Fwd: Comments on the IRT recommendation

[Robin Gross]

All,

Konstantinos has looked at the draft recommendations from the  
Intellectual Property Team working on create special mechanisms in  
the new gtld process to expand trademark rights on the Internet.   
Thank you very much, Konstantinos!!

Please add to these points below and provide further comment on them  
as well so we can submit a comment before the deadline (which I think  
is Thursday).

Thank you!
Robin

IRT Draft Report:
https://st.icann.org/data/workspaces/new-gtld-overarching-issues/ 
attachments/trademark_protection:20090428172419-0-15172/original/IRT% 
2520Draft%2520Report%2520on%2520Trademark%2520Protection%2520Issues.pdf

More Info:
https://st.icann.org/new-gtld-overarching-issues/index.cgi? 
trademark_protection


Begin forwarded message:

> From: Konstantinos Komaitis <k.komaitis at strath.ac.uk>
> Date: May 5, 2009 11:59:22 AM PDT
> To: Robin Gross <robin at IPJUSTICE.ORG>, Mary Wong <MWong at PIERCELAW.EDU>
> Subject: Comments on the IRT recommendation
>
> Dear both,
>
> Here are my thoughts on the IRT recommendation. I did not really  
> have time to look at it thoroughly and only scanned it through  
> considering the deadline is tomorrow. As you know I am writing a  
> book on domain name regulation, which amongst other is a critique  
> against the expansion of t/m law and the UDRP and I am planning to  
> include an analysis of all these issues.
> Sorry for the mistakes in the comments – was in a rush to finish  
> them. Tell me what you think and please feel free to add/delete  
> anything. Mary where do we send them and is it with the normal   
> process?
> Thank you and looking forward to hearing from both of you.
>
> Best
>
> Konstantinos
>
> COMMENTS
>
> ...but not create additional legal rights (page 6): I think that  
> the whole issue here is basically not to expand the existing ones -  
> i would suggest the re-wording of this.
> The IRT should have also consulted various PTOs in order to  
> ascertain whether the existence of a clearing's house and the  
> criteria set for global marks adhere to traditional ones.
> The idea of asking the trademark owner to validate the existence of  
> a mark once a year is expensive, cumbersome and bureaucratic.  
> trademark rights can last indefinitely as long as the owner  
> continues to use the mark to identify its goods or services. The  
> term of a federal trademark is 10 years, with 10-year renewal  
> terms. However, the USPTO requires that between the fifth and sixth  
> year after the date of registration, the registrant must file an  
> affidavit stating that the mark is still in use. If no affidavit is  
> filed, the registration is cancelled. The USPTO does not remind the  
> trademark owner of this deadline. to me the way the clearinghouse  
> wants to operate contradicts this.
> if user protection is one of the main goals of the IRT i don't see  
> in the list of benefactors (the list contains trademark owners, new  
> gtld operators, registrars and ICANN) but not the consumers.
> the IRT should also clarify how it will deal with the international  
> classification system in combination with the applications received  
> and how it will determine which trademark deserves priority.
> also who is going to participate in the Clearing house?
>
> Global Classification system: I think the criteria are very loose  
> and 'convenient'. the test is very basic and will result in  
> trademarks that are not considered famous under traditional  
> standards to receive international recognition by virtue of their  
> registration. the Dilution act for instance set a high bar for a  
> trademark to be considered famous. The Federal Trademark Dilution  
> Act suggests that the following factors should be used in  
> considering whether a mark is famous (this list is not exhaustive):
> 1. How distinct the mark is (either by being inherently distinctive  
> or by having acquired secondary meaning).
> 2. How long and to what extent the mark has been used with the  
> connected goods and services.
> 3. How much advertising and publicity there has been for the mark.
> 4. How widespread, geographically, the mark has been used.
> 5. What channels of trade are used for the mark’s associated goods  
> and services.
> 6. How well-recognized the mark is in the channels of trade used by  
> the owner and the channels of trade used by the potentially  
> diluting mark.
> 7. How many similar marks are used by third parties, and the extent  
> of such use.
> While each state may have its own standards for defining what  
> qualifies as a famous trademark, these factors generally apply.
> URS: i don't understand why this should exist since the udrp is  
> already in place. i think that they are trying to create a tier  
> system of judiciary under the ICANN regime - this is very  
> dangerous. from the reading it appears that the systems will be  
> connected (see appeals sections) and this practice detaches the  
> parties from courts even further. who will prefer the court option  
> if there is the UDRP?
> -- 
> Dr. Konstantinos Komaitis,
> Lecturer in Law,
> GigaNet Membership Chair,
> University of Strathclyde,
> The Lord Hope Building,
> 141 St. James Road,
> Glasgow, G4 0LT,
> UK
> tel: +44 (0)141 548 4306
> email: k.komaitis at strath.ac.uk




IP JUSTICE
Robin Gross, Executive Director
1192 Haight Street, San Francisco, CA  94117  USA
p: +1-415-553-6261    f: +1-415-462-6451
w: http://www.ipjustice.org     e: robin at ipjustice.org



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