TMCH Individual Proposal #2 (1 of 2 proposals concerning design marks)

The TMCH provider Deloitte should be required to comply with the TMCH rules limiting the acceptance of marks into the TMCH Database to “word marks”.

TMCH Individual Proposal #3 (2 of 2 proposals concerning design marks)

1. Section 3.2 of the Applicant Guidebook be revised to use the term “text marks” rather than “word marks.” “Text marks” would be defined to consist of:

a. Marks consisting of text only, including marks where the text is portrayed in color, in a typeface (or typefaces), in a logo form, in a fanciful manner, and/or otherwise portrayed in a stylized fashion, as well as “standard character” marks.

b. Marks consisting of text in combination with design elements or devices, sometimes referred to as, e.g., composite marks or figurative marks, except for marks where the text portion of the mark is disclaimed in its entirety.


2. Trademark Clearinghouse Guidelines should be revised as follows (new language in bold): 


An Applicant to the Trademark Clearinghouse must include in its application a sworn statement that the trademark registration does not include a disclaimer as to any portion of the mark, or if it does, the text portion of the mark is not disclaimed in its entirety. Where the text portion of a mark is disclaimed in its entirety, the mark is not eligible for registration in the Clearinghouse. For marks that are Text Marks that do not exclusively consist of letters, words, numerals, and/or special characters, the recorded name of the Trademark will be deemed to be an identical match to the reported name as long as the name of the Trademark includes letters, words, numerals, signs, keyboard signs, and punctuation marks (“Characters”) and all Characters are included in the Trademark Record submitted to the Clearinghouse in the same order they appear in the mark.


In the event that there is any doubt about the order in which the Characters appear, the description provided by the Trademark office will prevail. In the event no description is provided, such Trademarks will be allocated to a Deloitte internal team of specialists with thorough knowledge of both national and regional trademark law who will conduct independent research on how the Trademark is used, e.g. check website, or they may request that the Trademark Holder or Trademark Agent provide additional documentary evidence on how the Trademark is used.


3. The Trademark Clearinghouse Guidelines should be revised as follows (new language in bold):  


The Trademark Clearinghouse should not accept for inclusion marks where all textual elements are disclaimed and as such any Characters are only protectable as part of the entire composite mark including its non-textual elements.


4. The Working Group recommends that a new grounds to the challenge procedure be added to assess whether the underlying trademark registration was obtained in bad faith as a pretext solely to obtain a Sunrise registration.


In preparing the grounds for such challenges, guidance may be drawn from the pre-delegation Legal Rights Objection consideration factors: http://www.wipo.int/amc/en/domains/lro/faq/#3a and the judgement of the European Court of Justice in Case C-569/08 Internetportal und

Marketing GmbH v. Richard Schlicht http://eur-lex.europa.eu/legalcontent/EN/TXT/HTML/?isOldUri=true&uri=CELEX:62008CJ0569.


Context: 

Rationale provided by the Proponent of TMCH Individual Proposal #2: Some RPM PDP Working Group members have found a problem:

  1. The RPM PDP Working Group members have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
  2. However, the rules of the Applicant Guidebook (together with STI rules adopted by the GNSO Council and ICANN Board) expressly limits the acceptance of marks into the TMCH Database to “word marks”.
  3. Accordingly, Deloitte is not following the applicable rules  adopted by the GNSO Council and ICANN Board for TMCH operation.
  4. Whether the current rules should be changed is a separate issue from whether Deloitte is currently complying with the applicable rules. The Working Group by Consensus can determine that the current rules should be changed and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.

Additional rationale provided by the Proponent is included in the document in the footnote[1]. 


Rationale provided by the Proponent of TMCH Individual Proposal #3:

Section 3.2 of the Applicant Guidebook describes the marks that may be accepted into the TMCH Database as “word marks.” However, the term “word mark” is not defined in the AGB. This has created ambiguity and the potential for misunderstanding.

a. Specifically, it appears that marks may have been accepted into the TMCH Database where all of the words in the mark have been disclaimed.

b. This ambiguity should therefore be clarified.


Working Group Deliberations on both Proposals: In March 2017 at ICANN58, Deloitte (the TMCH Validation Service Provider) provided the following information to the Working Group on how it handles design marks:

  • Verification focuses on words in a design mark, but not the design aspect – note example from TMCH Guidelines.
  • Disclaimers to exclusive use of marks are not factored in; verification process involves only matching factual data against corresponding trademark certificate - no legal opinion provided by TMCH on exclusive use.
  • Verification of generic words also are matched against corresponding trademark certificate.
  • Some jurisdictions do not distinguish between different types of marks (e.g. word vs figurative/design mark); no separate statistics on design marks per se.


The Working Group had diverging opinions on the appropriateness and adequacy of the TMCH Validation Service Provider’s handling of design marks. In light of Deloitte’s response, some Working Group members thought that they could support either proposal; some other Working Group members also had concerns with the accuracy of the accompanying rationale for TMCH Individual Proposal #2. 


The Working Group notes that TMCH Individual Proposal #2 essentially calls for the elimination of design marks in the TMCH, whereas TMCH Individual Proposal #3 does not propose elimination but calls instead for clarifications regarding applicable definitions and usage. The Working Group believes that additional community input will be helpful in assisting the Working Group to determine whether there is a need for a policy recommendation to address the issue of design marks.  


Working Group Question for Public Comment: The Working Group seeks community input on both proposals, in order to determine the extent of support for either TMCH Individual Proposal #2 or TMCH Individual Proposal #3. In addition, the Working Group welcomes suggestions for ways to reconcile the two proposals, if possible.


[1] https://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20190918/e9fbcd9d/KleimanMuscovitchProposal09042019-0001.pdf