-gi.com>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Jonathan,
Responses in-line:
On Sat, Apr 29, 2017 at 10:59 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Greg,
You state: Claiming that GIs are trademarks (or even "marks") is not something I can support.
But, GIs are simply word marks.
No, GIs are not "word marks." That is the point you are trying to prove. Stating it to prove the point is circular. They may be words (or designs, or combinations of words and designs). If by word "mark," you mean a trademark, then that is not true. If you don't mean a trademark, then what definition of "mark" are you using? I note that WIPO, in defining GIs, uses "sign" and not "mark". GIs may be words, and they may signify something, but they are not trademarks, unless and until they are registered as trademarks. Using the word "mark" to refer to both "trademarks" and "not trademarks" essentially strips it of meaning.
PARMA is a word mark, is it not?
It is not. PARMA is a word. It is not per se a word mark. Whether it's a "word mark" depends on whether it is registered as a trademark (putting aside "common law" marks, since they are generally not accepted into the TMCH unless they are "court-validated"). If it is used in a way that qualifies as a trademark under the trademark laws of a particular jurisdiction as a trademark of some sort, and it is registered as a trademark, then it is a trademark (or a "word mark" if you wish). If it is a GI and it is registered as such, or if it is not registered at all, it is not a trademark.
And PARMA can (and was) registered as trademarks in the US.
Yes, but that hardly proves your point. Quite the opposite. There are currently seven registrations for PARMA (without any other words) on the US trademark register. With one exception, these trademarks are clearly not functioning in any way akin to a GI.
Five are "standard form" registrations (text without any type of formatting) for PARMA, owned by five different registrants for the following goods and services:
1. Hard wood flooring; Engineered wood flooring; Laminate flooring; Luxury vinyl tile.
2. Restaurant and bar services, namely, fine dining restaurant services.
3. Faucets, shower heads and faucet sets. Towel rings, clothes-drying racks; bath accessories, namely, cup holders, toothbrush holders and soap dishes.
4. Computer software for use in displaying and printing digital typeface designs and typographic ornaments.
5. Fluid pumps-namely, irrigation and drainage pumps, sewerage and sump pumps, tractor-drawn farm implements-namely, corrugators, crop toppers, and beet cleaners.
One is a registration for "PARMA!" (with an exclamation point) for "Flavourings and seasonings; Food seasonings; Seasonings."
One is a registration for PARMA Plus Design (consisting of the word "PARMA" inside a stylized crown) for "Ham Products." This registration is owned by CONSORZIO DEL PROSCIUTTO DI PARMA ASSOCIATION ITALY Largo Calamandrei 1/A Parma (PR) ITALY, as a Certification Mark, with the statement: "The certification mark, as used by persons authorized by the certifier, certifies the regional origin of the products and certifies that those products conform to the production process, size, shape, weight, curing, slicing and packaging requirements promulgated by the certifier." I assume this is the registration you are referring to (particularly since there is no "standard form" registration for PARMA owned by the CONSORZIO DEL PROSCIUTTO DI PARMA).
The CONSORZIO DEL PROSCIUTTO DI PARMA also owns two other Certification Mark registrations containing the word PARMA: One for PARMA HAM ("Ham" disclaimed) and one for PROSCIUTTO DI PARMA ("Prosciutto" disclaimed). Both of these are standard form registrations. (
Notably, there is a registration for PARMA BRAND Plus Design (consisting of the words PARMA BRAND in a circle with a flying eagle clutching a sausage in its talons) ("Brand" disclaimed) for MEAT PRODUCTS-NAMELY, SAUSAGE, SALAMI, CAPICOLLO, LUNCH MEATS, owned by Parma Sausage Products, Inc. of Pittsburgh, PA. This registration predates all of the registrations owned by the Consorzio.
Interestingly, all three of the Consorzio's applications were refused registration by the USPTO based on the PARMA BRAND Plus Design registration (which at that time included "Prosciutto" among its goods and services). (For all those talking about "scope of protection" of text + design marks, this is a great example to consider -- the two text-only marks and the PARMA (and Crown) mark were refused registration by PARMA Brand plus a sausage-toting eagle. Clearly the scope of the PARMA Brand registration extended beyond the context of its design.) The Consorzio del Prosciutto di Parma and Parma Sausage Products entered into a settlement agreement, whereby Parma Sausage agreed to remove "prosciutto" from its goods and services, which allowed the Consorzio applications to proceed to registration on the trademark register.
Then, and only then, did the PARMA (and Crown), PARMA HAM and PROSCIUTTO DI PARMA "signs" become trademarks (assuming they were not registered as trademarks elsewhere first). These registrations could be relied on to register PARMA, PARMA HAM and PROSCIUTTO DI PARMA in the TMCH (noting there is still some disagreement in the WG whether the crown in the PARMA registration somehow disqualifies it from serving as the basis for entry of PARMA into the TMCH).
Of course, each of the first six registrations above could also form the basis for entering PARMA into the TMCH (the sixth by excluding the "!"). None of these are GIs, of course. And the PARMA BRAND registration could form the basis for entering PARMA BRAND into the TMCH (again noting the disagreement on how such text plus design marks should be handled). This too, is not a GI, even if it used for meat products (but not prosciutto) made in the great city of Pittsburgh, PA. https://www.parmasausage.com/
Can you explain, what you meant?
Hope that helps. I've attached a document with some of the info referred to here....
Thanks,
You are most welcome.
Greg
<image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal www.ip-law.legal <http://www.ip-law.legal> T SG +65 6532 2577 <tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Saturday, April 29, 2017 5:37 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: J. Scott Evans <jsevans@adobe.com>; Massimo <Massimo@origin-gi.com>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
+1000 to J Scott on this point:
A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims.
Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs.
Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks.
Greg
[As always, in my personal capacity, unless otherwise noted.]
Greg Shatan C: 917-816-6428 <tel:%28917%29%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <tel:%28646%29%20845-9428> gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>
On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
+1
<image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal <http://www.ip-law.legal> T SG +65 6532 2577 <tel:+65%206532%202577> T US +1 212 999 6180 <tel:%28212%29%20999-6180> T IL +972 9 950 7000 <tel:+972%209-950-7000> F IL +972 9 950 5500 <tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
From: Massimo@origin-gi.com
Sent: 29 April 2017 22:48
To: jsevans@adobe.com
Cc: jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org
Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level.
Best, Massimo
From: J. Scott Evans <mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo <mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon <mailto:jonathan.agmon@ip-law.legal> ; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights.
Sent from my iPhone
On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com> wrote:
> > > > > > The disagreement concerns whether to protect GIs via an independent > system or via trademarks, but not the GI concept itself. But for the > time being countries can choose their system, and their choice is > legitimate. > > An example: prosciutto di Parma is a GI in the EU. As the product is > exported in the US, the association of producers owns now a > certification mark there for exactly the same name. So Prosciutto di > Parma can be for sure in the TMCH. > > But if that product was exported only within Europe or the Asian > countries I mentioned in an earlier email having independent GI systems > (so no certification mark on the same name was available), do not you > think that being excluded from the TMCH (as well as from dispute > resolution) would have been discriminatory? > > Again, I think we should spend more time on those issues rather than > rushing to a conclusion which might not reflect the existing situation. > > Best, Massimo > > > > > > > > > > From: J. Scott Evans <mailto:jsevans@adobe.com> > Sent: 29.04.2017 15:18 > To: Massimo <mailto:Massimo@origin-gi.com> > Cc: Jonathan Agmon <mailto:jonathan.agmon@ip-law.legal> ; > gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call > this week > > > > > > I spoke directly with representatives from the USPTO and I also > understand USPTO representatives attended the meeting at n Copenhagen. > Based on my discussions with the USPTO, I disagree that there is > universal treatment of GI's that are not registered as trademarks. In > fact, I know that the scope of protection for GI's has been a thorny > issue in international trade negotiations since at least the 1930's. It > has s not a settled point by any means. > > Sent from my iPhone > > > > > > On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com> wrote: > > > > > > > > Hi, I was trying to show that luck of understanding about GIs does not > exist any more as the large majority of countries have specific laws > with transparent registration processes. There is not divergence at all > in terms of definition of the GI concept and obligation to protect that > IPR concept (TRIPs Agreement). The WG should make proposals that reflect > the current legal and economic reality. > > Best, Massimo > > > > > > > > > > From: J. Scott Evans via gnso-rpm-wg <mailto:gnso-rpm-wg@icann.org> > Sent: 29.04.2017 14:46 > To: Jonathan Agmon <mailto:jonathan.agmon@ip-law.legal> > Cc: gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call > this week > > > > > > I disagree. I was on the IRT. GI's were never discussed. It is precisely > because there is no universal understanding or treatment of GI's that > only those GI's that are"marks" aka "trademarks" should be allowed in > the TMCH. Paul Mc's proposal is the correct Avenue to address this over > inclusiveness. > > Sent from my iPhone > > > > > > On Apr 28, 2017, at 8:36 PM, Jonathan Agmon > <jonathan.agmon@ip-law.legal> wrote: > > > > > > > Paul, > > > > I am not sure about the broad alignment, especially not outside the US. > There are differing opinions on the issue. > > > > I still disagree with you basic understanding of GIs. GIs are marks as > they are comprised of text words. GIs are trademarks when they denote > the source of goods. They can be registered in national trademark > registries. The only difference between the US and other countries is > where they are registered. This is not a basis for exclusion from the > TMCH. In most countries of the world GI registration is performed in > the trademark registry (GI section) or in a specialized GI registry. > > > > Since the TMCH is a very important protection rights protection > mechanism, available to brand owners, and in most countries of the > world, the general view is that GIs are a type of trademarks, I make the > following alternative proposal: > > > > “GIs comprise of word marks. When registered, GIs serve as collective > trademarks. If a GI is the subject of a national trademark registration, > or a national GI registration, it could have been, in the past, and may > be included, in the future in, the TMCH. For any GIs that are not the > subject of a national trademark or GI registration, or otherwise > qualified for registration under the Trademark Clearinghouse Guidelines, > at the time of registration, which are currently registered in the TMCH, > such GIs should not be renewed in the TMCH upon expiration.” > > Finally, please note that my time zone is UTC+8. > > > > Thanks, > > > > > > <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan > Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted > in New York) jonathan.agmon@ip-law.legal > <mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal > <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip- > law.legal&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7 > b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vZtzroklJn8U8 > PtzSsFvxXra%2FUpVHdIy862yVH2W53U%3D&reserved=0> > T SG +65 6532 2577 <tel:+65%206532%202577> T US +1 212 999 6180 > <tel:%28212%29%20999-6180> T IL +972 9 950 7000 > <tel:+972%209-950-7000> F IL +972 9 950 5500 > <tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. > 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. > Box 12425 4672408 Herzliya, ISRAEL > > This message is confidential. It may also be privileged or otherwise > protected by work product immunity or other legal rules. If you have > received it by mistake, please let us know by e-mail reply and delete it > from your system; you may not copy this message or disclose its contents > to anyone. Please send us by fax any message containing deadlines as > incoming e-mails are not screened for response deadlines. The integrity > and security of this message cannot be guaranteed on the Internet. > > > > > > > > From: gnso-rpm-wg-bounces@icann.org > [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists > Sent: Friday, April 28, 2017 9:35 PM > To: claudio di gangi <ipcdigangi@gmail.com>; Mary Wong > <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists > <icannlists@winston.com> > Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call > this week > > > > > > Thanks Claudio. > > > > You aren’t missing anything. The fact that the co-chairs didn’t dismiss > outright the request of a few to dig a bit deeper before moving on isn’t > unusual. It is very ICANN. However, that doesn’t change the reality > that there appears to be broad alignment across all sorts of the usual > lines that GIs, unless they are also registered trademarks, should not > be included in the Trademark Clearinghouse. Further, as of now, there > is no proposal in the record to the contrary, although I do note that > Jonathan A. indicated that he may submit one. > > > > I hope you are well. It is good to see you actively participating in an > ICANN WG again! Welcome back. > > > > Best, > > Paul > > > > > > > > > > > > From: claudio di gangi [mailto:ipcdigangi@gmail.com > <mailto:ipcdigangi@gmail.com> ] > Sent: Friday, April 28, 2017 1:49 PM > To: Mary Wong <mary.wong@icann.org <mailto:mary.wong@icann.org> >; > gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> ; icannlists > <icannlists@winston.com <mailto:icannlists@winston.com> > > Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call > this week > > > > > > Thanks, Paul. > > > > > > > > > > I listened to that part of the call again, and after the presentation of > the proposal, Phil took comments from George, Greg, and Jonathan (all > provided input/ideas about ways GIs could be protected) and there was a > request for staff to obtain more background on the 'marks protected by > statute or treaty' language. > > > > > > > > > > There didn't seem to be a conclusion, hence my earlier email about next > steps. > > > > > > > > > > Please let me know if I missing something. > > > > > > > > > > Best regards, > > > > > Claudio > > > > > > > > > > > > On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com> > wrote: > > > > > > > Thanks Claudio. However, after the last WG call I thought we had > reached the opposite conclusion that there was little or no interest in > taking up the GIs issue at this time. Jonathan A. thought he might put > forward a third proposal on GIs, but I haven’t seen that yet on this (or > at least I don’t think I have). > > > > Best, > > Paul > > > > > > > > From: gnso-rpm-wg-bounces@icann.org > <mailto:gnso-rpm-wg-bounces@icann.org> > [mailto:gnso-rpm-wg-bounces@icann.org > <mailto:gnso-rpm-wg-bounces@icann.org> ] On Behalf Of claudio di gangi > Sent: Friday, April 28, 2017 12:58 PM > To: Mary Wong <mary.wong@icann.org <mailto:mary.wong@icann.org> >; > gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> > Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call > this week > > > > > > > > > > > Mary, all, > > > > > > > > > > I just recently joined the WG, so I'm reading the listserve to get > caught up to speed. It's been very helpful and informative to review all > the contributions. > > > > > > > > > > An initial question: is a work plan being established for addressing > issues that were discussed on Wednesday's call? > > > > > > > > > > For example, on Paul and Kathy's proposal related to GIs - I think the > group has identified a good issue worthy of further analysis, e.g. > should GIs be protected against registration abuse, as a consumer > safeguard in new gTLDs? > > > > > > > > > > If that approach is supported by the analysis, they could be registered > in the limited registration period that is currently described in the > Applicant Guidebook, that takes place following the Sunrise period, > supported by the Clearinghouse or an ancillary database. > > > > > > > > > > On the basis that further analysis of this topic would be helpful to > inform WG deliberations, where should it take place - on the Sunrise > subteam or somewhere else? > > > > > > > > > > I'm looking forward to working with everyone on the team. > > > > > > > > > > Thanks! > > > > > > > > > > Best regards, > > > > > Claudio > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org> wrote: > > > > > > > Dear all, > > > > The proposed agenda for our call this Thursday at 0300 UTC (reminder: > Wednesday evening/night for those in the Americas) is as follows; please > also see the Notes that are included below: > > > > 1. Roll call (via Adobe Connect and phone bridge only); updates > to Statements of Interest > > > 2. Report on progress and status updates from the co-chairs of > the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain > & Michael Graham) – 5 minutes for each Sub Team update > > > 3. Discuss consolidated table of proposals received on TMCH Open > Questions 7, 8 and 10 (see Notes below) > > > 4. Notice of deadline for further follow up questions to the > Analysis Group > > > 5. Next steps/next meeting > > > > > Notes: > > o For Agenda Item #2, the composition, meeting transcripts and > current work status of each of the two Sub Teams can be viewed at their > respective wiki pages: https://community.icann.org/x/msrRAw > <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommun > ity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb > 0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sd > ata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> > (Sunrise) and https://community.icann.org/x/psrRAw > <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommun > ity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb > 0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sd > ata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> > (Claims). > > > > > o For Agenda Item #3, please review the first attached document. This > is the tabular form of all proposals received to date on the three open > TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. > Staff has not edited the language of the proposals received, although we > have formatted them to some extent to enable easier reading, and we have > also separated out accompanying rationale and context (where this was > provided) and pasted these into a second table (starting on Page 7). > > > > > For your reference, we are also attaching a second document, which is a > compilation of other proposals received so far. Please note that these > proposals are being circulated for your information only, and will not > be discussed at this time as they concern topics that have either been > deferred or that have to do with Sunrise and/or Claims. The co-chairs > may refer these to the Sub Teams, but only for the specific purpose of > seeing if the subjects have been covered by existing Charter questions, > or if they can be helpful in refining the existing Charter questions. > > > > Finally, the co-chairs and staff are aware that Working Group members > have requested that agendas and documents be circulated as much in > advance of the minimum 24-hour deadline as possible. We were not able to > comply with that request this week due to a personal situation for one > of the co-chairs; however, going forward, the co-chairs plan to meet > with staff every Friday to ensure that agendas and, if possible, > documents, are available and distributed earlier. > > > > Thanks and cheers > > Mary > > > > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.ica > nn.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2 > 456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290 > 338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3 > D&reserved=0> > > > > > > > > > > > > > > > > The contents of this message may be privileged and confidential. 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Well, lets start somewhere :) which treaty are we talking about? [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: paul@law.es Sent: 1 May 2017 1:54 am To: jonathan.agmon@ip-law.legal Cc: gregshatanipc@gmail.com; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Frankly I would like to know. And I don't want to maintain the status quo absent evidence that it is worth the intrusion. Sincerely, Paul Keating, Esq. On Apr 30, 2017, at 5:21 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, It's a good question that we can research, but given that some members of the group are less open to explore if registered GIs should be in the TMCH or not, I question if the entire exercise is not a waste of time. As I just suggested since there seems to be some disagreement (between US and other practitioners) perhaps leaving the status quo is best at this time. Thanks, [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: paul@law.es<mailto:paul@law.es> Sent: 30 April 2017 19:01 To: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> Cc: gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week This is a great thread and I find Greg's explanations are very helpful. Question: are GI's registered in a "GI registry" but NOT in a trademark registry entitled to treaty protections afforded to registered trademarks? Or are they treated "somewhat" differently as, for example, NGOs are treated under 6ter? Sent from my iPad On 30 Apr 2017, at 11:28, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Greg, When I used the word “mark”, I didn’t mean “trademark”. I was making a distinction between a “mark” and a “trade mark” because I was trying to state that various forms of indicators can become trademarks. Thus, the term “mark” is not reserved to trademarks, unless it is applied in the legal sense. If it is applied in the legal sense it is synonymous with the word “sign”. WIPO’s use of the word “sign” with respect to GIs should not be an indication that WIPO specifically wished to exclude “marks” from this definition because some other (non-US) legal systems define a trademark as a “sign” capable of distinguishing goods (or services) of one undertaking from those of other undertakings. See UK’s Trade Marks Act, 1994, s. 1. Under the UK TM Act GIS are collective trademarks. It states that: “a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.” I think that the rest of the discussion is not relevant to my point, because I am advocating the we should allow GI that have been registered into the TMCH because they are signs capable of disguising goods of one undertaking from those of other undertakings. Assuming we agree to have GIs that are registered in a national trademark registry into the TMCH, why do you object to having the same signs that are registered in a national GI registry into the TMCH? Thanks, [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Sunday, April 30, 2017 8:11 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, Responses in-line: On Sat, Apr 29, 2017 at 10:59 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Greg, You state: Claiming that GIs are trademarks (or even "marks") is not something I can support. But, GIs are simply word marks. No, GIs are not "word marks." That is the point you are trying to prove. Stating it to prove the point is circular. They may be words (or designs, or combinations of words and designs). If by word "mark," you mean a trademark, then that is not true. If you don't mean a trademark, then what definition of "mark" are you using? I note that WIPO, in defining GIs, uses "sign" and not "mark". GIs may be words, and they may signify something, but they are not trademarks, unless and until they are registered as trademarks. Using the word "mark" to refer to both "trademarks" and "not trademarks" essentially strips it of meaning. PARMA is a word mark, is it not? It is not. PARMA is a word. It is not per se a word mark. Whether it's a "word mark" depends on whether it is registered as a trademark (putting aside "common law" marks, since they are generally not accepted into the TMCH unless they are "court-validated"). If it is used in a way that qualifies as a trademark under the trademark laws of a particular jurisdiction as a trademark of some sort, and it is registered as a trademark, then it is a trademark (or a "word mark" if you wish). If it is a GI and it is registered as such, or if it is not registered at all, it is not a trademark. And PARMA can (and was) registered as trademarks in the US. Yes, but that hardly proves your point. Quite the opposite. There are currently seven registrations for PARMA (without any other words) on the US trademark register. With one exception, these trademarks are clearly not functioning in any way akin to a GI. Five are "standard form" registrations (text without any type of formatting) for PARMA, owned by five different registrants for the following goods and services: 1. Hard wood flooring; Engineered wood flooring; Laminate flooring; Luxury vinyl tile. 2. Restaurant and bar services, namely, fine dining restaurant services. 3. Faucets, shower heads and faucet sets. Towel rings, clothes-drying racks; bath accessories, namely, cup holders, toothbrush holders and soap dishes. 4. Computer software for use in displaying and printing digital typeface designs and typographic ornaments. 5. Fluid pumps-namely, irrigation and drainage pumps, sewerage and sump pumps, tractor-drawn farm implements-namely, corrugators, crop toppers, and beet cleaners. One is a registration for "PARMA!" (with an exclamation point) for "Flavourings and seasonings; Food seasonings; Seasonings." One is a registration for PARMA Plus Design (consisting of the word "PARMA" inside a stylized crown) for "Ham Products." This registration is owned by CONSORZIO DEL PROSCIUTTO DI PARMA ASSOCIATION ITALY Largo Calamandrei 1/A Parma (PR) ITALY, as a Certification Mark, with the statement: "The certification mark, as used by persons authorized by the certifier, certifies the regional origin of the products and certifies that those products conform to the production process, size, shape, weight, curing, slicing and packaging requirements promulgated by the certifier." I assume this is the registration you are referring to (particularly since there is no "standard form" registration for PARMA owned by the CONSORZIO DEL PROSCIUTTO DI PARMA). The CONSORZIO DEL PROSCIUTTO DI PARMA also owns two other Certification Mark registrations containing the word PARMA: One for PARMA HAM ("Ham" disclaimed) and one for PROSCIUTTO DI PARMA ("Prosciutto" disclaimed). Both of these are standard form registrations. ( Notably, there is a registration for PARMA BRAND Plus Design (consisting of the words PARMA BRAND in a circle with a flying eagle clutching a sausage in its talons) ("Brand" disclaimed) for MEAT PRODUCTS-NAMELY, SAUSAGE, SALAMI, CAPICOLLO, LUNCH MEATS, owned by Parma Sausage Products, Inc. of Pittsburgh, PA. This registration predates all of the registrations owned by the Consorzio. Interestingly, all three of the Consorzio's applications were refused registration by the USPTO based on the PARMA BRAND Plus Design registration (which at that time included "Prosciutto" among its goods and services). (For all those talking about "scope of protection" of text + design marks, this is a great example to consider -- the two text-only marks and the PARMA (and Crown) mark were refused registration by PARMA Brand plus a sausage-toting eagle. Clearly the scope of the PARMA Brand registration extended beyond the context of its design.) The Consorzio del Prosciutto di Parma and Parma Sausage Products entered into a settlement agreement, whereby Parma Sausage agreed to remove "prosciutto" from its goods and services, which allowed the Consorzio applications to proceed to registration on the trademark register. Then, and only then, did the PARMA (and Crown), PARMA HAM and PROSCIUTTO DI PARMA "signs" become trademarks (assuming they were not registered as trademarks elsewhere first). These registrations could be relied on to register PARMA, PARMA HAM and PROSCIUTTO DI PARMA in the TMCH (noting there is still some disagreement in the WG whether the crown in the PARMA registration somehow disqualifies it from serving as the basis for entry of PARMA into the TMCH). Of course, each of the first six registrations above could also form the basis for entering PARMA into the TMCH (the sixth by excluding the "!"). None of these are GIs, of course. And the PARMA BRAND registration could form the basis for entering PARMA BRAND into the TMCH (again noting the disagreement on how such text plus design marks should be handled). This too, is not a GI, even if it used for meat products (but not prosciutto) made in the great city of Pittsburgh, PA. https://www.parmasausage.com/ Can you explain, what you meant? Hope that helps. I've attached a document with some of the info referred to here.... Thanks, You are most welcome. Greg <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>] Sent: Saturday, April 29, 2017 5:37 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 <image001.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. 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Jonathan and all, Replies in-line. Greg On Sun, Apr 30, 2017 at 5:27 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal
wrote:
Greg,
When I used the word “mark”, I didn’t mean “trademark”.
Thanks, that's very helpful. That clarifies that when you are referring to GI as "word marks," you do not mean that GIs are "trademarks." Since the TMCH is a Trademark Clearinghouse, and GI "word marks" are not trademarks, then they do not belong in the Trademark Clearinghouse. That would seem to close the discussion. I was making a distinction between a “mark” and a “trade mark” because I
was trying to state that various forms of indicators can become trademarks.
It may be that various forms of indicators (e.g., GIs, trade names, fictitious names, corporate names) can "become" trademarks, but until they "are" trademarks, they are not trademarks. As the first sentence of your email states, GI word marks are not trademarks, so until a particular GI becomes a trademark, it is not a trademark.
Thus, the term “mark” is not reserved to trademarks, unless it is applied in the legal sense. If it is applied in the legal sense it is synonymous with the word “sign”.
What is your basis for this? In any event, you seem to be saying that when "mark" is applied in the *legal* sense (which is probably the primary sense we should be concerned about in a discussion about legal rights), it *is *reserved for trademarks. If that is the case, however, I do not see how "mark" would be synonymous with the "sign" since the word "sign" is not synonymous with the word "trademark". Of course, terminology is not exactly settled on a worldwide basis, but at least within any system, there is typically an internal logic. In any event, semantics is (are?) less important than understanding the logic of classifications of IP.
WIPO’s use of the word “sign” with respect to GIs should not be an indication that WIPO specifically wished to exclude “marks” from this definition
You may be right that the use of the word "sign" is not an indicator of WIPO's views. No matter. A better indicator of WIPO's views can be found at http://www.wipo.int/about-ip/en/ where WIPO separately explains each of the following distinct types of intellectual property: (1) copyrights, (2) patents, (3) trademarks, (4) industrial designs and (5) geographical indications.
because some other (non-US) legal systems define a trademark as a “sign” capable of distinguishing goods (or services) of one undertaking from those of other undertakings. See UK’s Trade Marks Act, 1994, s. 1. Under the UK TM Act GIS are collective trademarks. It states that: “a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.”
I'm not admitted in the UK, but my reading is that, as in the US, GIs can be protected as collective trademarks when they meet the requirements for collective trademarks -- not that GIs are collective marks as a general rule. Notably, the quote (from Schedule 1 <http://www.legislation.gov.uk/ukpga/1994/26/schedule/1> to the Trade Marks Act of 1994) leaves out the first clause, which indicates that this is an exception to the general rule (under Section 3 <http://www.legislation.gov.uk/ukpga/1994/26/section/3> of the Act, "Absolute grounds for refusal of registration") that "(1) The following shall not be registered ... (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the ... geographical origin ... of goods or services." As a matter of fact, most GIs are not collective marks, which are defined in Schedule 1 to the Trademarks Act as follows: "In relation to a collective mark the reference in section 1(1) (signs of which a trade mark may consist) to distinguishing goods or services of one undertaking from those of other undertakings shall be construed as a reference to distinguishing goods or services of members of the association which is the proprietor of the mark from those of other undertakings."
I think that the rest of the discussion is not relevant to my point, because I am advocating the we should allow GI that have been registered into the TMCH because they are signs capable of disguising goods of one undertaking from those of other undertakings.
As noted above, GIs do not distinguish goods of one undertaking from those of other undertakings. They perform a different role. The TRIPS definition <https://www.wto.org/english/docs_e/legal_e/31bis_trips_04b_e.htm#3> is as good as any: "Geographical indications are, for the purposes of this Agreement, indications which identify a good as originating in the territory of a 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."
Assuming we agree to have GIs that are registered in a national trademark registry into the TMCH, why do you object to having the same signs that are registered in a national GI registry into the TMCH?
Because "signs that are registered in a national GI registry" are not trademarks.
Thanks,
You're welcome. Greg
Jonathan Agmon (胡韩森)
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*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Sunday, April 30, 2017 8:11 AM
*To:* Jonathan Agmon <jonathan.agmon@ip-law.legal> *Cc:* J. Scott Evans <jsevans@adobe.com>; Massimo <Massimo@origin-gi.com>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Jonathan,
Responses in-line:
On Sat, Apr 29, 2017 at 10:59 PM, Jonathan Agmon < jonathan.agmon@ip-law.legal> wrote:
Greg,
You state: Claiming that GIs *are* trademarks (or even "marks") is not something I can support.
But, GIs are simply word marks.
No, GIs are not "word marks." That is the point you are trying to prove. Stating it to prove the point is circular. They may be words (or designs, or combinations of words and designs). If by word "mark," you mean a trademark, then that is not true. If you don't mean a trademark, then what definition of "mark" are you using? I note that WIPO, in defining GIs, uses "sign" and not "mark". GIs may be words, and they may signify something, but they are not trademarks, unless and until they are registered as trademarks. Using the word "mark" to refer to both "trademarks" and "not trademarks" essentially strips it of meaning.
PARMA is a word mark, is it not?
It is not. PARMA is a word. It is not *per se* a word mark. Whether it's a "word mark" depends on whether it is registered as a trademark (putting aside "common law" marks, since they are generally not accepted into the TMCH unless they are "court-validated"). If it is used in a way that qualifies as a trademark under the trademark laws of a particular jurisdiction as a trademark of some sort, and it is registered as a trademark, then it is a trademark (or a "word mark" if you wish). If it is a GI and it is registered as such, or if it is not registered at all, it is not a trademark.
And PARMA can (and was) registered as trademarks in the US.
Yes, but that hardly proves your point. Quite the opposite. There are currently seven registrations for PARMA (without any other words) on the US trademark register. With one exception, these trademarks are clearly not functioning in any way akin to a GI.
Five are "standard form" registrations (text without any type of formatting) for PARMA, owned by five different registrants for the following goods and services:
1. Hard wood flooring; Engineered wood flooring; Laminate flooring; Luxury vinyl tile.
2. Restaurant and bar services, namely, fine dining restaurant services.
3. Faucets, shower heads and faucet sets. Towel rings, clothes-drying racks; bath accessories, namely, cup holders, toothbrush holders and soap dishes.
4. Computer software for use in displaying and printing digital typeface designs and typographic ornaments.
5. Fluid pumps-namely, irrigation and drainage pumps, sewerage and sump pumps, tractor-drawn farm implements-namely, corrugators, crop toppers, and beet cleaners.
One is a registration for "PARMA!" (with an exclamation point) for "Flavourings and seasonings; Food seasonings; Seasonings."
One is a registration for PARMA Plus Design (consisting of the word "PARMA" inside a stylized crown) for "Ham Products." This registration is owned by CONSORZIO DEL PROSCIUTTO DI PARMA ASSOCIATION ITALY Largo Calamandrei 1/A Parma (PR) ITALY, as a Certification Mark, with the statement: "The certification mark, as used by persons authorized by the certifier, certifies the regional origin of the products and certifies that those products conform to the production process, size, shape, weight, curing, slicing and packaging requirements promulgated by the certifier." I assume this is the registration you are referring to (particularly since there is no "standard form" registration for PARMA owned by the CONSORZIO DEL PROSCIUTTO DI PARMA).
The CONSORZIO DEL PROSCIUTTO DI PARMA also owns two other Certification Mark registrations containing the word PARMA: One for PARMA HAM ("Ham" disclaimed) and one for PROSCIUTTO DI PARMA ("Prosciutto" disclaimed). Both of these are standard form registrations. (
Notably, there is a registration for PARMA BRAND Plus Design (consisting of the words PARMA BRAND in a circle with a flying eagle clutching a sausage in its talons) ("Brand" disclaimed) for MEAT PRODUCTS-NAMELY, SAUSAGE, SALAMI, CAPICOLLO, LUNCH MEATS, owned by Parma Sausage Products, Inc. of Pittsburgh, PA. This registration predates all of the registrations owned by the Consorzio.
Interestingly, all three of the Consorzio's applications were refused registration by the USPTO based on the PARMA BRAND Plus Design registration (which at that time included "Prosciutto" among its goods and services). *(For all those talking about "scope of protection" of text + design marks, this is a great example to consider -- the two text-only marks and the PARMA (and Crown) mark were refused registration by PARMA Brand plus a sausage-toting eagle. Clearly the scope of the PARMA Brand registration extended beyond the context of its design.) * The Consorzio del Prosciutto di Parma and Parma Sausage Products entered into a settlement agreement, whereby Parma Sausage agreed to remove "prosciutto" from its goods and services, which allowed the Consorzio applications to proceed to registration on the trademark register.
Then, and only then, did the PARMA (and Crown), PARMA HAM and PROSCIUTTO DI PARMA "signs" become trademarks (assuming they were not registered as trademarks elsewhere first). These registrations could be relied on to register PARMA, PARMA HAM and PROSCIUTTO DI PARMA in the TMCH (noting there is still some disagreement in the WG whether the crown in the PARMA registration somehow disqualifies it from serving as the basis for entry of PARMA into the TMCH).
Of course, each of the first six registrations above could also form the basis for entering PARMA into the TMCH (the sixth by excluding the "!"). None of these are GIs, of course. And the PARMA BRAND registration could form the basis for entering PARMA BRAND into the TMCH (again noting the disagreement on how such text plus design marks should be handled). This too, is not a GI, even if it used for meat products (but not prosciutto) made in the great city of Pittsburgh, PA. https://www.parmasausage.com/
Can you explain, what you meant?
Hope that helps. I've attached a document with some of the info referred to here....
Thanks,
You are most welcome.
Greg
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
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*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Saturday, April 29, 2017 5:37 PM *To:* Jonathan Agmon <jonathan.agmon@ip-law.legal> *Cc:* J. Scott Evans <jsevans@adobe.com>; Massimo <Massimo@origin-gi.com>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org>
*Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
+1000 to J Scott on this point:
A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims.
Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs *are* trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs.
Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks.
Greg
[As always, in my personal capacity, unless otherwise noted.]
*Greg Shatan *C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com
On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon < jonathan.agmon@ip-law.legal> wrote:
+1
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
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www.ip-law.legal
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8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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*From:* Massimo@origin-gi.com
*Sent:* 29 April 2017 22:48
*To:* jsevans@adobe.com
*Cc:* jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org
*Subject:* RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level.
Best, Massimo ------------------------------
*From: *J. Scott Evans <jsevans@adobe.com> *Sent: *29.04.2017 16:02 *To: *Massimo <Massimo@origin-gi.com> *Cc: *Jonathan Agmon <jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights.
Sent from my iPhone
On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com> wrote:
The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate.
An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH.
But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory?
Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation.
Best, Massimo ------------------------------
*From: *J. Scott Evans <jsevans@adobe.com> *Sent: *29.04.2017 15:18 *To: *Massimo <Massimo@origin-gi.com> *Cc: *Jonathan Agmon <jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means.
Sent from my iPhone
On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com> wrote:
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality.
Best, Massimo ------------------------------
*From: *J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> *Sent: *29.04.2017 14:46 *To: *Jonathan Agmon <jonathan.agmon@ip-law.legal> *Cc: *gnso-rpm-wg@icann.org *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness.
Sent from my iPhone
On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Paul,
I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue.
I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry.
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
“GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.”
Finally, please note that my time zone is UTC+8.
Thanks,
<SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png>
Jonathan Agmon (胡韩森)
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*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *icannlists *Sent:* Friday, April 28, 2017 9:35 PM *To:* claudio di gangi <ipcdigangi@gmail.com>; Mary Wong < mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists < icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Claudio.
You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the *Trademark* Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one.
I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back.
Best,
Paul
*From:* claudio di gangi [mailto:ipcdigangi@gmail.com <ipcdigangi@gmail.com>] *Sent:* Friday, April 28, 2017 1:49 PM *To:* Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists < icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks, Paul.
I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language.
There didn't seem to be a conclusion, hence my earlier email about next steps.
Please let me know if I missing something.
Best regards,
Claudio
On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com> wrote:
Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.org] *On Behalf Of *claudio di gangi *Sent:* Friday, April 28, 2017 12:58 PM *To:* Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Mary, all,
I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.
An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?
For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?
If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.
On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?
I'm looking forward to working with everyone on the team.
Thanks!
Best regards,
Claudio
On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org> wrote:
Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4. Notice of deadline for further follow up questions to the Analysis Group
5. Next steps/next meeting
*Notes:*
o For *Agenda Item #2*, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> (Sunrise) and https://community.icann.org/x/psrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> (Claims).
o For *Agenda Item #3*, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will *not* be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
Thanks and cheers
Mary
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Perhaps one more note and this time about the US legal system- the USPTO states that: “Geographical indications can be viewed as a subset of trademarks. Geographical indications serve the same functions as trademarks, because like trademarks they are: 1) source-identifiers, 2) guarantees of quality, and 3) valuable business interests.” https://www.uspto.gov/sites/default/files/web/offices/dcom/olia/globalip/pdf... The same document provides that the TTAB even recognized a GI as protectable common law trademark: “Geographical indications also are protected through common law trademark law without being registered by the USPTO.” Thanks, [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Jonathan Agmon Sent: Sunday, April 30, 2017 11:28 AM To: 'Greg Shatan' <gregshatanipc@gmail.com> Cc: J. Scott Evans <jsevans@adobe.com>; Massimo <Massimo@origin-gi.com>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week Greg, When I used the word “mark”, I didn’t mean “trademark”. I was making a distinction between a “mark” and a “trade mark” because I was trying to state that various forms of indicators can become trademarks. Thus, the term “mark” is not reserved to trademarks, unless it is applied in the legal sense. If it is applied in the legal sense it is synonymous with the word “sign”. WIPO’s use of the word “sign” with respect to GIs should not be an indication that WIPO specifically wished to exclude “marks” from this definition because some other (non-US) legal systems define a trademark as a “sign” capable of distinguishing goods (or services) of one undertaking from those of other undertakings. See UK’s Trade Marks Act, 1994, s. 1. Under the UK TM Act GIS are collective trademarks. It states that: “a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.” I think that the rest of the discussion is not relevant to my point, because I am advocating the we should allow GI that have been registered into the TMCH because they are signs capable of disguising goods of one undertaking from those of other undertakings. Assuming we agree to have GIs that are registered in a national trademark registry into the TMCH, why do you object to having the same signs that are registered in a national GI registry into the TMCH? Thanks, From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Sunday, April 30, 2017 8:11 AM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Jonathan, Responses in-line: On Sat, Apr 29, 2017 at 10:59 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Greg, You state: Claiming that GIs are trademarks (or even "marks") is not something I can support. But, GIs are simply word marks. No, GIs are not "word marks." That is the point you are trying to prove. Stating it to prove the point is circular. They may be words (or designs, or combinations of words and designs). If by word "mark," you mean a trademark, then that is not true. If you don't mean a trademark, then what definition of "mark" are you using? I note that WIPO, in defining GIs, uses "sign" and not "mark". GIs may be words, and they may signify something, but they are not trademarks, unless and until they are registered as trademarks. Using the word "mark" to refer to both "trademarks" and "not trademarks" essentially strips it of meaning. PARMA is a word mark, is it not? It is not. PARMA is a word. It is not per se a word mark. Whether it's a "word mark" depends on whether it is registered as a trademark (putting aside "common law" marks, since they are generally not accepted into the TMCH unless they are "court-validated"). If it is used in a way that qualifies as a trademark under the trademark laws of a particular jurisdiction as a trademark of some sort, and it is registered as a trademark, then it is a trademark (or a "word mark" if you wish). If it is a GI and it is registered as such, or if it is not registered at all, it is not a trademark. And PARMA can (and was) registered as trademarks in the US. Yes, but that hardly proves your point. Quite the opposite. There are currently seven registrations for PARMA (without any other words) on the US trademark register. With one exception, these trademarks are clearly not functioning in any way akin to a GI. Five are "standard form" registrations (text without any type of formatting) for PARMA, owned by five different registrants for the following goods and services: 1. Hard wood flooring; Engineered wood flooring; Laminate flooring; Luxury vinyl tile. 2. Restaurant and bar services, namely, fine dining restaurant services. 3. Faucets, shower heads and faucet sets. Towel rings, clothes-drying racks; bath accessories, namely, cup holders, toothbrush holders and soap dishes. 4. Computer software for use in displaying and printing digital typeface designs and typographic ornaments. 5. Fluid pumps-namely, irrigation and drainage pumps, sewerage and sump pumps, tractor-drawn farm implements-namely, corrugators, crop toppers, and beet cleaners. One is a registration for "PARMA!" (with an exclamation point) for "Flavourings and seasonings; Food seasonings; Seasonings." One is a registration for PARMA Plus Design (consisting of the word "PARMA" inside a stylized crown) for "Ham Products." This registration is owned by CONSORZIO DEL PROSCIUTTO DI PARMA ASSOCIATION ITALY Largo Calamandrei 1/A Parma (PR) ITALY, as a Certification Mark, with the statement: "The certification mark, as used by persons authorized by the certifier, certifies the regional origin of the products and certifies that those products conform to the production process, size, shape, weight, curing, slicing and packaging requirements promulgated by the certifier." I assume this is the registration you are referring to (particularly since there is no "standard form" registration for PARMA owned by the CONSORZIO DEL PROSCIUTTO DI PARMA). The CONSORZIO DEL PROSCIUTTO DI PARMA also owns two other Certification Mark registrations containing the word PARMA: One for PARMA HAM ("Ham" disclaimed) and one for PROSCIUTTO DI PARMA ("Prosciutto" disclaimed). Both of these are standard form registrations. ( Notably, there is a registration for PARMA BRAND Plus Design (consisting of the words PARMA BRAND in a circle with a flying eagle clutching a sausage in its talons) ("Brand" disclaimed) for MEAT PRODUCTS-NAMELY, SAUSAGE, SALAMI, CAPICOLLO, LUNCH MEATS, owned by Parma Sausage Products, Inc. of Pittsburgh, PA. This registration predates all of the registrations owned by the Consorzio. Interestingly, all three of the Consorzio's applications were refused registration by the USPTO based on the PARMA BRAND Plus Design registration (which at that time included "Prosciutto" among its goods and services). (For all those talking about "scope of protection" of text + design marks, this is a great example to consider -- the two text-only marks and the PARMA (and Crown) mark were refused registration by PARMA Brand plus a sausage-toting eagle. Clearly the scope of the PARMA Brand registration extended beyond the context of its design.) The Consorzio del Prosciutto di Parma and Parma Sausage Products entered into a settlement agreement, whereby Parma Sausage agreed to remove "prosciutto" from its goods and services, which allowed the Consorzio applications to proceed to registration on the trademark register. Then, and only then, did the PARMA (and Crown), PARMA HAM and PROSCIUTTO DI PARMA "signs" become trademarks (assuming they were not registered as trademarks elsewhere first). These registrations could be relied on to register PARMA, PARMA HAM and PROSCIUTTO DI PARMA in the TMCH (noting there is still some disagreement in the WG whether the crown in the PARMA registration somehow disqualifies it from serving as the basis for entry of PARMA into the TMCH). Of course, each of the first six registrations above could also form the basis for entering PARMA into the TMCH (the sixth by excluding the "!"). None of these are GIs, of course. And the PARMA BRAND registration could form the basis for entering PARMA BRAND into the TMCH (again noting the disagreement on how such text plus design marks should be handled). This too, is not a GI, even if it used for meat products (but not prosciutto) made in the great city of Pittsburgh, PA. https://www.parmasausage.com/ Can you explain, what you meant? Hope that helps. I've attached a document with some of the info referred to here.... Thanks, You are most welcome. Greg [cid:image001.png@01D2C1A5.B07C81C0] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Greg Shatan [mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>] Sent: Saturday, April 29, 2017 5:37 PM To: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>; J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 [cid:image001.png@01D2C1A5.B07C81C0] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. 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I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended. Just to take a quick moment to step back and look at the big picture: the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation: "Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law." In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process. In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption. More specifically related to GIs, several strings delayed delegation while private protections were developed. With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine' ...so I think this is where we currently are in this WG. As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission. Best regards, Claudio On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
+1000 to J Scott on this point:
A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims.
Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs *are* trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs.
Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks.
Greg [As always, in my personal capacity, unless otherwise noted.]
*Greg Shatan *C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com
On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon < jonathan.agmon@ip-law.legal> wrote:
+1
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180
*T* IL +972 9 950 7000
*F *IL +972 9 950 5500
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8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
*From:* Massimo@origin-gi.com *Sent:* 29 April 2017 22:48 *To:* jsevans@adobe.com *Cc:* jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org *Subject:* RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level.
Best, Massimo ------------------------------ From: J. Scott Evans <jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo <Massimo@origin-gi.com> Cc: Jonathan Agmon <jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights.
Sent from my iPhone
On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com> wrote:
The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate.
An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH.
But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory?
Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation.
Best, Massimo ------------------------------ From: J. Scott Evans <jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo <Massimo@origin-gi.com> Cc: Jonathan Agmon <jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means.
Sent from my iPhone
On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com> wrote:
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality.
Best, Massimo ------------------------------ From: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon <jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness.
Sent from my iPhone
On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Paul,
I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue.
I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry.
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
“GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.”
Finally, please note that my time zone is UTC+8.
Thanks,
<SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png>
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...>
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180 <(212)%20999-6180>
*T* IL +972 9 950 7000 <+972%209-950-7000>
*F *IL +972 9 950 5500 <+972%209-950-5500>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *icannlists *Sent:* Friday, April 28, 2017 9:35 PM *To:* claudio di gangi <ipcdigangi@gmail.com>; Mary Wong < mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists < icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Claudio.
You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the *Trademark* Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one.
I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back.
Best,
Paul
*From:* claudio di gangi [mailto:ipcdigangi@gmail.com <ipcdigangi@gmail.com>] *Sent:* Friday, April 28, 2017 1:49 PM *To:* Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists <icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks, Paul.
I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language.
There didn't seem to be a conclusion, hence my earlier email about next steps.
Please let me know if I missing something.
Best regards,
Claudio
On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com> wrote:
Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.org] *On Behalf Of *claudio di gangi *Sent:* Friday, April 28, 2017 12:58 PM *To:* Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Mary, all,
I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.
An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?
For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?
If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.
On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?
I'm looking forward to working with everyone on the team.
Thanks!
Best regards,
Claudio
On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org> wrote:
Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4. Notice of deadline for further follow up questions to the Analysis Group
5. Next steps/next meeting
*Notes:*
o For *Agenda Item #2*, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> (Sunrise) and https://community.icann.org/x/psrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> (Claims).
o For *Agenda Item #3*, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will *not* be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
Thanks and cheers
Mary
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Claudio, I’m pretty sure the GNSO Council believed “strings” were TLDs in their advice. Best, Paul From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of claudio di gangi Sent: Tuesday, May 02, 2017 1:41 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended. Just to take a quick moment to step back and look at the big picture: the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation: "Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law." In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process. In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption. More specifically related to GIs, several strings delayed delegation while private protections were developed. With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine' ...so I think this is where we currently are in this WG. As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission. Best regards, Claudio On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 [cid:image001.png@01D2C351.02A74690] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Paul, I agree, but I wouldn't say that precludes issues at the second-level from being covered by the principle that strings shouldn't infringe on third party rights, (including the rights of commercial and non-commercial users). Which of the GNSO policy recommendations do you think are implicated by the RPMs? Best, Claudio On Tue, May 2, 2017 at 3:36 PM icannlists <icannlists@winston.com> wrote:
Claudio, I’m pretty sure the GNSO Council believed “strings” were TLDs in their advice.
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto: gnso-rpm-wg-bounces@icann.org] *On Behalf Of *claudio di gangi *Sent:* Tuesday, May 02, 2017 1:41 PM *To:* Greg Shatan <gregshatanipc@gmail.com> *Cc:* J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org>
*Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended.
Just to take a quick moment to step back and look at the big picture:
the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation:
"Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law."
In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process.
In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption.
More specifically related to GIs, several strings delayed delegation while private protections were developed.
With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine'
...so I think this is where we currently are in this WG.
As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission.
Best regards,
Claudio
On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
+1000 to J Scott on this point:
A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims.
Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs *are* trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs.
Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks.
Greg
[As always, in my personal capacity, unless otherwise noted.]
*Greg Shatan *C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com
On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon < jonathan.agmon@ip-law.legal> wrote:
+1
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180
*T* IL +972 9 950 7000
*F *IL +972 9 950 5500
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
*From:* Massimo@origin-gi.com
*Sent:* 29 April 2017 22:48
*To:* jsevans@adobe.com
*Cc:* jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org
*Subject:* RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level.
Best, Massimo ------------------------------
*From: *J. Scott Evans <jsevans@adobe.com> *Sent: *29.04.2017 16:02 *To: *Massimo <Massimo@origin-gi.com> *Cc: *Jonathan Agmon <jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights.
Sent from my iPhone
On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com> wrote:
The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate.
An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH.
But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory?
Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation.
Best, Massimo ------------------------------
*From: *J. Scott Evans <jsevans@adobe.com> *Sent: *29.04.2017 15:18 *To: *Massimo <Massimo@origin-gi.com> *Cc: *Jonathan Agmon <jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means.
Sent from my iPhone
On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com> wrote:
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality.
Best, Massimo ------------------------------
*From: *J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> *Sent: *29.04.2017 14:46 *To: *Jonathan Agmon <jonathan.agmon@ip-law.legal> *Cc: *gnso-rpm-wg@icann.org *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness.
Sent from my iPhone
On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Paul,
I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue.
I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry.
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
“GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.”
Finally, please note that my time zone is UTC+8.
Thanks,
<SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png>
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...>
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180 <(212)%20999-6180>
*T* IL +972 9 950 7000 <+972%209-950-7000>
*F *IL +972 9 950 5500 <+972%209-950-5500>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
*From:* gnso-rpm-wg-bounces@icann.org [ mailto:gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *icannlists *Sent:* Friday, April 28, 2017 9:35 PM *To:* claudio di gangi <ipcdigangi@gmail.com>; Mary Wong < mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists < icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Claudio.
You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the *Trademark* Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one.
I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back.
Best,
Paul
*From:* claudio di gangi [mailto:ipcdigangi@gmail.com <ipcdigangi@gmail.com>] *Sent:* Friday, April 28, 2017 1:49 PM *To:* Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists < icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks, Paul.
I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language.
There didn't seem to be a conclusion, hence my earlier email about next steps.
Please let me know if I missing something.
Best regards,
Claudio
On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com> wrote:
Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto: gnso-rpm-wg-bounces@icann.org] *On Behalf Of *claudio di gangi *Sent:* Friday, April 28, 2017 12:58 PM *To:* Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Mary, all,
I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.
An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?
For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?
If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.
On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?
I'm looking forward to working with everyone on the team.
Thanks!
Best regards,
Claudio
On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org> wrote:
Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4. Notice of deadline for further follow up questions to the Analysis Group
5. Next steps/next meeting
*Notes:*
o For *Agenda Item #2*, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> (Sunrise) and https://community.icann.org/x/psrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> (Claims).
o For *Agenda Item #3*, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will *not* be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
Thanks and cheers
Mary
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Hi Claudio, Thanks for your clarification. I’m not sure I understand the purpose of your question. While cataloging all of the GNSO Policy Recommendations from Paris and connecting them to current RPMs would be a fascinating undertaking if time permitted, unfortunately, I don’t have that kind of time due to day job. What is the question you are seeking to answer? It may not be necessary to boil the ocean to find the answer. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Tuesday, May 02, 2017 5:07 PM To: Greg Shatan <gregshatanipc@gmail.com>; icannlists <icannlists@winston.com> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, I agree, but I wouldn't say that precludes issues at the second-level from being covered by the principle that strings shouldn't infringe on third party rights, (including the rights of commercial and non-commercial users). Which of the GNSO policy recommendations do you think are implicated by the RPMs? Best, Claudio On Tue, May 2, 2017 at 3:36 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Claudio, I’m pretty sure the GNSO Council believed “strings” were TLDs in their advice. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Tuesday, May 02, 2017 1:41 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended. Just to take a quick moment to step back and look at the big picture: the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation: "Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law." In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process. In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption. More specifically related to GIs, several strings delayed delegation while private protections were developed. With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine' ...so I think this is where we currently are in this WG. As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission. Best regards, Claudio On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 [cid:image001.png@01D2C351.02A74690] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Paul, I don't view the RPMs as being cut from whole cloth, rather they are based on the GNSO policy recommendations for new gTLDs. I cited the specific policy recommendation that the RPMs are based on, i.e. the principle of non-infringement of third party rights consistent with international standards, and you replied that you saw that recommendation applying only to the top-level component of the string. So I'm unclear which, if any, of the GNSO policy recommendations do you see as the basis for the RPMs that were developed during the implementation phase of the program. Best, Claudio On Tue, May 2, 2017 at 6:13 PM icannlists <icannlists@winston.com> wrote:
Hi Claudio,
Thanks for your clarification. I’m not sure I understand the purpose of your question. While cataloging all of the GNSO Policy Recommendations from Paris and connecting them to current RPMs would be a fascinating undertaking if time permitted, unfortunately, I don’t have that kind of time due to day job. What is the question you are seeking to answer? It may not be necessary to boil the ocean to find the answer.
Best,
Paul
*From:* claudio di gangi [mailto:ipcdigangi@gmail.com] *Sent:* Tuesday, May 02, 2017 5:07 PM *To:* Greg Shatan <gregshatanipc@gmail.com>; icannlists < icannlists@winston.com>
*Cc:* J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Paul,
I agree, but I wouldn't say that precludes issues at the second-level from being covered by the principle that strings shouldn't infringe on third party rights, (including the rights of commercial and non-commercial users).
Which of the GNSO policy recommendations do you think are implicated by the RPMs?
Best,
Claudio
On Tue, May 2, 2017 at 3:36 PM icannlists <icannlists@winston.com> wrote:
Claudio, I’m pretty sure the GNSO Council believed “strings” were TLDs in their advice.
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto: gnso-rpm-wg-bounces@icann.org] *On Behalf Of *claudio di gangi *Sent:* Tuesday, May 02, 2017 1:41 PM *To:* Greg Shatan <gregshatanipc@gmail.com> *Cc:* J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org>
*Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended.
Just to take a quick moment to step back and look at the big picture:
the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation:
"Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law."
In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process.
In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption.
More specifically related to GIs, several strings delayed delegation while private protections were developed.
With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine'
...so I think this is where we currently are in this WG.
As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission.
Best regards,
Claudio
On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
+1000 to J Scott on this point:
A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims.
Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs *are* trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs.
Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks.
Greg
[As always, in my personal capacity, unless otherwise noted.]
*Greg Shatan *C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com
On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon < jonathan.agmon@ip-law.legal> wrote:
+1
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180
*T* IL +972 9 950 7000
*F *IL +972 9 950 5500
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
*From:* Massimo@origin-gi.com
*Sent:* 29 April 2017 22:48
*To:* jsevans@adobe.com
*Cc:* jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org
*Subject:* RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level.
Best, Massimo ------------------------------
*From: *J. Scott Evans <jsevans@adobe.com> *Sent: *29.04.2017 16:02 *To: *Massimo <Massimo@origin-gi.com> *Cc: *Jonathan Agmon <jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights.
Sent from my iPhone
On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com> wrote:
The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate.
An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH.
But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory?
Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation.
Best, Massimo ------------------------------
*From: *J. Scott Evans <jsevans@adobe.com> *Sent: *29.04.2017 15:18 *To: *Massimo <Massimo@origin-gi.com> *Cc: *Jonathan Agmon <jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means.
Sent from my iPhone
On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com> wrote:
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality.
Best, Massimo ------------------------------
*From: *J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> *Sent: *29.04.2017 14:46 *To: *Jonathan Agmon <jonathan.agmon@ip-law.legal> *Cc: *gnso-rpm-wg@icann.org *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness.
Sent from my iPhone
On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Paul,
I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue.
I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry.
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
“GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.”
Finally, please note that my time zone is UTC+8.
Thanks,
<SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png>
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...>
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180 <(212)%20999-6180>
*T* IL +972 9 950 7000 <+972%209-950-7000>
*F *IL +972 9 950 5500 <+972%209-950-5500>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
*From:* gnso-rpm-wg-bounces@icann.org [ mailto:gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *icannlists *Sent:* Friday, April 28, 2017 9:35 PM *To:* claudio di gangi <ipcdigangi@gmail.com>; Mary Wong < mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists < icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Claudio.
You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the *Trademark* Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one.
I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back.
Best,
Paul
*From:* claudio di gangi [mailto:ipcdigangi@gmail.com <ipcdigangi@gmail.com>] *Sent:* Friday, April 28, 2017 1:49 PM *To:* Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists < icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks, Paul.
I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language.
There didn't seem to be a conclusion, hence my earlier email about next steps.
Please let me know if I missing something.
Best regards,
Claudio
On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com> wrote:
Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto: gnso-rpm-wg-bounces@icann.org] *On Behalf Of *claudio di gangi *Sent:* Friday, April 28, 2017 12:58 PM *To:* Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Mary, all,
I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.
An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?
For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?
If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.
On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?
I'm looking forward to working with everyone on the team.
Thanks!
Best regards,
Claudio
On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org> wrote:
Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4. Notice of deadline for further follow up questions to the Analysis Group
5. Next steps/next meeting
*Notes:*
o For *Agenda Item #2*, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> (Sunrise) and https://community.icann.org/x/psrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> (Claims).
o For *Agenda Item #3*, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will *not* be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
Thanks and cheers
Mary
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Sorry Claudio. It still looks like you are asking me to do a matching exercise here, but I don’t know what the purpose of it is, other than as a premise in a syllogism. Can you just walk me through the syllogism you intend to take me down and we can see if there is any disagreement at the end? From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Tuesday, May 02, 2017 5:31 PM To: Greg Shatan <gregshatanipc@gmail.com>; icannlists <icannlists@winston.com> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, I don't view the RPMs as being cut from whole cloth, rather they are based on the GNSO policy recommendations for new gTLDs. I cited the specific policy recommendation that the RPMs are based on, i.e. the principle of non-infringement of third party rights consistent with international standards, and you replied that you saw that recommendation applying only to the top-level component of the string. So I'm unclear which, if any, of the GNSO policy recommendations do you see as the basis for the RPMs that were developed during the implementation phase of the program. Best, Claudio On Tue, May 2, 2017 at 6:13 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Hi Claudio, Thanks for your clarification. I’m not sure I understand the purpose of your question. While cataloging all of the GNSO Policy Recommendations from Paris and connecting them to current RPMs would be a fascinating undertaking if time permitted, unfortunately, I don’t have that kind of time due to day job. What is the question you are seeking to answer? It may not be necessary to boil the ocean to find the answer. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>] Sent: Tuesday, May 02, 2017 5:07 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Paul, I agree, but I wouldn't say that precludes issues at the second-level from being covered by the principle that strings shouldn't infringe on third party rights, (including the rights of commercial and non-commercial users). Which of the GNSO policy recommendations do you think are implicated by the RPMs? Best, Claudio On Tue, May 2, 2017 at 3:36 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Claudio, I’m pretty sure the GNSO Council believed “strings” were TLDs in their advice. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Tuesday, May 02, 2017 1:41 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended. Just to take a quick moment to step back and look at the big picture: the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation: "Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law." In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process. In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption. More specifically related to GIs, several strings delayed delegation while private protections were developed. With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine' ...so I think this is where we currently are in this WG. As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission. Best regards, Claudio On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. 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Paul, I'm happy to try to clarify. I think part of the confusion here is there is no page on the website where one can go see the actual "ICANN New gTLD Policy". Instead, one can find the "GNSO Principles, Recommendations and Implementation Guidelines" adopted by the Board, several Board Resolutions on new gTLD topics, a New gTLD Applicant Guidebook (which is an implementation document), etc. My earlier point is described more accurately in Mary's email on "Clarification of GNSO Policy" (see first bullet point in the summary section). As Mary points out, the UDRP is based on Consensus Policy. For new gTLDs, she goes on to say: "The development...of the RPMs...is briefly described in the letter from the October 2009 ICANN Board to the GNSO Council that resulted in the formation of the Special Trademark Issues Review Team." That letter says the following: ICANN Staff is tasked with implementing the Board‐approved policy to create a new gTLD program, and the Board has been actively reviewing staff’s implementation recommendations. *This letter concerns the implementation of the GNSO recommendation that,* *“strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law.”* The Board requests the GNSO’s view on whether *certain rights protection mechanisms for second level strings* recommended by the staff based on public input *are consistent with the GNSO’s proposed policy* on the introduction of new gTLDs *and are the appropriate and effective option for achieving the GNSO’s stated principles and objectives*. *(emphasis added) * ---- This is the same GNSO principle I referred to, in which you replied: "I’m pretty sure the GNSO Council believed “strings” were TLDs in their advice." I wasn't asking you do perform a matching exercise, but to clarify what you believe is the policy foundation for the new gTLDs RPMs since you commented on the way I described it and expressed a different viewpoint. Best regards, Claudio On Wed, May 3, 2017 at 3:29 PM, icannlists <icannlists@winston.com> wrote:
Sorry Claudio. It still looks like you are asking me to do a matching exercise here, but I don’t know what the purpose of it is, other than as a premise in a syllogism. Can you just walk me through the syllogism you intend to take me down and we can see if there is any disagreement at the end?
*From:* claudio di gangi [mailto:ipcdigangi@gmail.com] *Sent:* Tuesday, May 02, 2017 5:31 PM *To:* Greg Shatan <gregshatanipc@gmail.com>; icannlists < icannlists@winston.com> *Cc:* J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Paul,
I don't view the RPMs as being cut from whole cloth, rather they are based on the GNSO policy recommendations for new gTLDs.
I cited the specific policy recommendation that the RPMs are based on, i.e. the principle of non-infringement of third party rights consistent with international standards, and you replied that you saw that recommendation applying only to the top-level component of the string.
So I'm unclear which, if any, of the GNSO policy recommendations do you see as the basis for the RPMs that were developed during the implementation phase of the program.
Best,
Claudio
On Tue, May 2, 2017 at 6:13 PM icannlists <icannlists@winston.com> wrote:
Hi Claudio,
Thanks for your clarification. I’m not sure I understand the purpose of your question. While cataloging all of the GNSO Policy Recommendations from Paris and connecting them to current RPMs would be a fascinating undertaking if time permitted, unfortunately, I don’t have that kind of time due to day job. What is the question you are seeking to answer? It may not be necessary to boil the ocean to find the answer.
Best,
Paul
*From:* claudio di gangi [mailto:ipcdigangi@gmail.com] *Sent:* Tuesday, May 02, 2017 5:07 PM *To:* Greg Shatan <gregshatanipc@gmail.com>; icannlists < icannlists@winston.com>
*Cc:* J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Paul,
I agree, but I wouldn't say that precludes issues at the second-level from being covered by the principle that strings shouldn't infringe on third party rights, (including the rights of commercial and non-commercial users).
Which of the GNSO policy recommendations do you think are implicated by the RPMs?
Best,
Claudio
On Tue, May 2, 2017 at 3:36 PM icannlists <icannlists@winston.com> wrote:
Claudio, I’m pretty sure the GNSO Council believed “strings” were TLDs in their advice.
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org] *On Behalf Of *claudio di gangi *Sent:* Tuesday, May 02, 2017 1:41 PM *To:* Greg Shatan <gregshatanipc@gmail.com> *Cc:* J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org>
*Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended.
Just to take a quick moment to step back and look at the big picture:
the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation:
"Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law."
In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process.
In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption.
More specifically related to GIs, several strings delayed delegation while private protections were developed.
With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine'
...so I think this is where we currently are in this WG.
As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission.
Best regards,
Claudio
On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
+1000 to J Scott on this point:
A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims.
Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs *are* trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs.
Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks.
Greg
[As always, in my personal capacity, unless otherwise noted.]
*Greg Shatan *C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com
On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon < jonathan.agmon@ip-law.legal> wrote:
+1
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180 <(212)%20999-6180>
*T* IL +972 9 950 7000 <+972%209-950-7000>
*F *IL +972 9 950 5500 <+972%209-950-5500>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
*From:* Massimo@origin-gi.com
*Sent:* 29 April 2017 22:48
*To:* jsevans@adobe.com
*Cc:* jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org
*Subject:* RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level.
Best, Massimo ------------------------------
*From: *J. Scott Evans <jsevans@adobe.com> *Sent: *29.04.2017 16:02 *To: *Massimo <Massimo@origin-gi.com> *Cc: *Jonathan Agmon <jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights.
Sent from my iPhone
On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com> wrote:
The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate.
An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH.
But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory?
Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation.
Best, Massimo ------------------------------
*From: *J. Scott Evans <jsevans@adobe.com> *Sent: *29.04.2017 15:18 *To: *Massimo <Massimo@origin-gi.com> *Cc: *Jonathan Agmon <jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means.
Sent from my iPhone
On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com> wrote:
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality.
Best, Massimo ------------------------------
*From: *J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> *Sent: *29.04.2017 14:46 *To: *Jonathan Agmon <jonathan.agmon@ip-law.legal> *Cc: *gnso-rpm-wg@icann.org *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness.
Sent from my iPhone
On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Paul,
I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue.
I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry.
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
“GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.”
Finally, please note that my time zone is UTC+8.
Thanks,
<SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png>
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...>
*T* SG +65 6532 2577 <+65%206532%202577>
*T* US +1 212 999 6180 <(212)%20999-6180>
*T* IL +972 9 950 7000 <+972%209-950-7000>
*F *IL +972 9 950 5500 <+972%209-950-5500>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *icannlists *Sent:* Friday, April 28, 2017 9:35 PM *To:* claudio di gangi <ipcdigangi@gmail.com>; Mary Wong < mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists < icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Claudio.
You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the *Trademark* Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one.
I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back.
Best,
Paul
*From:* claudio di gangi [mailto:ipcdigangi@gmail.com <ipcdigangi@gmail.com>] *Sent:* Friday, April 28, 2017 1:49 PM *To:* Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists < icannlists@winston.com> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks, Paul.
I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language.
There didn't seem to be a conclusion, hence my earlier email about next steps.
Please let me know if I missing something.
Best regards,
Claudio
On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com> wrote:
Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).
Best,
Paul
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org] *On Behalf Of *claudio di gangi *Sent:* Friday, April 28, 2017 12:58 PM *To:* Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Mary, all,
I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.
An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?
For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?
If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.
On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?
I'm looking forward to working with everyone on the team.
Thanks!
Best regards,
Claudio
On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org> wrote:
Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4. Notice of deadline for further follow up questions to the Analysis Group
5. Next steps/next meeting
*Notes:*
o For *Agenda Item #2*, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> (Sunrise) and https://community.icann.org/x/psrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> (Claims).
o For *Agenda Item #3*, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will *not* be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
Thanks and cheers
Mary
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+1 [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: ipcdigangi@gmail.com Sent: 3 May 2017 02:41 To: gregshatanipc@gmail.com Cc: jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended. Just to take a quick moment to step back and look at the big picture: the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation: "Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law." In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process. In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption. More specifically related to GIs, several strings delayed delegation while private protections were developed. With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine' ...so I think this is where we currently are in this WG. As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission. Best regards, Claudio On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
+1 Best, Massimo ________________________________ From: claudio di gangi<mailto:ipcdigangi@gmail.com> Sent: 02.05.2017 20:41 To: Greg Shatan<mailto:gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended. Just to take a quick moment to step back and look at the big picture: the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation: "Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law." In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process. In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption. More specifically related to GIs, several strings delayed delegation while private protections were developed. With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine' ...so I think this is where we currently are in this WG. As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission. Best regards, Claudio On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Dear all, any follow-up on the proposals to establish a sub-team to discuss RPM for GIs and/or to discuss it thoroughly in the WG? Best, Massimo ________________________________ From: Massimo Vittori<mailto:Massimo@origin-gi.com> Sent: 03.05.2017 08:07 To: claudio di gangi<mailto:ipcdigangi@gmail.com>; Greg Shatan<mailto:gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1 Best, Massimo ________________________________ From: claudio di gangi<mailto:ipcdigangi@gmail.com> Sent: 02.05.2017 20:41 To: Greg Shatan<mailto:gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended. Just to take a quick moment to step back and look at the big picture: the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation: "Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law." In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process. In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption. More specifically related to GIs, several strings delayed delegation while private protections were developed. With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine' ...so I think this is where we currently are in this WG. As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission. Best regards, Claudio On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. 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Nope. I think it's all been said and do not see any reason to further expand things. Sent from my iPad
On 4 May 2017, at 12:39, Massimo Vittori <Massimo@origin-gi.com> wrote:
Dear all, any follow-up on the proposals to establish a sub-team to discuss RPM for GIs and/or to discuss it thoroughly in the WG?
Best, Massimo From: Massimo Vittori Sent: 03.05.2017 08:07 To: claudio di gangi; Greg Shatan Cc: J. Scott Evans via gnso-rpm-wg Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
+1
Best, Massimo From: claudio di gangi Sent: 02.05.2017 20:41 To: Greg Shatan Cc: J. Scott Evans via gnso-rpm-wg Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended.
Just to take a quick moment to step back and look at the big picture:
the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation:
"Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law."
In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process.
In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption.
More specifically related to GIs, several strings delayed delegation while private protections were developed.
With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine'
...so I think this is where we currently are in this WG.
As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission.
Best regards, Claudio
On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com> wrote: +1000 to J Scott on this point:
A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims.
Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs.
Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks.
Greg [As always, in my personal capacity, unless otherwise noted.]
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote: +1
<SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal www.ip-law.legal T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
From: Massimo@origin-gi.com Sent: 29 April 2017 22:48 To: jsevans@adobe.com Cc: jonathan.agmon@ip-law.legal; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level.
Best, Massimo From: J. Scott Evans Sent: 29.04.2017 16:02 To: Massimo Cc: Jonathan Agmon; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights.
Sent from my iPhone
On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com> wrote:
The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate.
An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH.
But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory?
Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation.
Best, Massimo From: J. Scott Evans Sent: 29.04.2017 15:18 To: Massimo Cc: Jonathan Agmon; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means.
Sent from my iPhone
On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com> wrote:
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality.
Best, Massimo From: J. Scott Evans via gnso-rpm-wg Sent: 29.04.2017 14:46 To: Jonathan Agmon Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness.
Sent from my iPhone
On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Paul,
I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue.
I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry.
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
“GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.”
Finally, please note that my time zone is UTC+8.
Thanks,
<SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal www.ip-law.legal T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com>; Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists <icannlists@winston.com> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Claudio.
You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one.
I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back.
Best,
Paul
From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists <icannlists@winston.com> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks, Paul.
I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language.
There didn't seem to be a conclusion, hence my earlier email about next steps.
Please let me know if I missing something.
Best regards,
Claudio
On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com> wrote:
Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Mary, all,
I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.
An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?
For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?
If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.
On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?
I'm looking forward to working with everyone on the team.
Thanks!
Best regards,
Claudio
On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org> wrote:
Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4. Notice of deadline for further follow up questions to the Analysis Group
5. Next steps/next meeting
Notes:
o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw (Sunrise) and https://community.icann.org/x/psrRAw (Claims).
o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
Thanks and cheers
Mary
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+1 From: Paul Keating Sent: Thursday, May 4, 2017 7:16 AM To: Massimo Vittori Cc: J. Scott Evans via gnso-rpm-wg Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Nope. I think it's all been said and do not see any reason to further expand things. Sent from my iPad On 4 May 2017, at 12:39, Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Dear all, any follow-up on the proposals to establish a sub-team to discuss RPM for GIs and/or to discuss it thoroughly in the WG? Best, Massimo ________________________________ From: Massimo Vittori<mailto:Massimo@origin-gi.com> Sent: 03.05.2017 08:07 To: claudio di gangi<mailto:ipcdigangi@gmail.com>; Greg Shatan<mailto:gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1 Best, Massimo ________________________________ From: claudio di gangi<mailto:ipcdigangi@gmail.com> Sent: 02.05.2017 20:41 To: Greg Shatan<mailto:gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended. Just to take a quick moment to step back and look at the big picture: the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation: "Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law." In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process. In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption. More specifically related to GIs, several strings delayed delegation while private protections were developed. With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine' ...so I think this is where we currently are in this WG. As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission. Best regards, Claudio On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ 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. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
+1 Paul K Sent from my iPhone On May 4, 2017, at 6:42 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> wrote: +1 From: Paul Keating Sent: Thursday, May 4, 2017 7:16 AM To: Massimo Vittori Cc: J. Scott Evans via gnso-rpm-wg Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Nope. I think it's all been said and do not see any reason to further expand things. Sent from my iPad On 4 May 2017, at 12:39, Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Dear all, any follow-up on the proposals to establish a sub-team to discuss RPM for GIs and/or to discuss it thoroughly in the WG? Best, Massimo ________________________________ From: Massimo Vittori<mailto:Massimo@origin-gi.com> Sent: 03.05.2017 08:07 To: claudio di gangi<mailto:ipcdigangi@gmail.com>; Greg Shatan<mailto:gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1 Best, Massimo ________________________________ From: claudio di gangi<mailto:ipcdigangi@gmail.com> Sent: 02.05.2017 20:41 To: Greg Shatan<mailto:gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended. Just to take a quick moment to step back and look at the big picture: the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation: "Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law." In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process. In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption. More specifically related to GIs, several strings delayed delegation while private protections were developed. With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine' ...so I think this is where we currently are in this WG. As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission. Best regards, Claudio On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ 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. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
I'm very pleased to see continued discussion on this topic. I've reviewed the contributions received so far, and honestly believe its premature to slam the door shut, or alternatively to kick the can down the road to another committee or to the "private protections" solution. This WG was formed by the Council to consider whether the RPMs "...collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. If such additional policy recommendations are needed, the Working Group is expected to develop recommendations to address the specific issues identified." (WG Charter) Our discussions so far has identified the issue of the protection of GIs in new gTLDs, and I believe this raises the following questions that are worthy of further consideration. I have provided some preliminary thoughts below for consideration & feedback. 1. Were GIs considered when the IP Clearinghouse was first proposed and later developed for implementation? a. Yes, the IRT proposed an "IP Clearinghouse" that would include a "panoply" of IP rights beyond trademarks. It did not propose a Trademark Clearinghouse, which would have been a much more straightforward proposal. 1. the IRT had about 8 weeks to complete its work, so I agree with previous comments that almost no time was spent discussing GIs (or other forms of IP such as book titles) other than to say yes, they should be included in the database. At that time, it was hard enough to get consensus on the trademark protections even though there was already a long-established precedent for protecting trademarks in the DNS. b. The STI, which also had a very short time period to conclude its work, modified the IRT proposal in several respects, including by revising the IP Clearinghouse proposal to a "Trademark Clearinghouse" database. 1. The IPC, and member IP organizations and companies, provided public comment on the revised Clearinghouse proposal, and those comments reflected preference for the IRT model, and specifically stated the Clearinghouse should cover a broad range of IP rights beyond trademarks. (see IPC and other public comments on the revised Clearinghouse proposal). So there is no doubt this issue came up during the implementation phase, and there were varying views in the community about how it should be addressed. This furthers the notion that this topic appropriately falls under our charter. 2. Are GIs an important form of IP that should be protected generally? a. Within the IP community, yes there is general consensus that GIs should be protected consistent with national and international laws. For example, see this INTA Board Resolution on GIs, which states GIs are an important form of IP and should be protected (along with copyright, patents, etc.) http://www.inta.org/Advocacy/Pages/ProtectionofGeographicalIndicationsandTra... 1. A lot of energy has centered on the debate about how to protect GIs so as to not unfairly disadvantage other rights holders. The INTA Resolution above relies upon a "first in time, first in right" approach for resolving conflicts between GIs and trademarks. The Resolution states that in some cases, GIs will have priority over later registered trademarks, and vice versa. A. This issue would need to be fully considered in developing potential protections for GIs; for example, GIs could be protected following the Sunrise period, during the "limited registration period" that takes place before general availability, to avoid conflicts with trademarks that are globally protected. Another approach could be to provide a Claims service for GIs. 3. Is the protection of GIs inconsistent with the GNSO recommendation that strings should not infringe the rights of others that are reflected in international standards? a. There is nothing inconsistent on the surface, but the topic should be supported by further legal analysis in order to come to any hard conclusions. 4. Are GIs currently protected in new gTLDs and the DNS? a. Yes, GIs have been protected in some TLDs during the limited registration period mentioned above, and also through "private protections" in some strings. They have also been protected in a Sunrise period (.ASIA) that pre-dates the new gTLD program. 5. Should GIs be included in the Clearinghouse database, or an ancillary database maintained by Deloitte, to streamline administration burdens on rights holders? a. There has been consensus on several committees that the Clearinghouse is not a RPM, but an administrative support tool designed to reduce costs imposed by the new gTLD program. Depending on how the analysis to # 3 above comes out and related questions, the reduction of administrative costs is a worthy goal for the new gTLD program. 1. Consideration should be given on whether to maintain GIs separately from TMs in an ancillary database for administrative purposes. The proposals that have been submitted so far on the existing Clearinghouse are retrospective in nature. With that said, I find them very helpful to informs our views. As Phil expressed on our most recent call, we are not bound the current rules in the Applicant Guidebook. If we were, this WG would be nothing more than a compliance review team. The issue that squarely falls before this committee is to review the RPMs holistically, identify issues, and try to come up with consensus solutions to address them, if appropriate. A concern recently raised by Paul relates to timing. While I don't think we should be hampered by artificial deadlines, the analysis that is needed to consider this topic can be done in parallel with the other sub-teams, and there is a pre-existing body of work we can build from, including mechanisms that are already in the Applicant Guidebook. As I described in a previous note, a stitch in time saves nine. After identifying the issue, I think it would be better to spend some more time on it now, so it doesn't keep bubbling up over the next several years. In other words, I think whatever work we do now will reflect substantial progress in many respects, and save time for the community in the end. If there is any doubt on which way to proceed, I would argue we should default to the more open approach, and foster discussion. As the saying goes, sunlight is the best disinfectant. Best regards, Claudio On Thu, May 4, 2017 at 8:53 AM, icannlists <icannlists@winston.com> wrote:
+1 Paul K
Sent from my iPhone
On May 4, 2017, at 6:42 AM, Nahitchevansky, Georges < ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> wrote:
+1
From: Paul Keating Sent: Thursday, May 4, 2017 7:16 AM To: Massimo Vittori Cc: J. Scott Evans via gnso-rpm-wg Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Nope. I think it's all been said and do not see any reason to further expand things.
Sent from my iPad
On 4 May 2017, at 12:39, Massimo Vittori <Massimo@origin-gi.com<mailto: Massimo@origin-gi.com>> wrote:
Dear all, any follow-up on the proposals to establish a sub-team to discuss RPM for GIs and/or to discuss it thoroughly in the WG?
Best, Massimo ________________________________ From: Massimo Vittori<mailto:Massimo@origin-gi.com> Sent: 03.05.2017 08:07 To: claudio di gangi<mailto:ipcdigangi@gmail.com>; Greg Shatan<mailto: gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
+1
Best, Massimo ________________________________ From: claudio di gangi<mailto:ipcdigangi@gmail.com> Sent: 02.05.2017 20:41 To: Greg Shatan<mailto:gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended.
Just to take a quick moment to step back and look at the big picture:
the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation:
"Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law."
In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process.
In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption.
More specifically related to GIs, several strings delayed delegation while private protections were developed.
With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine'
...so I think this is where we currently are in this WG.
As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission.
Best regards, Claudio
On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com< mailto:gregshatanipc@gmail.com>> wrote: +1000 to J Scott on this point:
A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims.
Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs.
Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks.
Greg [As always, in my personal capacity, unless otherwise noted.]
Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1
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From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level.
Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights.
Sent from my iPhone
On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto: Massimo@origin-gi.com>> wrote:
The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate.
An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH.
But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory?
Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation.
Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means.
Sent from my iPhone
On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto: Massimo@origin-gi.com>> wrote:
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality.
Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness.
Sent from my iPhone
On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal< mailto:jonathan.agmon@ip-law.legal>> wrote:
Paul,
I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue.
I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry.
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
“GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8.
Thanks,
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Jonathan Agmon (胡韩森)
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From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists < icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Claudio.
You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one.
I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back.
Best, Paul
From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists < icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks, Paul.
I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language.
There didn't seem to be a conclusion, hence my earlier email about next steps.
Please let me know if I missing something.
Best regards, Claudio
On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto: icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).
Best, Paul
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Mary, all,
I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.
An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?
For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?
If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.
On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?
I'm looking forward to working with everyone on the team.
Thanks!
Best regards, Claudio
On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:ma ry.wong@icann.org>> wrote: Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4. Notice of deadline for further follow up questions to the Analysis Group
5. Next steps/next meeting
Notes:
o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks. protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann. org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556% 7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata= LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks. protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann. org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556% 7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata= ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims).
o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https:// na01.safelinks.protection.outlook.com/?url=https%3A%2F% 2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C% 7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178de cee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa% 2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0>
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Claudio: Thanks for distilling the discussions into an easy to follow email. That said, I will maintain the position that GIs should only be in the TMCH if they are also registered trademarks. I believe that is what was intended when the TMCH was created. I think Deloitte had misinterpreted the directive “marks protected by statute or treaty.” This needs to be rectified and Paul Mc’s proposal does that exactly. As for whether GIs deserve the same protections as trademarks in the DNS – that is a discussion for another group. I think we clearly have two camps here. I think Jonathan has a proposal on the one hand and Paul Mc has a proposal on the other hand. Jonathan should be allowed to present his proposal and then the WG needs to find consensus behind one of the two proposals or a modification thereof. We cannot have endless discussion just because a small contingent is unwilling to agree on a point. That is what minority reports are for. My suggestion is to hear Jonathon out and then ask the Chairs to make a call for consensus. J. Scott [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com From: <gnso-rpm-wg-bounces@icann.org> on behalf of claudio di gangi <ipcdigangi@gmail.com> Date: Thursday, May 4, 2017 at 1:22 PM To: icannlists <icannlists@winston.com> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I'm very pleased to see continued discussion on this topic. I've reviewed the contributions received so far, and honestly believe its premature to slam the door shut, or alternatively to kick the can down the road to another committee or to the "private protections" solution. This WG was formed by the Council to consider whether the RPMs "...collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. If such additional policy recommendations are needed, the Working Group is expected to develop recommendations to address the specific issues identified." (WG Charter) Our discussions so far has identified the issue of the protection of GIs in new gTLDs, and I believe this raises the following questions that are worthy of further consideration. I have provided some preliminary thoughts below for consideration & feedback. 1. Were GIs considered when the IP Clearinghouse was first proposed and later developed for implementation? a. Yes, the IRT proposed an "IP Clearinghouse" that would include a "panoply" of IP rights beyond trademarks. It did not propose a Trademark Clearinghouse, which would have been a much more straightforward proposal. 1. the IRT had about 8 weeks to complete its work, so I agree with previous comments that almost no time was spent discussing GIs (or other forms of IP such as book titles) other than to say yes, they should be included in the database. At that time, it was hard enough to get consensus on the trademark protections even though there was already a long-established precedent for protecting trademarks in the DNS. b. The STI, which also had a very short time period to conclude its work, modified the IRT proposal in several respects, including by revising the IP Clearinghouse proposal to a "Trademark Clearinghouse" database. 1. The IPC, and member IP organizations and companies, provided public comment on the revised Clearinghouse proposal, and those comments reflected preference for the IRT model, and specifically stated the Clearinghouse should cover a broad range of IP rights beyond trademarks. (see IPC and other public comments on the revised Clearinghouse proposal). So there is no doubt this issue came up during the implementation phase, and there were varying views in the community about how it should be addressed. This furthers the notion that this topic appropriately falls under our charter. 2. Are GIs an important form of IP that should be protected generally? a. Within the IP community, yes there is general consensus that GIs should be protected consistent with national and international laws. For example, see this INTA Board Resolution on GIs, which states GIs are an important form of IP and should be protected (along with copyright, patents, etc.) http://www.inta.org/Advocacy/Pages/ProtectionofGeographicalIndicationsandTrademarks.aspx<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.inta.org%2FAdvocacy%2FPages%2FProtectionofGeographicalIndicationsandTrademarks.aspx&data=02%7C01%7C%7Ca3728ea4effe4aabc5a008d4932b4160%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636295261371010790&sdata=pd%2FZy4%2F%2F7%2FUpRSGmJS4e5z8R8ZsZLijsRwyGowkZQ%2Fs%3D&reserved=0> 1. A lot of energy has centered on the debate about how to protect GIs so as to not unfairly disadvantage other rights holders. The INTA Resolution above relies upon a "first in time, first in right" approach for resolving conflicts between GIs and trademarks. The Resolution states that in some cases, GIs will have priority over later registered trademarks, and vice versa. A. This issue would need to be fully considered in developing potential protections for GIs; for example, GIs could be protected following the Sunrise period, during the "limited registration period" that takes place before general availability, to avoid conflicts with trademarks that are globally protected. Another approach could be to provide a Claims service for GIs. 3. Is the protection of GIs inconsistent with the GNSO recommendation that strings should not infringe the rights of others that are reflected in international standards? a. There is nothing inconsistent on the surface, but the topic should be supported by further legal analysis in order to come to any hard conclusions. 4. Are GIs currently protected in new gTLDs and the DNS? a. Yes, GIs have been protected in some TLDs during the limited registration period mentioned above, and also through "private protections" in some strings. They have also been protected in a Sunrise period (.ASIA) that pre-dates the new gTLD program. 5. Should GIs be included in the Clearinghouse database, or an ancillary database maintained by Deloitte, to streamline administration burdens on rights holders? a. There has been consensus on several committees that the Clearinghouse is not a RPM, but an administrative support tool designed to reduce costs imposed by the new gTLD program. Depending on how the analysis to # 3 above comes out and related questions, the reduction of administrative costs is a worthy goal for the new gTLD program. 1. Consideration should be given on whether to maintain GIs separately from TMs in an ancillary database for administrative purposes. The proposals that have been submitted so far on the existing Clearinghouse are retrospective in nature. With that said, I find them very helpful to informs our views. As Phil expressed on our most recent call, we are not bound the current rules in the Applicant Guidebook. If we were, this WG would be nothing more than a compliance review team. The issue that squarely falls before this committee is to review the RPMs holistically, identify issues, and try to come up with consensus solutions to address them, if appropriate. A concern recently raised by Paul relates to timing. While I don't think we should be hampered by artificial deadlines, the analysis that is needed to consider this topic can be done in parallel with the other sub-teams, and there is a pre-existing body of work we can build from, including mechanisms that are already in the Applicant Guidebook. As I described in a previous note, a stitch in time saves nine. After identifying the issue, I think it would be better to spend some more time on it now, so it doesn't keep bubbling up over the next several years. In other words, I think whatever work we do now will reflect substantial progress in many respects, and save time for the community in the end. If there is any doubt on which way to proceed, I would argue we should default to the more open approach, and foster discussion. As the saying goes, sunlight is the best disinfectant. Best regards, Claudio On Thu, May 4, 2017 at 8:53 AM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: +1 Paul K Sent from my iPhone On May 4, 2017, at 6:42 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com><mailto:ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>> wrote: +1 From: Paul Keating Sent: Thursday, May 4, 2017 7:16 AM To: Massimo Vittori Cc: J. Scott Evans via gnso-rpm-wg Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Nope. I think it's all been said and do not see any reason to further expand things. Sent from my iPad On 4 May 2017, at 12:39, Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>> wrote: Dear all, any follow-up on the proposals to establish a sub-team to discuss RPM for GIs and/or to discuss it thoroughly in the WG? Best, Massimo ________________________________ From: Massimo Vittori<mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Sent: 03.05.2017 08:07 To: claudio di gangi<mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Greg Shatan<mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1 Best, Massimo ________________________________ From: claudio di gangi<mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: 02.05.2017 20:41 To: Greg Shatan<mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended. Just to take a quick moment to step back and look at the big picture: the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation: "Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law." In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process. In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption. More specifically related to GIs, several strings delayed delegation while private protections were developed. With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine' ...so I think this is where we currently are in this WG. As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission. Best regards, Claudio On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>> wrote: +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:917-816-6428><tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428><tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>> wrote: +1 <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> www.ip-law.legal<http://www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.legal&data=02%7C01%7C%7Ca3728ea4effe4aabc5a008d4932b4160%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636295261371010790&sdata=YVB949q1S1aTPzo2%2BQKa7vEGqTM60QAaQEFfSU0qigg%3D&reserved=0>> T SG +65 6532 2577<tel:%2B65%206532%202577><tel:+65%206532%202577> T US +1 212 999 6180<tel:%2B1%20212%20999%206180> T IL +972 9 950 7000<tel:%2B972%209%20950%207000> F IL +972 9 950 5500<tel:%2B972%209%20950%205500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com><mailto:jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com<mailto:jsevans@adobe.com>> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com<mailto:jsevans@adobe.com>> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:%2B65%206532%202577><tel:+65%206532%202577> T US +1 212 999 6180<tel:%2B1%20212%20999%206180><tel:(212)%20999-6180> T IL +972 9 950 7000<tel:%2B972%209%20950%207000><tel:+972%209-950-7000> F IL +972 9 950 5500<tel:%2B972%209%20950%205500><tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com><mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com><mailto:icannlists@winston.com<mailto:icannlists@winston.com>>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com><mailto:icannlists@winston.com<mailto:icannlists@winston.com>>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com><mailto:icannlists@winston.com<mailto:icannlists@winston.com>>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7Ca3728ea4effe4aabc5a008d4932b4160%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636295261371010790&sdata=VL7VoTys8R7WvWHpLV12F9yYINDzv57rm3PKZVrQO%2Bc%3D&reserved=0><https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7Ca3728ea4effe4aabc5a008d4932b4160%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636295261371010790&sdata=qhfhNWFV%2FUQJuoBMwgDkVWSlyCoykquFIx%2BWLyT%2B8SI%3D&reserved=0><https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. 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J. Scott, Thank you! I completely agree with you about the existing proposals on that are the table. Since concerns have been identified by Massimo, I see value in also having a small group consider the topic a little bit more broadly than a pure compliance review. In order to do that, we can have a small team do a little bit of deep dive and report back to the full group with preliminary analysis and see how it comes out, before closing the door (so to speak). Best regards, Claudio On Thu, May 4, 2017 at 4:30 PM, J. Scott Evans <jsevans@adobe.com> wrote:
Claudio:
Thanks for distilling the discussions into an easy to follow email. That said, I will maintain the position that GIs should only be in the TMCH if they are also registered trademarks. I believe that is what was intended when the TMCH was created. I think Deloitte had misinterpreted the directive “marks protected by statute or treaty.” This needs to be rectified and Paul Mc’s proposal does that exactly. As for whether GIs deserve the same protections as trademarks in the DNS – that is a discussion for another group.
I think we clearly have two camps here. I think Jonathan has a proposal on the one hand and Paul Mc has a proposal on the other hand. Jonathan should be allowed to present his proposal and then the WG needs to find consensus behind one of the two proposals or a modification thereof. We cannot have endless discussion just because a small contingent is unwilling to agree on a point. That is what minority reports are for. My suggestion is to hear Jonathon out and then ask the Chairs to make a call for consensus.
J. Scott
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*From: *<gnso-rpm-wg-bounces@icann.org> on behalf of claudio di gangi < ipcdigangi@gmail.com> *Date: *Thursday, May 4, 2017 at 1:22 PM *To: *icannlists <icannlists@winston.com> *Cc: *"J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org> *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I'm very pleased to see continued discussion on this topic.
I've reviewed the contributions received so far, and honestly believe its premature to slam the door shut, or alternatively to kick the can down the road to another committee or to the "private protections" solution.
This WG was formed by the Council to consider whether the RPMs "...collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. If such additional policy recommendations are needed, the Working Group is expected to develop recommendations to address the specific issues identified." (WG Charter)
Our discussions so far has identified the issue of the protection of GIs in new gTLDs, and I believe this raises the following questions that are worthy of further consideration.
I have provided some preliminary thoughts below for consideration & feedback.
1. Were GIs considered when the IP Clearinghouse was first proposed and later developed for implementation?
a. Yes, the IRT proposed an "IP Clearinghouse" that would include a "panoply" of IP rights beyond trademarks. It did not propose a Trademark Clearinghouse, which would have been a much more straightforward proposal.
1. the IRT had about 8 weeks to complete its work, so I agree with previous comments that almost no time was spent discussing GIs (or other forms of IP such as book titles) other than to say yes, they should be included in the database. At that time, it was hard enough to get consensus on the trademark protections even though there was already a long-established precedent for protecting trademarks in the DNS.
b. The STI, which also had a very short time period to conclude its work, modified the IRT proposal in several respects, including by revising the IP Clearinghouse proposal to a "Trademark Clearinghouse" database.
1. The IPC, and member IP organizations and companies, provided public comment on the revised Clearinghouse proposal, and those comments reflected preference for the IRT model, and specifically stated the Clearinghouse should cover a broad range of IP rights beyond trademarks. (see IPC and other public comments on the revised Clearinghouse proposal).
So there is no doubt this issue came up during the implementation phase, and there were varying views in the community about how it should be addressed. This furthers the notion that this topic appropriately falls under our charter.
2. Are GIs an important form of IP that should be protected generally?
a. Within the IP community, yes there is general consensus that GIs should be protected consistent with national and international laws. For example, see this INTA Board Resolution on GIs, which states GIs are an important form of IP and should be protected (along with copyright, patents, etc.)
http://www.inta.org/Advocacy/Pages/ProtectionofGeographicalIndica tionsandTrademarks.aspx <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.inta.org...>
1. A lot of energy has centered on the debate about how to protect GIs so as to not unfairly disadvantage other rights holders. The INTA Resolution above relies upon a "first in time, first in right" approach for resolving conflicts between GIs and trademarks. The Resolution states that in some cases, GIs will have priority over later registered trademarks, and vice versa.
A. This issue would need to be fully considered in developing potential protections for GIs; for example, GIs could be protected following the Sunrise period, during the "limited registration period" that takes place before general availability, to avoid conflicts with trademarks that are globally protected. Another approach could be to provide a Claims service for GIs.
3. Is the protection of GIs inconsistent with the GNSO recommendation that strings should not infringe the rights of others that are reflected in international standards?
a. There is nothing inconsistent on the surface, but the topic should be supported by further legal analysis in order to come to any hard conclusions.
4. Are GIs currently protected in new gTLDs and the DNS?
a. Yes, GIs have been protected in some TLDs during the limited registration period mentioned above, and also through "private protections" in some strings. They have also been protected in a Sunrise period (.ASIA) that pre-dates the new gTLD program.
5. Should GIs be included in the Clearinghouse database, or an ancillary database maintained by Deloitte, to streamline administration burdens on rights holders?
a. There has been consensus on several committees that the Clearinghouse is not a RPM, but an administrative support tool designed to reduce costs imposed by the new gTLD program. Depending on how the analysis to # 3 above comes out and related questions, the reduction of administrative costs is a worthy goal for the new gTLD program.
1. Consideration should be given on whether to maintain GIs separately from TMs in an ancillary database for administrative purposes.
The proposals that have been submitted so far on the existing Clearinghouse are retrospective in nature. With that said, I find them very helpful to informs our views. As Phil expressed on our most recent call, we are not bound the current rules in the Applicant Guidebook. If we were, this WG would be nothing more than a compliance review team. The issue that squarely falls before this committee is to review the RPMs holistically, identify issues, and try to come up with consensus solutions to address them, if appropriate.
A concern recently raised by Paul relates to timing. While I don't think we should be hampered by artificial deadlines, the analysis that is needed to consider this topic can be done in parallel with the other sub-teams, and there is a pre-existing body of work we can build from, including mechanisms that are already in the Applicant Guidebook.
As I described in a previous note, a stitch in time saves nine. After identifying the issue, I think it would be better to spend some more time on it now, so it doesn't keep bubbling up over the next several years. In other words, I think whatever work we do now will reflect substantial progress in many respects, and save time for the community in the end.
If there is any doubt on which way to proceed, I would argue we should default to the more open approach, and foster discussion. As the saying goes, sunlight is the best disinfectant.
Best regards,
Claudio
On Thu, May 4, 2017 at 8:53 AM, icannlists <icannlists@winston.com> wrote:
+1 Paul K
Sent from my iPhone
On May 4, 2017, at 6:42 AM, Nahitchevansky, Georges < ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> wrote:
+1
From: Paul Keating Sent: Thursday, May 4, 2017 7:16 AM To: Massimo Vittori Cc: J. Scott Evans via gnso-rpm-wg Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Nope. I think it's all been said and do not see any reason to further expand things.
Sent from my iPad
On 4 May 2017, at 12:39, Massimo Vittori <Massimo@origin-gi.com<mailto: Massimo@origin-gi.com>> wrote:
Dear all, any follow-up on the proposals to establish a sub-team to discuss RPM for GIs and/or to discuss it thoroughly in the WG?
Best, Massimo ________________________________ From: Massimo Vittori<mailto:Massimo@origin-gi.com> Sent: 03.05.2017 08:07 To: claudio di gangi<mailto:ipcdigangi@gmail.com>; Greg Shatan<mailto: gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
+1
Best, Massimo ________________________________ From: claudio di gangi<mailto:ipcdigangi@gmail.com> Sent: 02.05.2017 20:41 To: Greg Shatan<mailto:gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended.
Just to take a quick moment to step back and look at the big picture:
the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation:
"Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law."
In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process.
In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption.
More specifically related to GIs, several strings delayed delegation while private protections were developed.
With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine'
...so I think this is where we currently are in this WG.
As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission.
Best regards, Claudio
On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com< mailto:gregshatanipc@gmail.com>> wrote: +1000 to J Scott on this point:
A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims.
Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs.
Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks.
Greg [As always, in my personal capacity, unless otherwise noted.]
Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1
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Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
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From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level.
Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights.
Sent from my iPhone
On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto: Massimo@origin-gi.com>> wrote:
The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate.
An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH.
But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory?
Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation.
Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means.
Sent from my iPhone
On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto: Massimo@origin-gi.com>> wrote:
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality.
Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness.
Sent from my iPhone
On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal< mailto:jonathan.agmon@ip-law.legal>> wrote:
Paul,
I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue.
I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry.
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
“GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8.
Thanks,
<SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png>
Jonathan Agmon (胡韩森)
Advocate, Director
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From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists < icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Claudio.
You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one.
I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back.
Best, Paul
From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists < icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks, Paul.
I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language.
There didn't seem to be a conclusion, hence my earlier email about next steps.
Please let me know if I missing something.
Best regards, Claudio
On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto: icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).
Best, Paul
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Mary, all,
I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.
An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?
For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?
If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.
On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?
I'm looking forward to working with everyone on the team.
Thanks!
Best regards, Claudio
On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:ma ry.wong@icann.org>> wrote: Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4. Notice of deadline for further follow up questions to the Analysis Group
5. Next steps/next meeting
Notes:
o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> <https://na01.safelinks.protection.outlook.com/?url= https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C% 7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178de cee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb% 2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> <https://na01.safelinks.protection.outlook.com/?url= https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C% 7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178de cee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VW IY9owrvj%2Fkxww%3D&reserved=0> (Claims).
o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
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You all should make a formal proposal to the Co-Chairs if that is indeed what you want to propose. [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com From: claudio di gangi <ipcdigangi@gmail.com> Date: Thursday, May 4, 2017 at 2:00 PM To: "J. Scott Evans" <jsevans@adobe.com> Cc: icannlists <icannlists@winston.com>, "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week J. Scott, Thank you! I completely agree with you about the existing proposals on that are the table. Since concerns have been identified by Massimo, I see value in also having a small group consider the topic a little bit more broadly than a pure compliance review. In order to do that, we can have a small team do a little bit of deep dive and report back to the full group with preliminary analysis and see how it comes out, before closing the door (so to speak). Best regards, Claudio On Thu, May 4, 2017 at 4:30 PM, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: Claudio: Thanks for distilling the discussions into an easy to follow email. That said, I will maintain the position that GIs should only be in the TMCH if they are also registered trademarks. I believe that is what was intended when the TMCH was created. I think Deloitte had misinterpreted the directive “marks protected by statute or treaty.” This needs to be rectified and Paul Mc’s proposal does that exactly. As for whether GIs deserve the same protections as trademarks in the DNS – that is a discussion for another group. I think we clearly have two camps here. I think Jonathan has a proposal on the one hand and Paul Mc has a proposal on the other hand. Jonathan should be allowed to present his proposal and then the WG needs to find consensus behind one of the two proposals or a modification thereof. We cannot have endless discussion just because a small contingent is unwilling to agree on a point. That is what minority reports are for. My suggestion is to hear Jonathon out and then ask the Chairs to make a call for consensus. J. Scott [tps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336<tel:(408)%20536-5336> (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162<tel:(408)%20709-6162> (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Date: Thursday, May 4, 2017 at 1:22 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I'm very pleased to see continued discussion on this topic. I've reviewed the contributions received so far, and honestly believe its premature to slam the door shut, or alternatively to kick the can down the road to another committee or to the "private protections" solution. This WG was formed by the Council to consider whether the RPMs "...collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. If such additional policy recommendations are needed, the Working Group is expected to develop recommendations to address the specific issues identified." (WG Charter) Our discussions so far has identified the issue of the protection of GIs in new gTLDs, and I believe this raises the following questions that are worthy of further consideration. I have provided some preliminary thoughts below for consideration & feedback. 1. Were GIs considered when the IP Clearinghouse was first proposed and later developed for implementation? a. Yes, the IRT proposed an "IP Clearinghouse" that would include a "panoply" of IP rights beyond trademarks. It did not propose a Trademark Clearinghouse, which would have been a much more straightforward proposal. 1. the IRT had about 8 weeks to complete its work, so I agree with previous comments that almost no time was spent discussing GIs (or other forms of IP such as book titles) other than to say yes, they should be included in the database. At that time, it was hard enough to get consensus on the trademark protections even though there was already a long-established precedent for protecting trademarks in the DNS. b. The STI, which also had a very short time period to conclude its work, modified the IRT proposal in several respects, including by revising the IP Clearinghouse proposal to a "Trademark Clearinghouse" database. 1. The IPC, and member IP organizations and companies, provided public comment on the revised Clearinghouse proposal, and those comments reflected preference for the IRT model, and specifically stated the Clearinghouse should cover a broad range of IP rights beyond trademarks. (see IPC and other public comments on the revised Clearinghouse proposal). So there is no doubt this issue came up during the implementation phase, and there were varying views in the community about how it should be addressed. This furthers the notion that this topic appropriately falls under our charter. 2. Are GIs an important form of IP that should be protected generally? a. Within the IP community, yes there is general consensus that GIs should be protected consistent with national and international laws. For example, see this INTA Board Resolution on GIs, which states GIs are an important form of IP and should be protected (along with copyright, patents, etc.) http://www.inta.org/Advocacy/Pages/ProtectionofGeographicalIndicationsandTrademarks.aspx<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.inta.org%2FAdvocacy%2FPages%2FProtectionofGeographicalIndicationsandTrademarks.aspx&data=02%7C01%7C%7Ca3728ea4effe4aabc5a008d4932b4160%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636295261371010790&sdata=pd%2FZy4%2F%2F7%2FUpRSGmJS4e5z8R8ZsZLijsRwyGowkZQ%2Fs%3D&reserved=0> 1. A lot of energy has centered on the debate about how to protect GIs so as to not unfairly disadvantage other rights holders. The INTA Resolution above relies upon a "first in time, first in right" approach for resolving conflicts between GIs and trademarks. The Resolution states that in some cases, GIs will have priority over later registered trademarks, and vice versa. A. This issue would need to be fully considered in developing potential protections for GIs; for example, GIs could be protected following the Sunrise period, during the "limited registration period" that takes place before general availability, to avoid conflicts with trademarks that are globally protected. Another approach could be to provide a Claims service for GIs. 3. Is the protection of GIs inconsistent with the GNSO recommendation that strings should not infringe the rights of others that are reflected in international standards? a. There is nothing inconsistent on the surface, but the topic should be supported by further legal analysis in order to come to any hard conclusions. 4. Are GIs currently protected in new gTLDs and the DNS? a. Yes, GIs have been protected in some TLDs during the limited registration period mentioned above, and also through "private protections" in some strings. They have also been protected in a Sunrise period (.ASIA) that pre-dates the new gTLD program. 5. Should GIs be included in the Clearinghouse database, or an ancillary database maintained by Deloitte, to streamline administration burdens on rights holders? a. There has been consensus on several committees that the Clearinghouse is not a RPM, but an administrative support tool designed to reduce costs imposed by the new gTLD program. Depending on how the analysis to # 3 above comes out and related questions, the reduction of administrative costs is a worthy goal for the new gTLD program. 1. Consideration should be given on whether to maintain GIs separately from TMs in an ancillary database for administrative purposes. The proposals that have been submitted so far on the existing Clearinghouse are retrospective in nature. With that said, I find them very helpful to informs our views. As Phil expressed on our most recent call, we are not bound the current rules in the Applicant Guidebook. If we were, this WG would be nothing more than a compliance review team. The issue that squarely falls before this committee is to review the RPMs holistically, identify issues, and try to come up with consensus solutions to address them, if appropriate. A concern recently raised by Paul relates to timing. While I don't think we should be hampered by artificial deadlines, the analysis that is needed to consider this topic can be done in parallel with the other sub-teams, and there is a pre-existing body of work we can build from, including mechanisms that are already in the Applicant Guidebook. As I described in a previous note, a stitch in time saves nine. After identifying the issue, I think it would be better to spend some more time on it now, so it doesn't keep bubbling up over the next several years. In other words, I think whatever work we do now will reflect substantial progress in many respects, and save time for the community in the end. If there is any doubt on which way to proceed, I would argue we should default to the more open approach, and foster discussion. As the saying goes, sunlight is the best disinfectant. Best regards, Claudio On Thu, May 4, 2017 at 8:53 AM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: +1 Paul K Sent from my iPhone On May 4, 2017, at 6:42 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com><mailto:ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>> wrote: +1 From: Paul Keating Sent: Thursday, May 4, 2017 7:16 AM To: Massimo Vittori Cc: J. Scott Evans via gnso-rpm-wg Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Nope. I think it's all been said and do not see any reason to further expand things. Sent from my iPad On 4 May 2017, at 12:39, Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>> wrote: Dear all, any follow-up on the proposals to establish a sub-team to discuss RPM for GIs and/or to discuss it thoroughly in the WG? Best, Massimo ________________________________ From: Massimo Vittori<mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Sent: 03.05.2017 08:07 To: claudio di gangi<mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Greg Shatan<mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1 Best, Massimo ________________________________ From: claudio di gangi<mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: 02.05.2017 20:41 To: Greg Shatan<mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended. Just to take a quick moment to step back and look at the big picture: the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation: "Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law." In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process. In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption. More specifically related to GIs, several strings delayed delegation while private protections were developed. With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine' ...so I think this is where we currently are in this WG. As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission. Best regards, Claudio On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>> wrote: +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:917-816-6428><tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428><tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>> wrote: +1 <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> www.ip-law.legal<http://www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.legal&data=02%7C01%7C%7Ca3728ea4effe4aabc5a008d4932b4160%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636295261371010790&sdata=YVB949q1S1aTPzo2%2BQKa7vEGqTM60QAaQEFfSU0qigg%3D&reserved=0>> T SG +65 6532 2577<tel:%2B65%206532%202577><tel:+65%206532%202577> T US +1 212 999 6180<tel:%2B1%20212%20999%206180> T IL +972 9 950 7000<tel:%2B972%209%20950%207000> F IL +972 9 950 5500<tel:%2B972%209%20950%205500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com><mailto:jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com<mailto:jsevans@adobe.com>> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com<mailto:jsevans@adobe.com>> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:%2B65%206532%202577><tel:+65%206532%202577> T US +1 212 999 6180<tel:%2B1%20212%20999%206180><tel:(212)%20999-6180> T IL +972 9 950 7000<tel:%2B972%209%20950%207000><tel:+972%209-950-7000> F IL +972 9 950 5500<tel:%2B972%209%20950%205500><tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com><mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com><mailto:icannlists@winston.com<mailto:icannlists@winston.com>>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com><mailto:icannlists@winston.com<mailto:icannlists@winston.com>>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com><mailto:icannlists@winston.com<mailto:icannlists@winston.com>>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7Ca3728ea4effe4aabc5a008d4932b4160%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636295261371010790&sdata=VL7VoTys8R7WvWHpLV12F9yYINDzv57rm3PKZVrQO%2Bc%3D&reserved=0><https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7Ca3728ea4effe4aabc5a008d4932b4160%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636295261371010790&sdata=qhfhNWFV%2FUQJuoBMwgDkVWSlyCoykquFIx%2BWLyT%2B8SI%3D&reserved=0><https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. 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OK, I'll put something together next week. thanks! On Thu, May 4, 2017 at 5:05 PM, J. Scott Evans <jsevans@adobe.com> wrote:
You all should make a formal proposal to the Co-Chairs if that is indeed what you want to propose.
[image: ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif]
*J. Scott Evans*
408.536.5336 <(408)%20536-5336> (tel)
345 Park Avenue, Mail Stop W11-544
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408.709.6162 <(408)%20709-6162> (cell)
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Adobe. Make It an Experience.
jsevans@adobe.com
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*From: *claudio di gangi <ipcdigangi@gmail.com> *Date: *Thursday, May 4, 2017 at 2:00 PM *To: *"J. Scott Evans" <jsevans@adobe.com> *Cc: *icannlists <icannlists@winston.com>, "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org> *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
J. Scott,
Thank you!
I completely agree with you about the existing proposals on that are the table.
Since concerns have been identified by Massimo, I see value in also having a small group consider the topic a little bit more broadly than a pure compliance review.
In order to do that, we can have a small team do a little bit of deep dive and report back to the full group with preliminary analysis and see how it comes out, before closing the door (so to speak).
Best regards,
Claudio
On Thu, May 4, 2017 at 4:30 PM, J. Scott Evans <jsevans@adobe.com> wrote:
Claudio:
Thanks for distilling the discussions into an easy to follow email. That said, I will maintain the position that GIs should only be in the TMCH if they are also registered trademarks. I believe that is what was intended when the TMCH was created. I think Deloitte had misinterpreted the directive “marks protected by statute or treaty.” This needs to be rectified and Paul Mc’s proposal does that exactly. As for whether GIs deserve the same protections as trademarks in the DNS – that is a discussion for another group.
I think we clearly have two camps here. I think Jonathan has a proposal on the one hand and Paul Mc has a proposal on the other hand. Jonathan should be allowed to present his proposal and then the WG needs to find consensus behind one of the two proposals or a modification thereof. We cannot have endless discussion just because a small contingent is unwilling to agree on a point. That is what minority reports are for. My suggestion is to hear Jonathon out and then ask the Chairs to make a call for consensus.
J. Scott
[image: tps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif]
*J. Scott Evans*
408.536.5336 <(408)%20536-5336> (tel)
345 Park Avenue, Mail Stop W11-544
Director, Associate General Counsel
408.709.6162 <(408)%20709-6162> (cell)
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Adobe. Make It an Experience.
jsevans@adobe.com
www.adobe.com
*From: *<gnso-rpm-wg-bounces@icann.org> on behalf of claudio di gangi < ipcdigangi@gmail.com> *Date: *Thursday, May 4, 2017 at 1:22 PM *To: *icannlists <icannlists@winston.com> *Cc: *"J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org> *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I'm very pleased to see continued discussion on this topic.
I've reviewed the contributions received so far, and honestly believe its premature to slam the door shut, or alternatively to kick the can down the road to another committee or to the "private protections" solution.
This WG was formed by the Council to consider whether the RPMs "...collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. If such additional policy recommendations are needed, the Working Group is expected to develop recommendations to address the specific issues identified." (WG Charter)
Our discussions so far has identified the issue of the protection of GIs in new gTLDs, and I believe this raises the following questions that are worthy of further consideration.
I have provided some preliminary thoughts below for consideration & feedback.
1. Were GIs considered when the IP Clearinghouse was first proposed and later developed for implementation?
a. Yes, the IRT proposed an "IP Clearinghouse" that would include a "panoply" of IP rights beyond trademarks. It did not propose a Trademark Clearinghouse, which would have been a much more straightforward proposal.
1. the IRT had about 8 weeks to complete its work, so I agree with previous comments that almost no time was spent discussing GIs (or other forms of IP such as book titles) other than to say yes, they should be included in the database. At that time, it was hard enough to get consensus on the trademark protections even though there was already a long-established precedent for protecting trademarks in the DNS.
b. The STI, which also had a very short time period to conclude its work, modified the IRT proposal in several respects, including by revising the IP Clearinghouse proposal to a "Trademark Clearinghouse" database.
1. The IPC, and member IP organizations and companies, provided public comment on the revised Clearinghouse proposal, and those comments reflected preference for the IRT model, and specifically stated the Clearinghouse should cover a broad range of IP rights beyond trademarks. (see IPC and other public comments on the revised Clearinghouse proposal).
So there is no doubt this issue came up during the implementation phase, and there were varying views in the community about how it should be addressed. This furthers the notion that this topic appropriately falls under our charter.
2. Are GIs an important form of IP that should be protected generally?
a. Within the IP community, yes there is general consensus that GIs should be protected consistent with national and international laws. For example, see this INTA Board Resolution on GIs, which states GIs are an important form of IP and should be protected (along with copyright, patents, etc.)
http://www.inta.org/Advocacy/Pages/ProtectionofGeographicalIndica tionsandTrademarks.aspx <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.inta.org...>
1. A lot of energy has centered on the debate about how to protect GIs so as to not unfairly disadvantage other rights holders. The INTA Resolution above relies upon a "first in time, first in right" approach for resolving conflicts between GIs and trademarks. The Resolution states that in some cases, GIs will have priority over later registered trademarks, and vice versa.
A. This issue would need to be fully considered in developing potential protections for GIs; for example, GIs could be protected following the Sunrise period, during the "limited registration period" that takes place before general availability, to avoid conflicts with trademarks that are globally protected. Another approach could be to provide a Claims service for GIs.
3. Is the protection of GIs inconsistent with the GNSO recommendation that strings should not infringe the rights of others that are reflected in international standards?
a. There is nothing inconsistent on the surface, but the topic should be supported by further legal analysis in order to come to any hard conclusions.
4. Are GIs currently protected in new gTLDs and the DNS?
a. Yes, GIs have been protected in some TLDs during the limited registration period mentioned above, and also through "private protections" in some strings. They have also been protected in a Sunrise period (.ASIA) that pre-dates the new gTLD program.
5. Should GIs be included in the Clearinghouse database, or an ancillary database maintained by Deloitte, to streamline administration burdens on rights holders?
a. There has been consensus on several committees that the Clearinghouse is not a RPM, but an administrative support tool designed to reduce costs imposed by the new gTLD program. Depending on how the analysis to # 3 above comes out and related questions, the reduction of administrative costs is a worthy goal for the new gTLD program.
1. Consideration should be given on whether to maintain GIs separately from TMs in an ancillary database for administrative purposes.
The proposals that have been submitted so far on the existing Clearinghouse are retrospective in nature. With that said, I find them very helpful to informs our views. As Phil expressed on our most recent call, we are not bound the current rules in the Applicant Guidebook. If we were, this WG would be nothing more than a compliance review team. The issue that squarely falls before this committee is to review the RPMs holistically, identify issues, and try to come up with consensus solutions to address them, if appropriate.
A concern recently raised by Paul relates to timing. While I don't think we should be hampered by artificial deadlines, the analysis that is needed to consider this topic can be done in parallel with the other sub-teams, and there is a pre-existing body of work we can build from, including mechanisms that are already in the Applicant Guidebook.
As I described in a previous note, a stitch in time saves nine. After identifying the issue, I think it would be better to spend some more time on it now, so it doesn't keep bubbling up over the next several years. In other words, I think whatever work we do now will reflect substantial progress in many respects, and save time for the community in the end.
If there is any doubt on which way to proceed, I would argue we should default to the more open approach, and foster discussion. As the saying goes, sunlight is the best disinfectant.
Best regards,
Claudio
On Thu, May 4, 2017 at 8:53 AM, icannlists <icannlists@winston.com> wrote:
+1 Paul K
Sent from my iPhone
On May 4, 2017, at 6:42 AM, Nahitchevansky, Georges < ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> wrote:
+1
From: Paul Keating Sent: Thursday, May 4, 2017 7:16 AM To: Massimo Vittori Cc: J. Scott Evans via gnso-rpm-wg Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Nope. I think it's all been said and do not see any reason to further expand things.
Sent from my iPad
On 4 May 2017, at 12:39, Massimo Vittori <Massimo@origin-gi.com<mailto: Massimo@origin-gi.com>> wrote:
Dear all, any follow-up on the proposals to establish a sub-team to discuss RPM for GIs and/or to discuss it thoroughly in the WG?
Best, Massimo ________________________________ From: Massimo Vittori<mailto:Massimo@origin-gi.com> Sent: 03.05.2017 08:07 To: claudio di gangi<mailto:ipcdigangi@gmail.com>; Greg Shatan<mailto: gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
+1
Best, Massimo ________________________________ From: claudio di gangi<mailto:ipcdigangi@gmail.com> Sent: 02.05.2017 20:41 To: Greg Shatan<mailto:gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended.
Just to take a quick moment to step back and look at the big picture:
the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation:
"Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law."
In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process.
In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption.
More specifically related to GIs, several strings delayed delegation while private protections were developed.
With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine'
...so I think this is where we currently are in this WG.
As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission.
Best regards, Claudio
On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com< mailto:gregshatanipc@gmail.com>> wrote: +1000 to J Scott on this point:
A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims.
Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs.
Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks.
Greg [As always, in my personal capacity, unless otherwise noted.]
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On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1
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From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week
The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level.
Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights.
Sent from my iPhone
On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto: Massimo@origin-gi.com>> wrote:
The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate.
An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH.
But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory?
Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation.
Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means.
Sent from my iPhone
On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto: Massimo@origin-gi.com>> wrote:
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality.
Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness.
Sent from my iPhone
On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal< mailto:jonathan.agmon@ip-law.legal>> wrote:
Paul,
I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue.
I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry.
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
“GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8.
Thanks,
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Jonathan Agmon (胡韩森)
Advocate, Director
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From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists < icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Claudio.
You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one.
I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back.
Best, Paul
From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists < icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks, Paul.
I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language.
There didn't seem to be a conclusion, hence my earlier email about next steps.
Please let me know if I missing something.
Best regards, Claudio
On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto: icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).
Best, Paul
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Mary, all,
I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.
An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?
For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?
If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.
On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?
I'm looking forward to working with everyone on the team.
Thanks!
Best regards, Claudio
On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:ma ry.wong@icann.org>> wrote: Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4. Notice of deadline for further follow up questions to the Analysis Group
5. Next steps/next meeting
Notes:
o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> <https://na01.safelinks.protection.outlook.com/?url= https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C% 7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178de cee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb% 2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> <https://na01.safelinks.protection.outlook.com/?url= https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C% 7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178de cee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VW IY9owrvj%2Fkxww%3D&reserved=0> (Claims).
o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...> <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F% 2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C% 7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178de cee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa% 2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0>
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+1 Claudio Héctor Ariel Manoff Vitale, Manoff & Feilbogen Viamonte 1145 10º Piso C1053ABW Buenos Aires República Argentina Te: (54-11) 4371-6100 Fax: (54-11) 4371-6365 E-mail: <mailto:amanoff@vmf.com.ar> amanoff@vmf.com.ar Web: <http://www.vmf.com.ar/> http://www.vmf.com.ar De: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] En nombre de claudio di gangi Enviado el: jueves, 4 de mayo de 2017 18:11 Para: J. Scott Evans CC: J. Scott Evans via gnso-rpm-wg Asunto: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week OK, I'll put something together next week. thanks! On Thu, May 4, 2017 at 5:05 PM, J. Scott Evans <jsevans@adobe.com> wrote: You all should make a formal proposal to the Co-Chairs if that is indeed what you want to propose. ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif J. Scott Evans 408.536.5336 <tel:(408)%20536-5336> (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 <tel:(408)%20709-6162> (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com From: claudio di gangi <ipcdigangi@gmail.com> Date: Thursday, May 4, 2017 at 2:00 PM To: "J. Scott Evans" <jsevans@adobe.com> Cc: icannlists <icannlists@winston.com>, "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week J. Scott, Thank you! I completely agree with you about the existing proposals on that are the table. Since concerns have been identified by Massimo, I see value in also having a small group consider the topic a little bit more broadly than a pure compliance review. In order to do that, we can have a small team do a little bit of deep dive and report back to the full group with preliminary analysis and see how it comes out, before closing the door (so to speak). Best regards, Claudio On Thu, May 4, 2017 at 4:30 PM, J. Scott Evans <jsevans@adobe.com> wrote: Claudio: Thanks for distilling the discussions into an easy to follow email. That said, I will maintain the position that GIs should only be in the TMCH if they are also registered trademarks. I believe that is what was intended when the TMCH was created. I think Deloitte had misinterpreted the directive “marks protected by statute or treaty.” This needs to be rectified and Paul Mc’s proposal does that exactly. As for whether GIs deserve the same protections as trademarks in the DNS – that is a discussion for another group. I think we clearly have two camps here. I think Jonathan has a proposal on the one hand and Paul Mc has a proposal on the other hand. Jonathan should be allowed to present his proposal and then the WG needs to find consensus behind one of the two proposals or a modification thereof. We cannot have endless discussion just because a small contingent is unwilling to agree on a point. That is what minority reports are for. My suggestion is to hear Jonathon out and then ask the Chairs to make a call for consensus. J. Scott tps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif J. Scott Evans 408.536.5336 <tel:(408)%20536-5336> (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 <tel:(408)%20709-6162> (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com From: <gnso-rpm-wg-bounces@icann.org> on behalf of claudio di gangi <ipcdigangi@gmail.com> Date: Thursday, May 4, 2017 at 1:22 PM To: icannlists <icannlists@winston.com> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I'm very pleased to see continued discussion on this topic. I've reviewed the contributions received so far, and honestly believe its premature to slam the door shut, or alternatively to kick the can down the road to another committee or to the "private protections" solution. This WG was formed by the Council to consider whether the RPMs "...collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. If such additional policy recommendations are needed, the Working Group is expected to develop recommendations to address the specific issues identified." (WG Charter) Our discussions so far has identified the issue of the protection of GIs in new gTLDs, and I believe this raises the following questions that are worthy of further consideration. I have provided some preliminary thoughts below for consideration & feedback. 1. Were GIs considered when the IP Clearinghouse was first proposed and later developed for implementation? a. Yes, the IRT proposed an "IP Clearinghouse" that would include a "panoply" of IP rights beyond trademarks. It did not propose a Trademark Clearinghouse, which would have been a much more straightforward proposal. 1. the IRT had about 8 weeks to complete its work, so I agree with previous comments that almost no time was spent discussing GIs (or other forms of IP such as book titles) other than to say yes, they should be included in the database. At that time, it was hard enough to get consensus on the trademark protections even though there was already a long-established precedent for protecting trademarks in the DNS. b. The STI, which also had a very short time period to conclude its work, modified the IRT proposal in several respects, including by revising the IP Clearinghouse proposal to a "Trademark Clearinghouse" database. 1. The IPC, and member IP organizations and companies, provided public comment on the revised Clearinghouse proposal, and those comments reflected preference for the IRT model, and specifically stated the Clearinghouse should cover a broad range of IP rights beyond trademarks. (see IPC and other public comments on the revised Clearinghouse proposal). So there is no doubt this issue came up during the implementation phase, and there were varying views in the community about how it should be addressed. This furthers the notion that this topic appropriately falls under our charter. 2. Are GIs an important form of IP that should be protected generally? a. Within the IP community, yes there is general consensus that GIs should be protected consistent with national and international laws. For example, see this INTA Board Resolution on GIs, which states GIs are an important form of IP and should be protected (along with copyright, patents, etc.) http://www.inta.org/Advocacy/Pages/ProtectionofGeographicalIndicationsandTra... <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.inta.org...> 1. A lot of energy has centered on the debate about how to protect GIs so as to not unfairly disadvantage other rights holders. The INTA Resolution above relies upon a "first in time, first in right" approach for resolving conflicts between GIs and trademarks. The Resolution states that in some cases, GIs will have priority over later registered trademarks, and vice versa. A. This issue would need to be fully considered in developing potential protections for GIs; for example, GIs could be protected following the Sunrise period, during the "limited registration period" that takes place before general availability, to avoid conflicts with trademarks that are globally protected. Another approach could be to provide a Claims service for GIs. 3. Is the protection of GIs inconsistent with the GNSO recommendation that strings should not infringe the rights of others that are reflected in international standards? a. There is nothing inconsistent on the surface, but the topic should be supported by further legal analysis in order to come to any hard conclusions. 4. Are GIs currently protected in new gTLDs and the DNS? a. Yes, GIs have been protected in some TLDs during the limited registration period mentioned above, and also through "private protections" in some strings. They have also been protected in a Sunrise period (.ASIA) that pre-dates the new gTLD program. 5. Should GIs be included in the Clearinghouse database, or an ancillary database maintained by Deloitte, to streamline administration burdens on rights holders? a. There has been consensus on several committees that the Clearinghouse is not a RPM, but an administrative support tool designed to reduce costs imposed by the new gTLD program. Depending on how the analysis to # 3 above comes out and related questions, the reduction of administrative costs is a worthy goal for the new gTLD program. 1. Consideration should be given on whether to maintain GIs separately from TMs in an ancillary database for administrative purposes. The proposals that have been submitted so far on the existing Clearinghouse are retrospective in nature. With that said, I find them very helpful to informs our views. As Phil expressed on our most recent call, we are not bound the current rules in the Applicant Guidebook. If we were, this WG would be nothing more than a compliance review team. The issue that squarely falls before this committee is to review the RPMs holistically, identify issues, and try to come up with consensus solutions to address them, if appropriate. A concern recently raised by Paul relates to timing. While I don't think we should be hampered by artificial deadlines, the analysis that is needed to consider this topic can be done in parallel with the other sub-teams, and there is a pre-existing body of work we can build from, including mechanisms that are already in the Applicant Guidebook. As I described in a previous note, a stitch in time saves nine. After identifying the issue, I think it would be better to spend some more time on it now, so it doesn't keep bubbling up over the next several years. In other words, I think whatever work we do now will reflect substantial progress in many respects, and save time for the community in the end. If there is any doubt on which way to proceed, I would argue we should default to the more open approach, and foster discussion. As the saying goes, sunlight is the best disinfectant. Best regards, Claudio On Thu, May 4, 2017 at 8:53 AM, icannlists <icannlists@winston.com> wrote: +1 Paul K Sent from my iPhone On May 4, 2017, at 6:42 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> wrote: +1 From: Paul Keating Sent: Thursday, May 4, 2017 7:16 AM To: Massimo Vittori Cc: J. Scott Evans via gnso-rpm-wg Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Nope. I think it's all been said and do not see any reason to further expand things. Sent from my iPad On 4 May 2017, at 12:39, Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Dear all, any follow-up on the proposals to establish a sub-team to discuss RPM for GIs and/or to discuss it thoroughly in the WG? Best, Massimo ________________________________ From: Massimo Vittori<mailto:Massimo@origin-gi.com> Sent: 03.05.2017 08:07 To: claudio di gangi<mailto:ipcdigangi@gmail.com>; Greg Shatan<mailto:gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1 Best, Massimo ________________________________ From: claudio di gangi<mailto:ipcdigangi@gmail.com> Sent: 02.05.2017 20:41 To: Greg Shatan<mailto:gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended. Just to take a quick moment to step back and look at the big picture: the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation: "Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law." In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process. In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption. More specifically related to GIs, several strings delayed delegation while private protections were developed. With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine' ...so I think this is where we currently are in this WG. As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission. Best regards, Claudio On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> > T SG +65 6532 2577 <tel:%2B65%206532%202577> <tel:+65%206532%202577> T US +1 212 999 6180 <tel:%2B1%20212%20999%206180> T IL +972 9 950 7000 <tel:%2B972%209%20950%207000> F IL +972 9 950 5500 <tel:%2B972%209%20950%205500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l... <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> &data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vZtzroklJn8U8PtzSsFvxXra%2FUpVHdIy862yVH2W53U%3D&reserved=0> T SG +65 6532 2577 <tel:%2B65%206532%202577> <tel:+65%206532%202577> T US +1 212 999 6180 <tel:%2B1%20212%20999%206180> <tel:(212)%20999-6180> T IL +972 9 950 7000 <tel:%2B972%209%20950%207000> <tel:+972%209-950-7000> F IL +972 9 950 5500 <tel:%2B972%209%20950%205500> <tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i... <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> &data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i... <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.i...> &data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. 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+1 From: amanoff@vmf.com.ar Sent: 5 May 2017 06:01 To: ipcdigangi@gmail.com; jsevans@adobe.com Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1 Claudio Héctor Ariel Manoff Vitale, Manoff & Feilbogen Viamonte 1145 10º Piso C1053ABW Buenos Aires República Argentina Te: (54-11) 4371-6100 Fax: (54-11) 4371-6365 E-mail: amanoff@vmf.com.ar<mailto:amanoff@vmf.com.ar> Web: http://www.vmf.com.ar<http://www.vmf.com.ar/> [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. De: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] En nombre de claudio di gangi Enviado el: jueves, 4 de mayo de 2017 18:11 Para: J. Scott Evans CC: J. Scott Evans via gnso-rpm-wg Asunto: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week OK, I'll put something together next week. thanks! On Thu, May 4, 2017 at 5:05 PM, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: You all should make a formal proposal to the Co-Chairs if that is indeed what you want to propose. [cid:image001.gif@01D2C508.C479C2D0] J. Scott Evans 408.536.5336<tel:(408)%20536-5336> (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162<tel:(408)%20709-6162> (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Date: Thursday, May 4, 2017 at 2:00 PM To: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>>, "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week J. Scott, Thank you! I completely agree with you about the existing proposals on that are the table. Since concerns have been identified by Massimo, I see value in also having a small group consider the topic a little bit more broadly than a pure compliance review. In order to do that, we can have a small team do a little bit of deep dive and report back to the full group with preliminary analysis and see how it comes out, before closing the door (so to speak). Best regards, Claudio On Thu, May 4, 2017 at 4:30 PM, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: Claudio: Thanks for distilling the discussions into an easy to follow email. That said, I will maintain the position that GIs should only be in the TMCH if they are also registered trademarks. I believe that is what was intended when the TMCH was created. I think Deloitte had misinterpreted the directive “marks protected by statute or treaty.” This needs to be rectified and Paul Mc’s proposal does that exactly. As for whether GIs deserve the same protections as trademarks in the DNS – that is a discussion for another group. I think we clearly have two camps here. I think Jonathan has a proposal on the one hand and Paul Mc has a proposal on the other hand. Jonathan should be allowed to present his proposal and then the WG needs to find consensus behind one of the two proposals or a modification thereof. We cannot have endless discussion just because a small contingent is unwilling to agree on a point. That is what minority reports are for. My suggestion is to hear Jonathon out and then ask the Chairs to make a call for consensus. J. Scott [cid:image002.gif@01D2C508.C479C2D0] J. Scott Evans 408.536.5336<tel:(408)%20536-5336> (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162<tel:(408)%20709-6162> (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Date: Thursday, May 4, 2017 at 1:22 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I'm very pleased to see continued discussion on this topic. I've reviewed the contributions received so far, and honestly believe its premature to slam the door shut, or alternatively to kick the can down the road to another committee or to the "private protections" solution. This WG was formed by the Council to consider whether the RPMs "...collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. If such additional policy recommendations are needed, the Working Group is expected to develop recommendations to address the specific issues identified." (WG Charter) Our discussions so far has identified the issue of the protection of GIs in new gTLDs, and I believe this raises the following questions that are worthy of further consideration. I have provided some preliminary thoughts below for consideration & feedback. 1. Were GIs considered when the IP Clearinghouse was first proposed and later developed for implementation? a. Yes, the IRT proposed an "IP Clearinghouse" that would include a "panoply" of IP rights beyond trademarks. It did not propose a Trademark Clearinghouse, which would have been a much more straightforward proposal. 1. the IRT had about 8 weeks to complete its work, so I agree with previous comments that almost no time was spent discussing GIs (or other forms of IP such as book titles) other than to say yes, they should be included in the database. At that time, it was hard enough to get consensus on the trademark protections even though there was already a long-established precedent for protecting trademarks in the DNS. b. The STI, which also had a very short time period to conclude its work, modified the IRT proposal in several respects, including by revising the IP Clearinghouse proposal to a "Trademark Clearinghouse" database. 1. The IPC, and member IP organizations and companies, provided public comment on the revised Clearinghouse proposal, and those comments reflected preference for the IRT model, and specifically stated the Clearinghouse should cover a broad range of IP rights beyond trademarks. (see IPC and other public comments on the revised Clearinghouse proposal). So there is no doubt this issue came up during the implementation phase, and there were varying views in the community about how it should be addressed. This furthers the notion that this topic appropriately falls under our charter. 2. Are GIs an important form of IP that should be protected generally? a. Within the IP community, yes there is general consensus that GIs should be protected consistent with national and international laws. For example, see this INTA Board Resolution on GIs, which states GIs are an important form of IP and should be protected (along with copyright, patents, etc.) http://www.inta.org/Advocacy/Pages/ProtectionofGeographicalIndicationsandTrademarks.aspx<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.inta.org%2FAdvocacy%2FPages%2FProtectionofGeographicalIndicationsandTrademarks.aspx&data=02%7C01%7C%7Ca3728ea4effe4aabc5a008d4932b4160%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636295261371010790&sdata=pd%2FZy4%2F%2F7%2FUpRSGmJS4e5z8R8ZsZLijsRwyGowkZQ%2Fs%3D&reserved=0> 1. A lot of energy has centered on the debate about how to protect GIs so as to not unfairly disadvantage other rights holders. The INTA Resolution above relies upon a "first in time, first in right" approach for resolving conflicts between GIs and trademarks. The Resolution states that in some cases, GIs will have priority over later registered trademarks, and vice versa. A. This issue would need to be fully considered in developing potential protections for GIs; for example, GIs could be protected following the Sunrise period, during the "limited registration period" that takes place before general availability, to avoid conflicts with trademarks that are globally protected. Another approach could be to provide a Claims service for GIs. 3. Is the protection of GIs inconsistent with the GNSO recommendation that strings should not infringe the rights of others that are reflected in international standards? a. There is nothing inconsistent on the surface, but the topic should be supported by further legal analysis in order to come to any hard conclusions. 4. Are GIs currently protected in new gTLDs and the DNS? a. Yes, GIs have been protected in some TLDs during the limited registration period mentioned above, and also through "private protections" in some strings. They have also been protected in a Sunrise period (.ASIA) that pre-dates the new gTLD program. 5. Should GIs be included in the Clearinghouse database, or an ancillary database maintained by Deloitte, to streamline administration burdens on rights holders? a. There has been consensus on several committees that the Clearinghouse is not a RPM, but an administrative support tool designed to reduce costs imposed by the new gTLD program. Depending on how the analysis to # 3 above comes out and related questions, the reduction of administrative costs is a worthy goal for the new gTLD program. 1. Consideration should be given on whether to maintain GIs separately from TMs in an ancillary database for administrative purposes. The proposals that have been submitted so far on the existing Clearinghouse are retrospective in nature. With that said, I find them very helpful to informs our views. As Phil expressed on our most recent call, we are not bound the current rules in the Applicant Guidebook. If we were, this WG would be nothing more than a compliance review team. The issue that squarely falls before this committee is to review the RPMs holistically, identify issues, and try to come up with consensus solutions to address them, if appropriate. A concern recently raised by Paul relates to timing. While I don't think we should be hampered by artificial deadlines, the analysis that is needed to consider this topic can be done in parallel with the other sub-teams, and there is a pre-existing body of work we can build from, including mechanisms that are already in the Applicant Guidebook. As I described in a previous note, a stitch in time saves nine. After identifying the issue, I think it would be better to spend some more time on it now, so it doesn't keep bubbling up over the next several years. In other words, I think whatever work we do now will reflect substantial progress in many respects, and save time for the community in the end. If there is any doubt on which way to proceed, I would argue we should default to the more open approach, and foster discussion. As the saying goes, sunlight is the best disinfectant. Best regards, Claudio On Thu, May 4, 2017 at 8:53 AM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: +1 Paul K Sent from my iPhone On May 4, 2017, at 6:42 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com><mailto:ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>> wrote: +1 From: Paul Keating Sent: Thursday, May 4, 2017 7:16 AM To: Massimo Vittori Cc: J. Scott Evans via gnso-rpm-wg Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Nope. I think it's all been said and do not see any reason to further expand things. Sent from my iPad On 4 May 2017, at 12:39, Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>> wrote: Dear all, any follow-up on the proposals to establish a sub-team to discuss RPM for GIs and/or to discuss it thoroughly in the WG? Best, Massimo ________________________________ From: Massimo Vittori<mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Sent: 03.05.2017 08:07 To: claudio di gangi<mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Greg Shatan<mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1 Best, Massimo ________________________________ From: claudio di gangi<mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: 02.05.2017 20:41 To: Greg Shatan<mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended. Just to take a quick moment to step back and look at the big picture: the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation: "Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law." In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process. In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption. More specifically related to GIs, several strings delayed delegation while private protections were developed. With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine' ...so I think this is where we currently are in this WG. As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission. Best regards, Claudio On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>> wrote: +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:917-816-6428><tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428><tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>> wrote: +1 <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> www.ip-law.legal<http://www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.legal&data=02%7C01%7C%7Ca3728ea4effe4aabc5a008d4932b4160%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636295261371010790&sdata=YVB949q1S1aTPzo2%2BQKa7vEGqTM60QAaQEFfSU0qigg%3D&reserved=0>> T SG +65 6532 2577<tel:%2B65%206532%202577><tel:+65%206532%202577> T US +1 212 999 6180<tel:%2B1%20212%20999%206180> T IL +972 9 950 7000<tel:%2B972%209%20950%207000> F IL +972 9 950 5500<tel:%2B972%209%20950%205500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com><mailto:jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com<mailto:jsevans@adobe.com>> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com<mailto:jsevans@adobe.com>> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:%2B65%206532%202577><tel:+65%206532%202577> T US +1 212 999 6180<tel:%2B1%20212%20999%206180><tel:(212)%20999-6180> T IL +972 9 950 7000<tel:%2B972%209%20950%207000><tel:+972%209-950-7000> F IL +972 9 950 5500<tel:%2B972%209%20950%205500><tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com><mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com><mailto:icannlists@winston.com<mailto:icannlists@winston.com>>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com><mailto:icannlists@winston.com<mailto:icannlists@winston.com>>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com><mailto:icannlists@winston.com<mailto:icannlists@winston.com>>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7Ca3728ea4effe4aabc5a008d4932b4160%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636295261371010790&sdata=VL7VoTys8R7WvWHpLV12F9yYINDzv57rm3PKZVrQO%2Bc%3D&reserved=0><https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7Ca3728ea4effe4aabc5a008d4932b4160%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636295261371010790&sdata=qhfhNWFV%2FUQJuoBMwgDkVWSlyCoykquFIx%2BWLyT%2B8SI%3D&reserved=0><https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. 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+1 From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jonathan Agmon Sent: 05 May 2017 02:53 To: 'claudio di gangi' <ipcdigangi@gmail.com>; 'J. Scott Evans' <jsevans@adobe.com>; Ariel Manoff <amanoff@vmf.com.ar> Cc: 'J. Scott Evans via gnso-rpm-wg' <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1 From: amanoff@vmf.com.ar<mailto:amanoff@vmf.com.ar> Sent: 5 May 2017 06:01 To: ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>; jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1 Claudio Héctor Ariel Manoff Vitale, Manoff & Feilbogen Viamonte 1145 10º Piso C1053ABW Buenos Aires República Argentina Te: (54-11) 4371-6100 Fax: (54-11) 4371-6365 E-mail: amanoff@vmf.com.ar<mailto:amanoff@vmf.com.ar> Web: http://www.vmf.com.ar<http://www.vmf.com.ar/> [cid:image003.png@01D2C59F.95E524E0] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. De: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] En nombre de claudio di gangi Enviado el: jueves, 4 de mayo de 2017 18:11 Para: J. Scott Evans CC: J. Scott Evans via gnso-rpm-wg Asunto: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week OK, I'll put something together next week. thanks! On Thu, May 4, 2017 at 5:05 PM, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: You all should make a formal proposal to the Co-Chairs if that is indeed what you want to propose. [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336<tel:(408)%20536-5336> (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162<tel:(408)%20709-6162> (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Date: Thursday, May 4, 2017 at 2:00 PM To: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>>, "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week J. Scott, Thank you! I completely agree with you about the existing proposals on that are the table. Since concerns have been identified by Massimo, I see value in also having a small group consider the topic a little bit more broadly than a pure compliance review. In order to do that, we can have a small team do a little bit of deep dive and report back to the full group with preliminary analysis and see how it comes out, before closing the door (so to speak). Best regards, Claudio On Thu, May 4, 2017 at 4:30 PM, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: Claudio: Thanks for distilling the discussions into an easy to follow email. That said, I will maintain the position that GIs should only be in the TMCH if they are also registered trademarks. I believe that is what was intended when the TMCH was created. I think Deloitte had misinterpreted the directive “marks protected by statute or treaty.” This needs to be rectified and Paul Mc’s proposal does that exactly. As for whether GIs deserve the same protections as trademarks in the DNS – that is a discussion for another group. I think we clearly have two camps here. I think Jonathan has a proposal on the one hand and Paul Mc has a proposal on the other hand. Jonathan should be allowed to present his proposal and then the WG needs to find consensus behind one of the two proposals or a modification thereof. We cannot have endless discussion just because a small contingent is unwilling to agree on a point. That is what minority reports are for. My suggestion is to hear Jonathon out and then ask the Chairs to make a call for consensus. J. Scott [tps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336<tel:(408)%20536-5336> (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162<tel:(408)%20709-6162> (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Date: Thursday, May 4, 2017 at 1:22 PM To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I'm very pleased to see continued discussion on this topic. I've reviewed the contributions received so far, and honestly believe its premature to slam the door shut, or alternatively to kick the can down the road to another committee or to the "private protections" solution. This WG was formed by the Council to consider whether the RPMs "...collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. If such additional policy recommendations are needed, the Working Group is expected to develop recommendations to address the specific issues identified." (WG Charter) Our discussions so far has identified the issue of the protection of GIs in new gTLDs, and I believe this raises the following questions that are worthy of further consideration. I have provided some preliminary thoughts below for consideration & feedback. 1. Were GIs considered when the IP Clearinghouse was first proposed and later developed for implementation? a. Yes, the IRT proposed an "IP Clearinghouse" that would include a "panoply" of IP rights beyond trademarks. It did not propose a Trademark Clearinghouse, which would have been a much more straightforward proposal. 1. the IRT had about 8 weeks to complete its work, so I agree with previous comments that almost no time was spent discussing GIs (or other forms of IP such as book titles) other than to say yes, they should be included in the database. At that time, it was hard enough to get consensus on the trademark protections even though there was already a long-established precedent for protecting trademarks in the DNS. b. The STI, which also had a very short time period to conclude its work, modified the IRT proposal in several respects, including by revising the IP Clearinghouse proposal to a "Trademark Clearinghouse" database. 1. The IPC, and member IP organizations and companies, provided public comment on the revised Clearinghouse proposal, and those comments reflected preference for the IRT model, and specifically stated the Clearinghouse should cover a broad range of IP rights beyond trademarks. (see IPC and other public comments on the revised Clearinghouse proposal). So there is no doubt this issue came up during the implementation phase, and there were varying views in the community about how it should be addressed. This furthers the notion that this topic appropriately falls under our charter. 2. Are GIs an important form of IP that should be protected generally? a. Within the IP community, yes there is general consensus that GIs should be protected consistent with national and international laws. For example, see this INTA Board Resolution on GIs, which states GIs are an important form of IP and should be protected (along with copyright, patents, etc.) http://www.inta.org/Advocacy/Pages/ProtectionofGeographicalIndicationsandTrademarks.aspx<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.inta.org%2FAdvocacy%2FPages%2FProtectionofGeographicalIndicationsandTrademarks.aspx&data=02%7C01%7C%7Ca3728ea4effe4aabc5a008d4932b4160%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636295261371010790&sdata=pd%2FZy4%2F%2F7%2FUpRSGmJS4e5z8R8ZsZLijsRwyGowkZQ%2Fs%3D&reserved=0> 1. A lot of energy has centered on the debate about how to protect GIs so as to not unfairly disadvantage other rights holders. The INTA Resolution above relies upon a "first in time, first in right" approach for resolving conflicts between GIs and trademarks. The Resolution states that in some cases, GIs will have priority over later registered trademarks, and vice versa. A. This issue would need to be fully considered in developing potential protections for GIs; for example, GIs could be protected following the Sunrise period, during the "limited registration period" that takes place before general availability, to avoid conflicts with trademarks that are globally protected. Another approach could be to provide a Claims service for GIs. 3. Is the protection of GIs inconsistent with the GNSO recommendation that strings should not infringe the rights of others that are reflected in international standards? a. There is nothing inconsistent on the surface, but the topic should be supported by further legal analysis in order to come to any hard conclusions. 4. Are GIs currently protected in new gTLDs and the DNS? a. Yes, GIs have been protected in some TLDs during the limited registration period mentioned above, and also through "private protections" in some strings. They have also been protected in a Sunrise period (.ASIA) that pre-dates the new gTLD program. 5. Should GIs be included in the Clearinghouse database, or an ancillary database maintained by Deloitte, to streamline administration burdens on rights holders? a. There has been consensus on several committees that the Clearinghouse is not a RPM, but an administrative support tool designed to reduce costs imposed by the new gTLD program. Depending on how the analysis to # 3 above comes out and related questions, the reduction of administrative costs is a worthy goal for the new gTLD program. 1. Consideration should be given on whether to maintain GIs separately from TMs in an ancillary database for administrative purposes. The proposals that have been submitted so far on the existing Clearinghouse are retrospective in nature. With that said, I find them very helpful to informs our views. As Phil expressed on our most recent call, we are not bound the current rules in the Applicant Guidebook. If we were, this WG would be nothing more than a compliance review team. The issue that squarely falls before this committee is to review the RPMs holistically, identify issues, and try to come up with consensus solutions to address them, if appropriate. A concern recently raised by Paul relates to timing. While I don't think we should be hampered by artificial deadlines, the analysis that is needed to consider this topic can be done in parallel with the other sub-teams, and there is a pre-existing body of work we can build from, including mechanisms that are already in the Applicant Guidebook. As I described in a previous note, a stitch in time saves nine. After identifying the issue, I think it would be better to spend some more time on it now, so it doesn't keep bubbling up over the next several years. In other words, I think whatever work we do now will reflect substantial progress in many respects, and save time for the community in the end. If there is any doubt on which way to proceed, I would argue we should default to the more open approach, and foster discussion. As the saying goes, sunlight is the best disinfectant. Best regards, Claudio On Thu, May 4, 2017 at 8:53 AM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: +1 Paul K Sent from my iPhone On May 4, 2017, at 6:42 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com><mailto:ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>> wrote: +1 From: Paul Keating Sent: Thursday, May 4, 2017 7:16 AM To: Massimo Vittori Cc: J. Scott Evans via gnso-rpm-wg Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Nope. I think it's all been said and do not see any reason to further expand things. Sent from my iPad On 4 May 2017, at 12:39, Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>> wrote: Dear all, any follow-up on the proposals to establish a sub-team to discuss RPM for GIs and/or to discuss it thoroughly in the WG? Best, Massimo ________________________________ From: Massimo Vittori<mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Sent: 03.05.2017 08:07 To: claudio di gangi<mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Greg Shatan<mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1 Best, Massimo ________________________________ From: claudio di gangi<mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: 02.05.2017 20:41 To: Greg Shatan<mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended. Just to take a quick moment to step back and look at the big picture: the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation: "Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law." In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process. In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption. More specifically related to GIs, several strings delayed delegation while private protections were developed. With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine' ...so I think this is where we currently are in this WG. As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission. Best regards, Claudio On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>> wrote: +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:917-816-6428><tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428><tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>> wrote: +1 <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> www.ip-law.legal<http://www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.legal&data=02%7C01%7C%7Ca3728ea4effe4aabc5a008d4932b4160%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636295261371010790&sdata=YVB949q1S1aTPzo2%2BQKa7vEGqTM60QAaQEFfSU0qigg%3D&reserved=0>> T SG +65 6532 2577<tel:%2B65%206532%202577><tel:+65%206532%202577> T US +1 212 999 6180<tel:%2B1%20212%20999%206180> T IL +972 9 950 7000<tel:%2B972%209%20950%207000> F IL +972 9 950 5500<tel:%2B972%209%20950%205500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com><mailto:jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com<mailto:jsevans@adobe.com>> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com<mailto:jsevans@adobe.com>> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:%2B65%206532%202577><tel:+65%206532%202577> T US +1 212 999 6180<tel:%2B1%20212%20999%206180><tel:(212)%20999-6180> T IL +972 9 950 7000<tel:%2B972%209%20950%207000><tel:+972%209-950-7000> F IL +972 9 950 5500<tel:%2B972%209%20950%205500><tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com><mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com><mailto:icannlists@winston.com<mailto:icannlists@winston.com>>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com><mailto:icannlists@winston.com<mailto:icannlists@winston.com>>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com><mailto:icannlists@winston.com<mailto:icannlists@winston.com>>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7Ca3728ea4effe4aabc5a008d4932b4160%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636295261371010790&sdata=VL7VoTys8R7WvWHpLV12F9yYINDzv57rm3PKZVrQO%2Bc%3D&reserved=0><https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7Ca3728ea4effe4aabc5a008d4932b4160%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636295261371010790&sdata=qhfhNWFV%2FUQJuoBMwgDkVWSlyCoykquFIx%2BWLyT%2B8SI%3D&reserved=0><https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. 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+1 [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: ipcdigangi@gmail.com Sent: 5 May 2017 04:22 To: icannlists@winston.com Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I'm very pleased to see continued discussion on this topic. I've reviewed the contributions received so far, and honestly believe its premature to slam the door shut, or alternatively to kick the can down the road to another committee or to the "private protections" solution. This WG was formed by the Council to consider whether the RPMs "...collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. If such additional policy recommendations are needed, the Working Group is expected to develop recommendations to address the specific issues identified." (WG Charter) Our discussions so far has identified the issue of the protection of GIs in new gTLDs, and I believe this raises the following questions that are worthy of further consideration. I have provided some preliminary thoughts below for consideration & feedback. 1. Were GIs considered when the IP Clearinghouse was first proposed and later developed for implementation? a. Yes, the IRT proposed an "IP Clearinghouse" that would include a "panoply" of IP rights beyond trademarks. It did not propose a Trademark Clearinghouse, which would have been a much more straightforward proposal. 1. the IRT had about 8 weeks to complete its work, so I agree with previous comments that almost no time was spent discussing GIs (or other forms of IP such as book titles) other than to say yes, they should be included in the database. At that time, it was hard enough to get consensus on the trademark protections even though there was already a long-established precedent for protecting trademarks in the DNS. b. The STI, which also had a very short time period to conclude its work, modified the IRT proposal in several respects, including by revising the IP Clearinghouse proposal to a "Trademark Clearinghouse" database. 1. The IPC, and member IP organizations and companies, provided public comment on the revised Clearinghouse proposal, and those comments reflected preference for the IRT model, and specifically stated the Clearinghouse should cover a broad range of IP rights beyond trademarks. (see IPC and other public comments on the revised Clearinghouse proposal). So there is no doubt this issue came up during the implementation phase, and there were varying views in the community about how it should be addressed. This furthers the notion that this topic appropriately falls under our charter. 2. Are GIs an important form of IP that should be protected generally? a. Within the IP community, yes there is general consensus that GIs should be protected consistent with national and international laws. For example, see this INTA Board Resolution on GIs, which states GIs are an important form of IP and should be protected (along with copyright, patents, etc.) http://www.inta.org/Advocacy/Pages/ProtectionofGeographicalIndicationsandTra... 1. A lot of energy has centered on the debate about how to protect GIs so as to not unfairly disadvantage other rights holders. The INTA Resolution above relies upon a "first in time, first in right" approach for resolving conflicts between GIs and trademarks. The Resolution states that in some cases, GIs will have priority over later registered trademarks, and vice versa. A. This issue would need to be fully considered in developing potential protections for GIs; for example, GIs could be protected following the Sunrise period, during the "limited registration period" that takes place before general availability, to avoid conflicts with trademarks that are globally protected. Another approach could be to provide a Claims service for GIs. 3. Is the protection of GIs inconsistent with the GNSO recommendation that strings should not infringe the rights of others that are reflected in international standards? a. There is nothing inconsistent on the surface, but the topic should be supported by further legal analysis in order to come to any hard conclusions. 4. Are GIs currently protected in new gTLDs and the DNS? a. Yes, GIs have been protected in some TLDs during the limited registration period mentioned above, and also through "private protections" in some strings. They have also been protected in a Sunrise period (.ASIA) that pre-dates the new gTLD program. 5. Should GIs be included in the Clearinghouse database, or an ancillary database maintained by Deloitte, to streamline administration burdens on rights holders? a. There has been consensus on several committees that the Clearinghouse is not a RPM, but an administrative support tool designed to reduce costs imposed by the new gTLD program. Depending on how the analysis to # 3 above comes out and related questions, the reduction of administrative costs is a worthy goal for the new gTLD program. 1. Consideration should be given on whether to maintain GIs separately from TMs in an ancillary database for administrative purposes. The proposals that have been submitted so far on the existing Clearinghouse are retrospective in nature. With that said, I find them very helpful to informs our views. As Phil expressed on our most recent call, we are not bound the current rules in the Applicant Guidebook. If we were, this WG would be nothing more than a compliance review team. The issue that squarely falls before this committee is to review the RPMs holistically, identify issues, and try to come up with consensus solutions to address them, if appropriate. A concern recently raised by Paul relates to timing. While I don't think we should be hampered by artificial deadlines, the analysis that is needed to consider this topic can be done in parallel with the other sub-teams, and there is a pre-existing body of work we can build from, including mechanisms that are already in the Applicant Guidebook. As I described in a previous note, a stitch in time saves nine. After identifying the issue, I think it would be better to spend some more time on it now, so it doesn't keep bubbling up over the next several years. In other words, I think whatever work we do now will reflect substantial progress in many respects, and save time for the community in the end. If there is any doubt on which way to proceed, I would argue we should default to the more open approach, and foster discussion. As the saying goes, sunlight is the best disinfectant. Best regards, Claudio On Thu, May 4, 2017 at 8:53 AM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: +1 Paul K Sent from my iPhone On May 4, 2017, at 6:42 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com><mailto:ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>> wrote: +1 From: Paul Keating Sent: Thursday, May 4, 2017 7:16 AM To: Massimo Vittori Cc: J. Scott Evans via gnso-rpm-wg Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Nope. I think it's all been said and do not see any reason to further expand things. Sent from my iPad On 4 May 2017, at 12:39, Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>> wrote: Dear all, any follow-up on the proposals to establish a sub-team to discuss RPM for GIs and/or to discuss it thoroughly in the WG? Best, Massimo ________________________________ From: Massimo Vittori<mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Sent: 03.05.2017 08:07 To: claudio di gangi<mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Greg Shatan<mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1 Best, Massimo ________________________________ From: claudio di gangi<mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: 02.05.2017 20:41 To: Greg Shatan<mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended. Just to take a quick moment to step back and look at the big picture: the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation: "Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law." In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process. In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption. More specifically related to GIs, several strings delayed delegation while private protections were developed. With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine' ...so I think this is where we currently are in this WG. As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission. Best regards, Claudio On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>> wrote: +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:917-816-6428><tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428><tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>> wrote: +1 <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:%2B65%206532%202577><tel:+65%206532%202577> T US +1 212 999 6180<tel:%2B1%20212%20999%206180> T IL +972 9 950 7000<tel:%2B972%209%20950%207000> F IL +972 9 950 5500<tel:%2B972%209%20950%205500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com><mailto:jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com<mailto:jsevans@adobe.com>> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com<mailto:jsevans@adobe.com>> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com><mailto:Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:%2B65%206532%202577><tel:+65%206532%202577> T US +1 212 999 6180<tel:%2B1%20212%20999%206180><tel:(212)%20999-6180> T IL +972 9 950 7000<tel:%2B972%209%20950%207000><tel:+972%209-950-7000> F IL +972 9 950 5500<tel:%2B972%209%20950%205500><tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com><mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com><mailto:icannlists@winston.com<mailto:icannlists@winston.com>>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com><mailto:icannlists@winston.com<mailto:icannlists@winston.com>>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com><mailto:icannlists@winston.com<mailto:icannlists@winston.com>>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org><mailto:mary.wong@icann.org<mailto:mary.wong@icann.org>>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. 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-1 [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: paul@law.es Sent: 4 May 2017 19:16 To: Massimo@origin-gi.com Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Nope. I think it's all been said and do not see any reason to further expand things. Sent from my iPad On 4 May 2017, at 12:39, Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Dear all, any follow-up on the proposals to establish a sub-team to discuss RPM for GIs and/or to discuss it thoroughly in the WG? Best, Massimo ________________________________ From: Massimo Vittori<mailto:Massimo@origin-gi.com> Sent: 03.05.2017 08:07 To: claudio di gangi<mailto:ipcdigangi@gmail.com>; Greg Shatan<mailto:gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1 Best, Massimo ________________________________ From: claudio di gangi<mailto:ipcdigangi@gmail.com> Sent: 02.05.2017 20:41 To: Greg Shatan<mailto:gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended. Just to take a quick moment to step back and look at the big picture: the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation: "Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law." In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process. In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption. More specifically related to GIs, several strings delayed delegation while private protections were developed. With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine' ...so I think this is where we currently are in this WG. As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission. Best regards, Claudio On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. 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Thank you for your response Paul. I would appreciate if you could elaborate on your answer. An asset to just a few questions might clarify: Is what a few of us are asking (RPM for GIs) completely outside the scope of this working group? If the WG mandate is phrased in a general way, who should interpret it? How many WG members are needed to propose an issue for it to be tackled? Many thanks for clarifying those points. Maybe the Icann staff can help on this as well. I will attend an Icann Board cocktail later today in Geneva, I will enquire there as well. Best, Massimo ________________________________ From: Paul Keating<mailto:paul@law.es> Sent: 04.05.2017 13:16 To: Massimo Vittori<mailto:Massimo@origin-gi.com> Cc: claudio di gangi<mailto:ipcdigangi@gmail.com>; Greg Shatan<mailto:gregshatanipc@gmail.com>; J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Nope. I think it's all been said and do not see any reason to further expand things. Sent from my iPad On 4 May 2017, at 12:39, Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Dear all, any follow-up on the proposals to establish a sub-team to discuss RPM for GIs and/or to discuss it thoroughly in the WG? Best, Massimo ________________________________ From: Massimo Vittori<mailto:Massimo@origin-gi.com> Sent: 03.05.2017 08:07 To: claudio di gangi<mailto:ipcdigangi@gmail.com>; Greg Shatan<mailto:gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1 Best, Massimo ________________________________ From: claudio di gangi<mailto:ipcdigangi@gmail.com> Sent: 02.05.2017 20:41 To: Greg Shatan<mailto:gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended. Just to take a quick moment to step back and look at the big picture: the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation: "Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law." In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process. In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption. More specifically related to GIs, several strings delayed delegation while private protections were developed. With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine' ...so I think this is where we currently are in this WG. As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission. Best regards, Claudio On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. 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I do not believe we need a separate group to look in to this issue. First, I believe the issue has received very in-depth discussion on our list. Second, our remit in this WG is to determine if the RPMs that were established as designed and, if not, what adjustments need to be made. It appears that there is a contingent on this WG that believe that GIs that are NOT also registered trademarks should not be included in the TMCH and subject to TM Claims and Sunrise and a contingent that believes that GI regardless of whether they are also a registered trademark should be included. Our question is: Is the inclusion of GIs what was intended. As one of the original drafter of the IRT recommendations, I can say wholeheartedly that GIs were not contemplated and, unless registered as a trademark, should not be registered in the TMCH. Accordingly, I am support of Paul Mc. Proposal. I believe you and Paul Mc had some email exchanges where you suggested and, he agreed, that the GI issue may need further investigation and discussion. I do not think that needs to be done in this working group. I suggest that, should our WG adopt Paul Mc’s proposal or something similar, that the contingent that believes that GIs should be included make a proposal to the GNSO for the establishment of a WG to consider this GI issue in more detail. J. Scott [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com From: <gnso-rpm-wg-bounces@icann.org> on behalf of Massimo Vittori <Massimo@origin-gi.com> Date: Thursday, May 4, 2017 at 5:26 AM To: Paul Keating <paul@law.es> Cc: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thank you for your response Paul. I would appreciate if you could elaborate on your answer. An asset to just a few questions might clarify: Is what a few of us are asking (RPM for GIs) completely outside the scope of this working group? If the WG mandate is phrased in a general way, who should interpret it? How many WG members are needed to propose an issue for it to be tackled? Many thanks for clarifying those points. Maybe the Icann staff can help on this as well. I will attend an Icann Board cocktail later today in Geneva, I will enquire there as well. Best, Massimo ________________________________ From: Paul Keating<mailto:paul@law.es> Sent: 04.05.2017 13:16 To: Massimo Vittori<mailto:Massimo@origin-gi.com> Cc: claudio di gangi<mailto:ipcdigangi@gmail.com>; Greg Shatan<mailto:gregshatanipc@gmail.com>; J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Nope. I think it's all been said and do not see any reason to further expand things. Sent from my iPad On 4 May 2017, at 12:39, Massimo Vittori <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Dear all, any follow-up on the proposals to establish a sub-team to discuss RPM for GIs and/or to discuss it thoroughly in the WG? Best, Massimo ________________________________ From: Massimo Vittori<mailto:Massimo@origin-gi.com> Sent: 03.05.2017 08:07 To: claudio di gangi<mailto:ipcdigangi@gmail.com>; Greg Shatan<mailto:gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week +1 Best, Massimo ________________________________ From: claudio di gangi<mailto:ipcdigangi@gmail.com> Sent: 02.05.2017 20:41 To: Greg Shatan<mailto:gregshatanipc@gmail.com> Cc: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I think this working group is doing a great job in identifying topics worthy of further analysis, which appropriately fall under our charter, and should be commended. Just to take a quick moment to step back and look at the big picture: the original GNSO policy recommendations, approved by the Board and directed to staff for implementation, including the following recommendation: "Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law." In my view, this was adopted by the diverse stakeholders in the GNSO because the balanced protection of IP within ICANN contracts and policies is a consumer safeguard mechanism for the DNS. With that said, there were some varying views about how this broad IP-related recommendation was to be specifically implemented, which was only one of several issues that caused delays to the new gTLD program. This is why the IRT and STI were formed under such short time-periods to complete their work. And why, despite the best efforts of both ad-hoc committees, their recommendations were modified, either directly or indirectly through the public comment process. In fact, the rules associated with the RPMs changed throughout the entire multi-year implementation process. The Final Requirements RPMs document was not posted by staff until after all the applications were published, and even the rules in this document and those in the Final AGB were modified following their adoption. More specifically related to GIs, several strings delayed delegation while private protections were developed. With the benefit of 20/20 hindsight, I think the old adage hold true: 'a stitch in time saves nine' ...so I think this is where we currently are in this WG. As Greg recently noted, whether or not there should be an RPM for GIs is a valid point for discussion. I propose to form a sub-team to have this discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and others have expressed input) and we can try to move the ball forward. This will help us in achieving our objective of considering the effectiveness of all the RPMs, and proposing changes which reflect incremental improvements consistent with ICANN's mission. Best regards, Claudio On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: +1000 to J Scott on this point: A common misconception. The TMCH is a database. Nothing more. It is a database used to facilitate two RPM's: Sunrise and TM Claims. Flowing from that, the population of the TMCH database needs to serve RPMs -- Trademark Sunrise and/or Trademark Claims. GIs are not consistently treated as trademarks, and where they are, it is often because they separately and independently meet the criteria set for trademarks such as certification marks. Claiming that GIs are trademarks (or even "marks") is not something I can support, based on 30.5 years of practice (as long as we are counting rings on trees, so to speak). Why would GIs go into a trademark database? Mixing GIs and trademarks as if they were indistinguishable makes no sense. Further, it makes no sense to even discuss any changes to the TMCH, or the establishment of additional databases, until we discuss changes or additions to the RPMs such as Trademark Sunrise and Trademark Claims. A record in the TMCH without a corresponding RPM cannot be seriously contemplated. Until one identifies an RPM for GIs, there is no reason to establish a Clearinghouse for GIs. Whether or not there should be an RPM for GIs is a valid point for discussion. This is not the right time for that discussion. Jamming GIs into the TMCH on the theory that GIs are trademarks is not the right way to avoid that discussion. That some GIs are sometimes trademarks in some jurisdictions and sometimes also qualify as trademarks in other jurisdictions is not a valid basis for treating all GIs as trademarks. Greg [As always, in my personal capacity, unless otherwise noted.] Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: +1 <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: Massimo@origin-gi.com<mailto:Massimo@origin-gi.com> Sent: 29 April 2017 22:48 To: jsevans@adobe.com<mailto:jsevans@adobe.com> Cc: jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Agenda and documents for Working Group call this week The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 16:02 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C91ffd86ea3a245c73f1508d492e8e3a6%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636294976337956505&sdata=Y%2FSpiL6x7hOJJ8qOdRmb0hO9iOJDzVJd0Ducqy6w7a8%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C91ffd86ea3a245c73f1508d492e8e3a6%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636294976337956505&sdata=Y%2FSpiL6x7hOJJ8qOdRmb0hO9iOJDzVJd0Ducqy6w7a8%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C91ffd86ea3a245c73f1508d492e8e3a6%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636294976337956505&sdata=Y%2FSpiL6x7hOJJ8qOdRmb0hO9iOJDzVJd0Ducqy6w7a8%3D&reserved=0>
We are dealing with a global system here so it seems that the lowest common denominator should control. Otherwise we are building a global system based on what is not a consensus based foundation. Sincerely, Paul Keating, Esq.
On Apr 29, 2017, at 4:48 PM, Massimo <Massimo@origin-gi.com> wrote:
The EU, as all the other countries having GIs independent system, provides transparent registration systems, with opposition procedures. So registration is needed in the EU too. Two different views (independent / sui generis systems or trademark), both legitimate at the international level.
Best, Massimo From: J. Scott Evans Sent: 29.04.2017 16:02 To: Massimo Cc: Jonathan Agmon; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights.
Sent from my iPhone
On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com> wrote:
The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate.
An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH.
But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory?
Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation.
Best, Massimo From: J. Scott Evans Sent: 29.04.2017 15:18 To: Massimo Cc: Jonathan Agmon; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means.
Sent from my iPhone
On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com> wrote:
Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality.
Best, Massimo From: J. Scott Evans via gnso-rpm-wg Sent: 29.04.2017 14:46 To: Jonathan Agmon Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness.
Sent from my iPhone
On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
Paul,
I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue.
I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry.
Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal:
“GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.”
Finally, please note that my time zone is UTC+8.
Thanks,
<SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal www.ip-law.legal T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com>; Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists <icannlists@winston.com> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks Claudio.
You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one.
I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back.
Best, Paul
From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org; icannlists <icannlists@winston.com> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Thanks, Paul.
I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language.
There didn't seem to be a conclusion, hence my earlier email about next steps.
Please let me know if I missing something.
Best regards, Claudio
On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have).
Best, Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week
Mary, all,
I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions.
An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call?
For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs?
If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database.
On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else?
I'm looking forward to working with everyone on the team.
Thanks!
Best regards, Claudio
On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org> wrote: Dear all,
The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
4. Notice of deadline for further follow up questions to the Analysis Group
5. Next steps/next meeting
Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw (Sunrise) and https://community.icann.org/x/psrRAw (Claims).
o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7).
For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions.
Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier.
Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.
************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
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Respectfully, you are not entirely correct. PARMA is registered (as a collective mark) in the EUTM, as it is registered in the USPTO. See https://euipo.europa.eu/eSearch/#details/trademarks/001116201 I am not sure what you mean when you say that GIs are not protected consistently. Can you please explain? In any event, my proposal is not about GIs that are not registered. It is about GIs that are registered. Registered under national trademarks systems (like in the US) or GI registration systems (in some other countries). I think that substantively, the only difference between Paul’s proposal and mine, is that my proposal recognizes that GIs protection depends on the system of protection in the relevant country. This, because some countries have GIs registered, instead in a national trademark registry, in a GI registry. To take your example, PARMA, this mark can be (and is) registered in the US at the USPTO, in Europe in the EUTM or in the GI Registry. See for example, USPTO http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4803:g2yiw8.3.5 EUTM https://euipo.europa.eu/eSearch/#details/trademarks/001116201 DOORS http://ec.europa.eu/agriculture/quality/door/registeredName.html?denominatio... My proposal will ensure that either one of the above registrations would suffice to put PARMA in the TMCH. [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Saturday, April 29, 2017 4:02 PM To: Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> Cc: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I stand by my original point. They GI's are not protected consistently. In the US, Parma is not protected without a US trademark registration. Not so in Europe. Two different views on the scope of rights. Sent from my iPhone On Apr 29, 2017, at 6:58 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: The disagreement concerns whether to protect GIs via an independent system or via trademarks, but not the GI concept itself. But for the time being countries can choose their system, and their choice is legitimate. An example: prosciutto di Parma is a GI in the EU. As the product is exported in the US, the association of producers owns now a certification mark there for exactly the same name. So Prosciutto di Parma can be for sure in the TMCH. But if that product was exported only within Europe or the Asian countries I mentioned in an earlier email having independent GI systems (so no certification mark on the same name was available), do not you think that being excluded from the TMCH (as well as from dispute resolution) would have been discriminatory? Again, I think we should spend more time on those issues rather than rushing to a conclusion which might not reflect the existing situation. Best, Massimo ________________________________ From: J. Scott Evans<mailto:jsevans@adobe.com> Sent: 29.04.2017 15:18 To: Massimo<mailto:Massimo@origin-gi.com> Cc: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I spoke directly with representatives from the USPTO and I also understand USPTO representatives attended the meeting at n Copenhagen. Based on my discussions with the USPTO, I disagree that there is universal treatment of GI's that are not registered as trademarks. In fact, I know that the scope of protection for GI's has been a thorny issue in international trade negotiations since at least the 1930's. It has s not a settled point by any means. Sent from my iPhone On Apr 29, 2017, at 6:08 AM, Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>> wrote: Hi, I was trying to show that luck of understanding about GIs does not exist any more as the large majority of countries have specific laws with transparent registration processes. There is not divergence at all in terms of definition of the GI concept and obligation to protect that IPR concept (TRIPs Agreement). The WG should make proposals that reflect the current legal and economic reality. Best, Massimo ________________________________ From: J. Scott Evans via gnso-rpm-wg<mailto:gnso-rpm-wg@icann.org> Sent: 29.04.2017 14:46 To: Jonathan Agmon<mailto:jonathan.agmon@ip-law.legal> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week I disagree. I was on the IRT. GI's were never discussed. It is precisely because there is no universal understanding or treatment of GI's that only those GI's that are"marks" aka "trademarks" should be allowed in the TMCH. Paul Mc's proposal is the correct Avenue to address this over inclusiveness. Sent from my iPhone On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>> wrote: Paul, I am not sure about the broad alignment, especially not outside the US. There are differing opinions on the issue. I still disagree with you basic understanding of GIs. GIs are marks as they are comprised of text words. GIs are trademarks when they denote the source of goods. They can be registered in national trademark registries. The only difference between the US and other countries is where they are registered. This is not a basis for exclusion from the TMCH. In most countries of the world GI registration is performed in the trademark registry (GI section) or in a specialized GI registry. Since the TMCH is a very important protection rights protection mechanism, available to brand owners, and in most countries of the world, the general view is that GIs are a type of trademarks, I make the following alternative proposal: “GIs comprise of word marks. When registered, GIs serve as collective trademarks. If a GI is the subject of a national trademark registration, or a national GI registration, it could have been, in the past, and may be included, in the future in, the TMCH. For any GIs that are not the subject of a national trademark or GI registration, or otherwise qualified for registration under the Trademark Clearinghouse Guidelines, at the time of registration, which are currently registered in the TMCH, such GIs should not be renewed in the TMCH upon expiration.” Finally, please note that my time zone is UTC+8. Thanks, <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png> Jonathan Agmon (胡韩森) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.l...> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Friday, April 28, 2017 9:35 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks Claudio. You aren’t missing anything. The fact that the co-chairs didn’t dismiss outright the request of a few to dig a bit deeper before moving on isn’t unusual. It is very ICANN. However, that doesn’t change the reality that there appears to be broad alignment across all sorts of the usual lines that GIs, unless they are also registered trademarks, should not be included in the Trademark Clearinghouse. Further, as of now, there is no proposal in the record to the contrary, although I do note that Jonathan A. indicated that he may submit one. I hope you are well. It is good to see you actively participating in an ICANN WG again! Welcome back. Best, Paul From: claudio di gangi [mailto:ipcdigangi@gmail.com] Sent: Friday, April 28, 2017 1:49 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Thanks, Paul. I listened to that part of the call again, and after the presentation of the proposal, Phil took comments from George, Greg, and Jonathan (all provided input/ideas about ways GIs could be protected) and there was a request for staff to obtain more background on the 'marks protected by statute or treaty' language. There didn't seem to be a conclusion, hence my earlier email about next steps. Please let me know if I missing something. Best regards, Claudio On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: Thanks Claudio. However, after the last WG call I thought we had reached the opposite conclusion that there was little or no interest in taking up the GIs issue at this time. Jonathan A. thought he might put forward a third proposal on GIs, but I haven’t seen that yet on this (or at least I don’t think I have). Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of claudio di gangi Sent: Friday, April 28, 2017 12:58 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Agenda and documents for Working Group call this week Mary, all, I just recently joined the WG, so I'm reading the listserve to get caught up to speed. It's been very helpful and informative to review all the contributions. An initial question: is a work plan being established for addressing issues that were discussed on Wednesday's call? For example, on Paul and Kathy's proposal related to GIs - I think the group has identified a good issue worthy of further analysis, e.g. should GIs be protected against registration abuse, as a consumer safeguard in new gTLDs? If that approach is supported by the analysis, they could be registered in the limited registration period that is currently described in the Applicant Guidebook, that takes place following the Sunrise period, supported by the Clearinghouse or an ancillary database. On the basis that further analysis of this topic would be helpful to inform WG deliberations, where should it take place - on the Sunrise subteam or somewhere else? I'm looking forward to working with everyone on the team. Thanks! Best regards, Claudio On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, The proposed agenda for our call this Thursday at 0300 UTC (reminder: Wednesday evening/night for those in the Americas) is as follows; please also see the Notes that are included below: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update 3. Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below) 4. Notice of deadline for further follow up questions to the Analysis Group 5. Next steps/next meeting Notes: o For Agenda Item #2, the composition, meeting transcripts and current work status of each of the two Sub Teams can be viewed at their respective wiki pages: https://community.icann.org/x/msrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0> (Sunrise) and https://community.icann.org/x/psrRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0> (Claims). o For Agenda Item #3, please review the first attached document. This is the tabular form of all proposals received to date on the three open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline. Staff has not edited the language of the proposals received, although we have formatted them to some extent to enable easier reading, and we have also separated out accompanying rationale and context (where this was provided) and pasted these into a second table (starting on Page 7). For your reference, we are also attaching a second document, which is a compilation of other proposals received so far. Please note that these proposals are being circulated for your information only, and will not be discussed at this time as they concern topics that have either been deferred or that have to do with Sunrise and/or Claims. The co-chairs may refer these to the Sub Teams, but only for the specific purpose of seeing if the subjects have been covered by existing Charter questions, or if they can be helpful in refining the existing Charter questions. Finally, the co-chairs and staff are aware that Working Group members have requested that agendas and documents be circulated as much in advance of the minimum 24-hour deadline as possible. We were not able to comply with that request this week due to a personal situation for one of the co-chairs; however, going forward, the co-chairs plan to meet with staff every Friday to ensure that agendas and, if possible, documents, are available and distributed earlier. Thanks and cheers Mary _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. 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participants (18)
-
Ariel Manoff -
Beckham, Brian -
claudio di gangi -
Greg Shatan -
icannlists -
J. Scott Evans -
Jeremy Malcolm -
Jonathan Agmon -
Kathy Kleiman -
Mary Wong -
Massimo -
Massimo Vittori
-
Michael Graham (ELCA) -
Nahitchevansky, Georges -
Paul Keating -
Phil Corwin -
URS - Uniform Rapid Suspension System - MFSD -
Winterfeldt, Brian J.