7 January 2015
- Mary Wong
The next meeting of the new IGO-INGO Access to Curative Rights Protection Mechanisms Working Group is scheduled on Wednesday 07 January 2015 2014 at 17:00 UTC (09:00 PST, 12:00 EST, 17:00 London, 18:00 CET).
For other times: http://tinyurl.com/n69ssau
Adobe Connect WITH AUDIO enabled: https://icann.adobeconnect.com/crp/
Agenda:
- Roll Call/Updates to SOI
- Continue discussions on 2007 Draft Text for an Alternative Dispute Resolution Procedure for IGOs
- Next steps
Documents for Review: Draft Text for IGO DRP & Rules - Sept 2007
Partial text of Article 6ter:
- 1(a) - The countries of the Union agree to refuse or to invalidate the registration, and to prohibit by appropriate measures the use, without authorization by the competent authorities, either as trademarks or as elements of trademarks, of armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view.
- 1(b) - The provisions of subparagraph (a), above, shall apply equally to armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations of which one or more countries of the Union are members, with the exception of armorial bearings, flags, other emblems, abbreviations, and names, that are already the subject of international agreements in force, intended to ensure their protection.
- 1(c) - … The countries of the Union shall not be required to apply the said provisions when the use or registration … is not of such a nature as to suggest to the public that a connection exists between the organization concerned and the armorial bearings, flags, emblems, abbreviations, and names, or if such use or registration is probably not of such a nature as to mislead the public as to the existence of a connection between the user and the organization.
- 3(b) - … this Article shall apply only to such armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations as the latter have communicated to the countries of the Union through the intermediary of the International Bureau.
- 4 - Any country of the Union may, within a period of twelve months from the receipt of the notification, transmit its objections, if any, through the intermediary of the International Bureau, to the country or international intergovernmental organization concerned.
How one country (here, the USA) deals with IGOs who have communicated their 6ter protections, duly notified by WIPO to all relevant countries, where no objection was made within the requisite 12-month period; extract from the USPTO TMEP (S. 1205(2)):
- When the USPTO receives requests for protection under Article 6ter from the [International Bureau (WIPO], they are assigned serial numbers in the "89" series code, i.e., serial numbers beginning with the digits "89," and are sometimes referred to as "non-registrations." The USPTO searches its records for conflicting marks, but the requests are not subjected to a full examination by an examining attorney or published for opposition. Copies of the designations are filed in the paper records of the Trademark Search Library, and pertinent information is entered in the automated search records of the Office and should be discovered in an examining attorney's search.
- The Paris Convention requires that the United States refuse to register designations that have been deposited pursuant to Article 6ter and to which the United States has transmitted no objections. Depending on the nature and use of the mark, §§2(a) and 2(b) of the Trademark Act, 15 U.S.C. §§1052(a) and 1052(b), may bar registration of these marks. A refusal under §2(d) of the Trademark Act is not appropriate. The issue is not whether the marks are confusingly similar, but whether registration of the mark would violate §§2(a) or 2(b) of the Trademark Act.
- For example, it may be appropriate for the examining attorney to refuse registration under §2(a) of the Act on the ground that the mark comprises matter that may falsely suggest a connection with a national symbol of a member country or an international intergovernmental organization. See TMEP §1203.03(e). Other §2(a) bases for refusal could also apply. See TMEP §§1203 et seq. It may be appropriate to refuse registration under §2(b) of the Act if the proposed mark comprises a flag, coat of arms or other similar insignia. See TMEP §1204. In some instances, it may be appropriate to refuse registration under §§1, 2 (preamble) and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127, on the ground that the subject matter would not be perceived as a trademark. (For service mark applications, §3 of the Act, 15 U.S.C. 1053, should also be cited as a basis for refusal.)
MP3 Recording: http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-20150107-en.mp3
Meeting Transcript: http://gnso.icann.org/en/meetings/transcript-igo-ingo-crp-access-07jan15-en.pdf
Attendees:
George Kirikos - Individual
Petter Rindforth – IPC
Phil Corwin – BC
Kristine Dorrain- Individual
Mason Cole – RySG
David Maher – RySG
Val Sherman - IPC
Gary Campbell - GAC
Paul Tattersfiled – Individual
Jay Chapman – Individual
Kathy Kleiman - NCUC
Lori Schulman - NPOC
Apologies:none
ICANN staff:
Mary Wong
Steve Chan
Berry Cobb
Nathalie Peregrine
Adobe Connect chat transcript for Wednesday, 07 January 2015:
Nathalie Peregrine: Dear all, welcome to the IGO-INGO Curative Rights Protection PDP WG Meeting on the 07 January 2015
George Kirikos: Hi everyone! I hope you had great holidays.
Nathalie Peregrine: Welcome George and best wishes to you!
Mary Wong: 1 a.m. here in Singapore :)
Lori Schulman: I don't have audio.
Lori Schulman: I will dial in.
George Kirikos: 1-866-692-5726, code = IGO
George Kirikos: (in the USA/Canada)
Nathalie Peregrine: Phil Corwin is on the audio bridge
Nathalie Peregrine: Val Sherman has joined the call
Nathalie Peregrine: @ Lori, there is audio in the AC room, maybe a reboot would help?
Philip Corwin: Good day and Happy New Year to all!
Lori Schulman: I am connected via phone. Thanks, George.
Gary Campbell: Hi all
George Kirikos: Did we have any comments/feedback yet from the constituencies?
George Kirikos: (I think they were due on Friday)
Mary Wong: @George, not yet (as expected). We (staff) are due to send reminders to all by the end of this week :)
Steve Chan: @George, the due date is actually 23 January
George Kirikos: Oh, sorry. I thought something was due earlier. Did we hear back from the IGOs (within the GAC observers?).
Philip Corwin: Yes, we gave them more time on the tehory that asking for feedback just after the end of the holidays was not realistic.
George Kirikos: Or, ICANN legal, who was going to get back with some searches of legal precedent.
Philip Corwin: theory that is
K: @Mary, are you sure it is an exact match standard??
K: BTW, this is Kathy Kleiman
George Kirikos: They wou;dn't refuse the mark.
George Kirikos: Only if it's CONFUSING.
George Kirikos: i.e. wouldn't refuse automatically.
Mary Wong: @Kathy, sorry - you're right, not necessarily an exact match (sorry for sloppy language!)
Lori Schulman: the individual PTO's would apply whatever their national standards are. In the U.S. and other commonlaw jurisdictions, the standard is "confusingly similar"
Mary Wong: It would be whatever standard/test/language in that particular jurisdiction that is equivalent to the 6ter language of "as trademarks or as elements of trademarks".
Mary Wong: (per Lori - thank you!)
George Kirikos: Note *full* text of Article 6ter at: http://www.wipo.int/article6ter/en/legal_texts/article_6ter.html (in particular, paragraph (c) shows it's not absolute)
Mary Wong: @George, yes
Kathy Kleiman: Sorry, I am on hold
Kathy Kleiman: waiting to get onto the bridge
Kathy Kleiman: please don't wait...
Mary Wong: Essentially, the type of protection mandated by 6ter is prohibitive (subject to limitations of that national law) and does not specifically require an IGO to first obtain a national TM (unless, perhaps, that is the national law in any country).
Nathalie Peregrine: the operator is keeping an eye out for your call Kathy
Kathy Kleiman: here now
Nathalie Peregrine: great!
George Kirikos: I think most UDRP panelists would see Article 6ter registration as evidence of "common law" marks.
George Kirikos: So, I don't see that as a controversial issue per se.
Mary Wong: And per @George, the prohibition is not absolute - the third party has to be trying to use the mark as a trademark, and limited to suggesting a connection between the IGO and the third party.
George Kirikos: I think Kathy's on to something, that there could be appeals to the legal system in each nation.
George Kirikos: e.g. in the USA, first at the TTAB http://en.wikipedia.org/wiki/Trademark_Trial_and_Appeal_Board
George Kirikos: So, there's some interaction with the immunity issue. I'm guessing the IGO would need to appeal/challenge a decision in that jurisdiction.
Lori Schulman: If I recall from my examining days, there is no special consideration.
Lori Schulman: The marks are compared as any other marks.
Lori Schulman: I would have to confirm through the TMEP
Kathy Kleiman: @ Mary, tx you.
Kathy Kleiman: It is my understanding that the marks are compared as any othe rprior (already rgistered) marks - as Lori states
Lori Schulman: You have to evaluate on 2 bases: confusingly similar and false association
Lori Schulman: 2 different parts of the Act. TM Act Section 2(d) and 2(a)
Mary Wong: And 6ter reflects this - the prohibited use must be as a TM or element(s) thereof, such as to suggest a connection etc. etc.
Lori Schulman: as well as all other considerations
Lori Schulman: descriptiveness, etc.
Kathy Kleiman: I think this issue is huge - how individual national trademark offices treat the "registered" 6ter IGOs in their evaluations - because this is the essence of what we might be asking a UDRP or UDRP-type panel to do.
George Kirikos: I believe Canada is moving to a system of TM registrations without reviews, more like the European systems.
George Kirikos: I've already posted my views of the 2007 report. I didn't think it was a very good draft, for the reasons at: http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000217.html
George Kirikos: report = proposal
Kathy Kleiman: Does anyone know if the 6ter list (those IGOs seeking the 6ter treaty protections) is a public list?
George Kirikos: Yes, it is, Kathy.
George Kirikos: http://www.wipo.int/article6ter/en/
George Kirikos: "Article 6ter Express database" or you can download the database.
Kathy Kleiman: @tx Mary for the USPTO TMEP!
Mary Wong: Note that the 6ter database doesn't just contain IGO names and acroyms; it includes all 6ter protected marks (armorial bearings, flags etc.)
George Kirikos: 4(a) in that report was very flawed, as it changed everything from "and" to "or", for example.
George Kirikos: (compared with the UDRP)
Jay Chapman: while small, that is a monumental "change" from the UDRP, George
Philip Corwin: Yes, going from "and' to "or' would be a very fundamental change in UDRP and URS practice and is a path I would not support this group going down.
Paul Tattersfield: agree George - Too much thinking is based around the issuance of a trademark, I think more thought needs to be given to whether or not the underlying goods / services are being infringed.
Kathy Kleiman: +1 George: this may be an education issues - for both IGOs and UDRP Panelists
Kathy Kleiman: ... and the protection is common law + statutory (e.g., showing that the IGO has invoked the treaty rights and is on the "6ter" list)
George Kirikos: If we were able to engage with the IGOs, to educate them more, this WG might be able to dissolve.
George Kirikos: Albeit, with the immunity issue being a point of contention. But, even that can be worked around, as per the World Bank, UNITAID examples.
George Kirikos: (where the law firms, for example, held the marks)
George Kirikos: Kristine is here from NAF. Perhaps she might want to speak to the education aspect.
George Kirikos: (not sure if we have that WIPO person here today)
George Kirikos: Whether IGOs are aware that "common law' marks are sufficient to file.
Mary Wong: @George, observers to the WG don't participate on calls :)
George Kirikos: (and that panelists have found for IGOs in the past, e.g. World Bank, UNITAID, etc.
George Kirikos: Do any of the law firms here have IGOs as clients? How do they do their "brand protection" these days? (offline or online, for that matter)
Kathy Kleiman: @Kristine: is education of Panelists an issue here too?
Kathy Kleiman: I think you answsered this, Kristine, tx you!
Kristine Dorrain-NAF: Yes, thanks.
George Kirikos: Something = "outreach" & "education"?
George Kirikos: Perhaps adding to section 1 of http://www.wipo.int/amc/en/domains/search/overview2.0/
Paul Tattersfield: The emphasis should be that standing should come from usage not registration
Kristine Dorrain-NAF: Good point on an affirmative step, Phil.
George Kirikos: 1.12 Are IGO "marks" eligible for the first UDRP element? Answer: Yes. LOL
Kristine Dorrain-NAF: All good, but that still doesn't reach them with UDRP as an option. You're relying on an IGO finding the UDRP and saying "oh geez, we can't use this"... Maybe I'm wrong, but I think the point is to say "you have options, people!" (Push vs Pull dynamic)
George Kirikos: The terms of reference of this WG is even narrower, as it was limited to the subset of marks on that "reserved list" for new gTLDs.
George Kirikos: So, reserved list only had around 100 marks, Article 6ter DB has 3000. Of course, under common law, any IGO could qualify.for a UDRP filing.
Philip Corwin: Was such a reserve list ever created for new gTLD program, other than Red Cross/Crescent and IOC?
George Kirikos: Yes, Philip. I had made up the spreadsheet, etc.
George Kirikos: See: https://www.icann.org/sites/default/files/packages/reserved-names/ReservedNames.xml
George Kirikos: (scroll down to IGO names)
Kristine Dorrain-NAF: Thanks for the really great discussion, all, I have to sign off a few minutes early for my next appointment. :)
George Kirikos: No, it doesn't require a trademark registration, Phil.
George Kirikos: Common law marks are recognized.
Paul Tattersfield: @ Phil I don’t think it does – the registration is just a public declaration of in intent
Philip Corwin: Ok, I stand corrected. But does lack of registration and therefore notice to DN registrants become an element in finding bad faith?
Kathy Kleiman: Re: education - educating registrants/consumers might also be something we would consider
Philip Corwin: Bad faith of course requires some intent
Mary Wong: @Phil, yes - that would be one distinction
George Kirikos: What's the plan for next week?
George Kirikos: (before we go?)
Mary Wong: @George, we'll caucus with the co-chairs
George Kirikos: i.e. "next steps" in the Agenda.
Philip Corwin: Haven't discussed yet. Suggestions are welcome
Kathy Kleiman: Note all: Bad faith was largely new when we worked on the UDRP (only used a bit before that) so it would not be part of the treaty language, but would it encompass it?
George Kirikos: Great meeting. Bye everyone.
Lori Schulman: Thank you
Philip Corwin: Bye all
Jay Chapman: good bye
Kathy Kleiman: by all!
Paul Tattersfield: thanks, bye