2017-07-26 Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP WG

Notes/ Action Items

LINKS TO UDRP & URS DECISIONS ON STYLIZED MARKS (from Griffin Barnett):

http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-1249

http://www.wipo.int/amc/en/domains/decisions/text/2010/d2010-0597.html

http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0450.html

http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-1296

http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-1496

http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-2413

Action Items:

1. WG members to review the draft proposal for data collection for Sunrise Registrations, and provide feedback on the WG mailing list

Notes: 

These high-level notes are designed to help PDP WG members navigate through the content of the call and are not meant as a substitute for the transcript and/or recording. The MP3, transcript, and chat are provided separately and are posted on the wiki here.

1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest

• No updates to SOIs

2. Continue discussion on the poll results for the Open TMCH Questions (focus on Questions 3, 7-9, and 13)

DOCUMENT (Updated & Annotated) Poll Results: Annotated Results - Open TMCH Questions Poll - 25 July 2017

• Annotations/breakdowns are the percentages of the categories of respondents to a specific answer choice (such as "Yes", "No" or "I can live with this"), but not the percentages of the total number of respondents within any given category responding to a question
• Question on whether or not the number of respondents to the poll are representative of the full WG
• Question 3:
  • More-or-less even split between "Yes" and "No" answers with majority of registrants answering "No", while majority of trademark owners answered "Yes"
  • No consensus on whether stylized marks registered with specific fonts and/or colors should be accepted in the TMCH
  • In most countries, registered trademarks that are stylized, and where the words are not disclaimed as generic, doesn’t limit the rights to only the stylized depiction – relevant to both famous brands, as well as to start-ups that can only afford to register a limited number of trademarks
  • This is supported not only in national trademark law, but also in UDRP and URS decisions, where stylized marks served as the basis for decisions in favor of the trademark owner – see section 1.0 of http://www.wipo.int/amc/en/domains/search/overview3.0/
  • Question 3 should be limited to the stylization question – provide a distinction between stylized and not stylized text trademarks
  • If court does not provide protection to the text portion of a stylized mark (such as “OWN YOUR POWER” provided as an example), should it be accepted in the TMCH? - Nuances of each trademark should be substantive examination prior to a decision/distinction being made - there should not be a presumption of protection of the text portion of a stylized mark
  • Most countries do not engage in a disclaimer of text practice (referencing text portion of stylized marks)
  • EUIPO does not allow disclaiming of text – trademark is registered and protected in its entirety, not in its distinctive parts
  • From AC Chat: What's disclaimed is a separate issue from what's stylized
  • Whether or not the vast majority of countries engage in disclaimer practice is not the issue – this is about whether a composite mark can be registered – no way for the TMCH can make a determination of whether a mark is purely descriptive
  • TMCH is underused – if SMEs that own trademarks do not use the TMCH, should determine the reasons why - is it not publicized adequately, or possibly over-priced?
  • Scope of EUIPO registrations involves protection against identical/confusingly similar marks – may be found to involve protection of the text portions, particularly in marks with minimal stylization such as the example provided in this question (OWN YOUR POWER)
  • From AC Chat: The IRT and STI didn't expressly distinguish between text marks that are "pure" text or "stylized" text
  • TMCH might be accepting stylized marks due to a lack of questions in the application that differentiate between a text-only mark and a stylized mark
  • In the event of an even split (absence of consensus to recommend a change in the TMCH practice), the standing practice of the TMCH will continue
  • A possible recommendation might be to have the TMCH request more information during an application for inclusion of a registration in the TMCH – should be revisited

• Question 7:
  • Split in response with 47.37% answering "Yes" with majority of trademark owners supporting - 52.63% answered "No" with majority of registrants against inclusion of composite marks where the text has not been expressly disclaimed
  • Unclear if Deloitte accepts Composite Marks in the TMCH, but was sent a list of marks as hypotheticals (including Composite Marks) to test if they might be accepted
  • From AC Chat: (Deloitte accepted all of the examples we sent them) - CARS was one of the specific examples sent to them.
  • From AC Chat: @Phil - this is what the TMCH is doing with respect to non-Word only marks: http://www.trademark-clearinghouse.com/content/what-about-deviceimage-marks
  • From AC Chat: From the link provided by John: "The recorded name of the Trademark is an identical match to the reported name as long as the name of the Trademark includes letters, words, numerals, keyboard signs, and punctuation marks (“Characters”) that are: predominant clearly separable or distinguishable from the device element; and all predominant characters are included in the Trademark Record submitted to the Clearinghouse in the same order they appear in the mark."
  • What the TMCH guidelines say for this test is that it relates to marks that do not exclusively consist of letters, words, numerals or special characters - may include stylization or other graphical elements
  • No clear direction on a WG agreement for this question
• Question 8:
  • Distinction between question 7 and question 8 is that question 7 addresses composite marks in which the text has not been expressly disclaimed, while in question 8, the question asks about the same type of mark irrespective of the text portion being expressly disclaimed
  • Far more agreement on question 8 than question 7, which indicates that the distinction of the text portion being disclaimed is significant
  • Should the WG be recommending that TMCH registrants should provide more information when registering marks in the TMCH (has the text portion of the trademark been expressly disclaimed)?
  • Agreement on question 8 might provide an opportunity for a compromise on the question of accepting composite marks in the TMCH
  • Distinction should be made on whether all the text within the composite mark has been expressly disclaimed, or just a portion of the text being sought to be protected
  • May be able to conclude that broad agreement exists that both stylized and composite marks in which the text portion has been disclaimed should not be accepted in the TMCH - TMCH should ask the question of whether the text portion of the mark being registered has been disclaimed
• Question 9:
  • Not very even answers: "No" 61.11%, "Yes" 33.33%, "I can live with this" 5.56%
  • Question not clear on what difference should be made in response to this question (should or should not be accepted in the TMCH) – presumption that “purely descriptive” implies that the mark should not be accepted in the TMCH
  • About a 3:2 split if "I can live with this" is added to "Yes"
  • Two types of "no" responses may have been included in the answers to this question:
  • those who thought that stylized or composite marks should not be accepted (doesn’t make a difference whether the text portion is purely descriptive);
  • and other “no” answer might have been that it doesn’t make a difference, and that the marks should be accepted
  • Not clear in the question who considers the mark "purely descriptive", or how "purely descriptive" should be defined - TMCH? Examiners?
  • Presuppositions such as whether the mark is a (hypothetically) famous trademark that is with widespread use - does the presupposition affect the response provided?
  • Likely that WG cannot put a lot of weight on responses to question 9
• Question 13:
  • "Yes" 53.85%, "No" 35.90%, "I can live with this" 10.26% - Addition of "Yes" and "I can live with this" roughly gives a 2:1 ratio in favor of “Yes”
  • Should a distinction be made between statutes and treaties? Statutes may involve the laws of only one country, which would provide protection in only one jurisdiction, while protection is not recognized elsewhere
  • From AC Chat: Doesn't "marks protected by statute or treaty" just capture marks which exist by way of statute or treaty and not just common law marks?
  • Is it possible to create a distinction: specific entities identified by statutes and treaties such as the boy scouts and the Olympics in the United States – might want to include them without necessarily including other things that are eligible for some sort of national of protection by virtue of some other scheme, but not named in foundational legislation (such as GIs)
  • This category of "marks protected by statutes and treaties" first appeared in version 4 of the AGB – at the time, the explanatory memo included this and other changes to the TMCH rules showed that concerns were raised of unregistered marks that served functions similar to trademarks regardless of whether it was registered (such as court-validated marks) – this category included for the same reason
  • UPDATE from staff: Deloitte's report on "marks protected by statute or treaty" - as of Feb 2017, 98 were submitted, 75 were successfully verified.
  • From AC Chat: Does statute/treaty even contemplate different levels of government? (i.e. local, provincial/state, federal?) - @George - treaty does (i.e, federal or national). Statute does not.
  • Statutes/treaties function as a form of registration – a state-recognition of some form of rights, so may be treated as other forms of rights protected by registration
  • Distinction between marks protected by statutes/treaties and GIs protected by statutes/treaties might be that the GIs are not marks - if that is the case, how/why are GIs protected by statutes/treaties included in the TMCH?
  • Might be necessary to revisit the category of marks protected by statutes/treaties before WG can make a recommendation

3. Review draft data collection proposal for the Sunrise RPM

DOCUMENT: Draft Proposal for Data Collection for Sunrise - 21 July 2017

• Third column is new to the document is new/added by staff to get a sense of the scope and methodology required for collection of data as identified by the Sunrise Registrations Sub Team, and the WG
• Survey possibly contemplated to collect data from both registries (multiple data requirements) and registrants
• WG to evaluate data requirements, and potential mechanisms to collect and give direction on how to proceed - options are available via requests to the GNSO Council in terms of requesting resources to collect this data, while being cognizant of the potential limitation in ability to collect this data (particularly from registry operators)
• Other factors, such as time to collect the data, should be factored in - need to be sure that the data is necessary, and will not unnecessarily delay decision-making
• ACTION ITEM: WG members to review the draft proposal for data collection for Sunrise, and provide feedback

4. Next steps/next meeting:

• Thursday, 3 August 2017 at 03:00 UTC