RE: [gnso-igo-ingo] Qualification Criteria

["Shatan, Gregory S." <GShatan@xxxxxxxxxxxxx>]

I agree with Claudia that the proposed requirement that an organization receive 
“multilateral or multinational protection beyond ordinary trademark laws” be 
rejected.

I disagree for the most part with “extraordinary public service” as a criterion 
or even as an inspiration for objective criteria, although this gets to the 
“three dimensional” nature of the discussion.  In other words, if we are 
talking about extraordinary remedies and prophylactic measures, I am more 
inclined to support a higher bar.  However, if we are merely talking about 
making sure that IGOs/INGOs have full access to existing RPMs (or RPMs that 
track to existing RPMs), then  I think that “ordinary” reach and public service 
(i.e., being an IGO or INGO) should be sufficient; if we still need some 
threshold to distinguish INGOs from non-international NGOs, that threshold 
should be relatively low (and objective and fair (not tailored)).

Greg

Gregory S. Shatan
Partner
Reed Smith LLP
599 Lexington Avenue
New York, NY 10022
212.549.0275 (Phone)
917.816.6428 (Mobile)
212.521.5450 (Fax)
gshatan@xxxxxxxxxxxxx
www.reedsmith.com



From: owner-gnso-igo-ingo@xxxxxxxxx [mailto:owner-gnso-igo-ingo@xxxxxxxxx] On 
Behalf Of Claudia MACMASTER TAMARIT
Sent: Wednesday, March 06, 2013 8:40 AM
To: Gomes, Chuck; Thomas Rickert; gnso-igo-ingo@xxxxxxxxx
Subject: RE: [gnso-igo-ingo] Qualification Criteria

Chuck and all,

It’s not a broken record at all.  I think it’s at the very heart of the matter. 
 We’ve suggested criteria to try to get at that idea.  And we’ve seen evolution 
as the weeks go by and we struggle for some direction and agreement.

We might look to several benchmarks of international and national recognition 
of extraordinary reach and public service from an international organization.  
We have mentioned including room for evidencing it with organizational 
mandates, formal membership by governmental or public institutions and 
corresponding financing, etc.  And we’ve looked at the possibility of 
recognizing established lists where these kinds of criteria might have already 
been shown.

In any regard, I support your conclusion (which I pray I don’t mischaracterize) 
that any criteria should be reviewed in light of the public interest.

Sincerely,
Claudia

From: Gomes, Chuck [mailto:cgomes@xxxxxxxxxxxx]
Sent: 2013-03-06 14:23
To: Claudia MACMASTER TAMARIT; Thomas Rickert; 
gnso-igo-ingo@xxxxxxxxx<mailto:gnso-igo-ingo@xxxxxxxxx>
Subject: RE: [gnso-igo-ingo] Qualification Criteria

Claudia,

I apologise for what must sound like a broken record for me but I have some 
questions for you or others:

1.       How do we define ‘extraordinary public service’?

2.       How do we measure ‘extraordinary public service’?

3.       Who would evaluate whether or not ‘extraordinary public service’ 
applies?

Whatever criteria we ultimately agree on, each of these questions will need to 
be answered by this WG.

Chuck

From: owner-gnso-igo-ingo@xxxxxxxxx<mailto:owner-gnso-igo-ingo@xxxxxxxxx> 
[mailto:owner-gnso-igo-ingo@xxxxxxxxx]<mailto:[mailto:owner-gnso-igo-ingo@xxxxxxxxx]>
 On Behalf Of Claudia MACMASTER TAMARIT
Sent: Wednesday, March 06, 2013 5:46 AM
To: Thomas Rickert; gnso-igo-ingo@xxxxxxxxx<mailto:gnso-igo-ingo@xxxxxxxxx>
Subject: RE: [gnso-igo-ingo] Qualification Criteria

Dear colleagues,

As a very quick but strong objection, please note that the below added 
requirement that an organization receive “multilateral or multinational 
protection beyond ordinary trademark laws” is not only unsupported and 
ambiguously worded but is exceedingly discriminatory without any justification. 
 We therefore strongly object to its inclusion in any final recommendation.

This biased criteria could unjustifiably exclude established international 
non-profit organizations with (special national legislated recognition of its) 
broad geographic scope and exceptional international service simply because 
they can point to “only” multinational trademark protection of its name without 
any regard for the public interest.

The Unredacted version of the Board Workshop Paper from 28 August 2012 (which 
might not be binding but is certainly informative) stated that criteria “must 
be tailored so the reservation is limited to a few with extraordinary reach and 
public service.”  Short of where the law requires it, shouldn’t special 
protection be tailored to get at that kind of an idea – extraordinary reach and 
public service?  Criteria surely cannot be shaped to simply shut the door on 
other established non-profit INGOs with extraordinary public service simply 
because they rely different legal protections than the IOC.

The Internet spans national borders (wherein legislation may often require a 
showing of abuse) – granting special protection must clearly be hinged on the 
public interest.

Sincerely,
Claudia MacMaster Tamarit
(ISO) International Organization for Standardization

From: owner-gnso-igo-ingo@xxxxxxxxx<mailto:owner-gnso-igo-ingo@xxxxxxxxx> 
[mailto:owner-gnso-igo-ingo@xxxxxxxxx] On Behalf Of Thomas Rickert
Sent: 2013-03-01 20:29
To: gnso-igo-ingo@xxxxxxxxx<mailto:gnso-igo-ingo@xxxxxxxxx>
Subject: [gnso-igo-ingo] Qualification Criteria

All,
we have discussed the question of qualification criteria (again) during our 
last call, as you will recall.

What we have on the table at the moment are the two proposals below.

Do you think we can merge them or come up with a new set of criteria?

Following the last call, let me also remind you that these criteria are the 
first hurdle to be taken qualify for the protections. #

We discussed that there might be additional criteria (admission criteria) for 
the protection mechanism in question.

I guess Alan was the first to make the point during the call. Can I ask all of 
you (and Alan in particular :-)) to think of whether and what additional 
criteria you would like to set up as a second hurdle for admission to the 
protections?

Thanks,
Thomas

Here come the two sets of qualification criteria:

1. What I amalgamated from Mary's proposal and our previous discussions:


Organizations that serve the global public interest, that are international in 
scope and operations, and whose primary mission is of such public importance 
that some form of special protection for its name and acronym can be justified

Meeting two of the following criteria is deemed to be sufficient evidence of 
the above requirements for an organization to be eligible for protections. The 
protection encompasses the name and the acronym of the respective organization 
as well as designations that - as the case may be - are explicitly mentioned in 
a treaty as a protected designation.

- Protection by treaty
- Protection in multiple national jurisdictions (either by virtue of a specific 
law or treaty protection that is enforceable in a multiple jurisdictions 
without the requirement of a specific enactment
- Mission serving the global public interest
- inclusion in the Ecosoc list

1. What Mary/Jim have recently submitted:

“It seems to me that what we are striving to get to is a minimum standard to 
qualify for special protections (of whatever nature), and that many of those 
that have been suggested already, e.g. treaties, national laws, organizational 
mandates etc., are a form of proxy for the vague concept that:

  "an organization [must] be


• international in scope and operations, and


• its primary mission be of such public importance


• that it receives multilateral or multinational protection beyond ordinary 
trademark laws, and


• that some form of special protection for its name and acronym can be 
justified."








* * *

This E-mail, along with any attachments, is considered confidential and may 
well be legally privileged. If you have received it in error, you are on notice 
of its status. Please notify us immediately by reply e-mail and then delete 
this message from your system. Please do not copy it or use it for any 
purposes, or disclose its contents to any other person. Thank you for your 
cooperation.

* * *

To ensure compliance with Treasury Department regulations, we inform you that, 
unless otherwise indicated in writing, any U.S. Federal tax advice contained in 
this communication  (including any attachments) is not intended or written to 
be used, and cannot be used, for the purpose of (1) avoiding penalties under 
the Internal Revenue Code or applicable state and local provisions or (2) 
promoting, marketing or recommending to another party any tax-related matters 
addressed herein.

Disclaimer Version RS.US.20.10.00