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[wg-b] RE: (wg-b) Issues to Consider
As one famous trademark holder, I want to weigh in on the debate. I
think we are quite far from reaching any "consensus" on the point of
dismissing protections for famous marks. In fact, most large
trademark holders, --including IP associations like INTA and PSWG--
strongly support protections for famous marks.
The starting point, to which we all should give the greatest
deference, is WIPO's Final Report. The WIPO hearings (15+ conducted
by a panel of experts in public meetings all over the world) resulted
in the clear conclusion that most commentors favored the establishment
of a proactive exclusion for famous marks. WIPO correctly concluded
based on their hearings and findings that it would be economically
wasteful to open up new gTLDs without safeguards for protecting famous
marks.
No, the exclusion process isn't a perfect remedy. However, it does
help famous trademark holders protect their "essential" marks from
being preemptively grabbed up as new gTLDs open up. WIPO made sound
recommendations for establishing a process for granting exclusions
using a panel of well-qualified decisionmakers. The determination of
what constitutes a famous mark is not one that this group needs to
recreate -- the WIPO experts, including Fred Mostert, the world's
leading authority on famous marks, assisted WIPO in developing factors
to be applied by qualified decisionmakers (See WIPO Report Section
284). The 800 number example discussed on this list is a good real
world example of how this process can work to ultimately protect
consumers from confusion and fraud.
Sarah Deutsch
______________________________ Reply Separator
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Subject: (wg-b) Issues to Consider
Author: "Michael D. Palage" <SMTP:mpalage@infonetworks.com> at GCOHUB
Date: 9/22/99 11:19 AM
TIME LINE:
No one to my knowledge has specified a specific fixed time line (i.e. drop
dead date) for this working group. However, saying that, I believe the names
counsel would like to have a draft report to vote on before the November
ICANN meeting. Both Jonathan and myself intend on giving a status report to
the general assembly in LA, similar to the one he gave in Santiago. However,
this time I get to answer all the fun/hard questions:)
CcTLDs & Famous Trademarks
Several people have asked me about how other ccTLDs protect famous marks.
The one country that I know of for sure is Brazil, which according to my
research protects about 120 marks that they deem famous. My inquiries for
the list of marks and the procedure that they follow for deeming a mark
famous was denied (see one of my first posts to this list). If anyone in
this group could follow-up on my investigation with the Brazilian NIC it
would be GREATLY appreciated. I think the investigative process of this
working group requires us to at least look at the system they have
installed.
CONSENSUS:
Working Group C had a rather lengthy discuss on how to define consensus.
Please refer to the following link for what in my humble opinion is rather
an information article entitled Reaching Consensus on Consensus, by Sandor
P. Schuman.
http://www.albany.net/~sschuman/consrule.htm. It makes an important
distinction between "consensus as an outcome" and "consensus as a process".
The first vote that the votebot will handle is defining what will be
consensus for this group.
I spent last night looking up in various dictionaries and other procedural
handbooks a magical number that represented what a consensus was. Amazingly
enough I could not find a clear-cut definition, which is funny considering
that consensus is probably the second most widely used phase next to "open
and transparent". If any one on the list would like to offer his/her
insight on what consensus is please do so with specific references to
organizational by-laws, articles, books, etc. Although I respect everyone's
personal opinion in this process I would like the group to make a decisions
base upon objective third party standards.
CLARIFICATION:
With regard to my comments about refusing to adopt a fatalistic viewpoints,
scrapping the entire working group, etc. These were my "personal"
viewpoint. They were just meant to underscore my determination for this
group to explore ALL options before sitting down to reach a consensus.
Because I believe there are many issues that have not yet been fully
investigated, I believe it would be premature to state that this group has
completed its work. Although I respect anyone's personal opinion that this
working group has completed its work, there are several issues that still
need to be explored. Specifically, the Brazilian NIC famous trademark
procedure, any other ccTLDs that have a formal or informal procedure, well
respected treatises or documentation on what is consensus, FCC documents
concerning the 887 right of first refusal and why it was denied with the 877
exchange.
Please help me find the answers to the questions above so that we can
undertake the consensus building process.
On a personal notes I would like to thank Harald, Eileen, Martin, Marilyn,
Dennis and the many others for your insightful comments to date. The success
of any working group is dependent upon the support the chair/co-chair
receives from the participants. Your comments have helped me see some things
in a light which I did not appreciate before participating in this working
group.