[comments-wipo] Comments on Interim Report- Working Group B

["Morisi, Andrea" <MorisiA@usa.redcross.org>]

Having now had a quieter opportunity to digest the interim report and the
volumes of correspondence posted to this Working Group, I would like to
offer the following recommendations and comments:

The Interim Report proposes a two part process for the evaluation of famous
marks.  I support the process but would ask that there be an acknowledgment
of flexibility within the tests.  For instance, I would hope a majority of
participants to this list would recognize the "Red Cross" as a famous mark.
However, I would not be able to satisfy the strict definition of the first
test (trademark registration in 35 countries and 50 documented
cybersquatting incidents). This is because the Red Cross name and emblem are
protected 
by the governments of every country that ratifies the Geneva Conventions.
Very few countries have trademark registrations for the name, yet nearly
every country has strict prohibitions on the use of that name by other than
the official Red Cross Society in that country (or Red Crescent in Muslim
countries.)  So, although the Red Cross is protected in more than 35
countries, I would not be able to meet this strict requirement.  (While I
appreciate I may have a unique problem, I expected there may be some equally
famous marks that do not reach the exact specifications.)

I highly recommend the other part of the test, the Famous Trademark Panel
criteria, including some modifications offered by Twentieth Century Fox and
Time Warner, and suggest that rather than meeting the requirements of both
parts, the process offer a balance of them.

Sunrise period: I find this aspect of the proposal of interest, but
recommend that it be combined with a notice period, similar to that for the
registration of trademarks, as has been previously raised and supported by
numerous others.  I support this combination because there is no limit to
the number or combinations that may arise and be found as problematic to a
trademark owner.

Substring protection: I disagree with the recommendation to protect only
exact words.  Protection needs to be broader.  Those of us regularly dealing
with cybersquatters do not find the identical mark to be the problem, but
rather its the creative ways around the mark, such as "reddcross" or
"redcros" or "R-E-D-C-R-O-S-S" or "RedCrossServices". When combined with
metatags, misspellings are less obvious to the searcher, but not less
problematic to the true owner.

Thank you,
Andrea Morisi
Senior Counsel
American Red Cross